Invention Development

                      a.  Record Keeping - Establishing Date of Invention

      As set forth above, a patent is granted to the first person who invents a new and useful
process, machine, article of manufacture, composition of matter or design.  In case of
co-pending patent applications directed to the same invention, the first-to-invent concept
requires the PTO to determine which applicant invented the invention first.  Set forth
below, from the latest date of invention to the earliest, are the various dates when an
invention can be considered invented for purposes of the date of invention analysis.  Failure
to obtain an earlier filing date than a co-pending application can result in loss of all patent

              i.  Latest date of invention - The latest date of invention is the date on which the
applicant files his or her patent application, if the application meets all the patent disclosure
requirements (i.e., enablement, description and best mode).  Assuming the original
application satisfies these requirements, the filing date will be considered a constructive
reduction to practice (the date from which a person could make and use the invention).  
Failure to fully disclose the invention does not result in a constructive reduction to practice.

              ii.   A patent application can receive an earlier date of invention by establishing
the date of actual reduction to practice.  This is the date on which the invention was
physically built and performing or capable of performing for its intended purpose.  The
invention could still be in the testing phase, as long as such testing is sufficiently complete
to demonstrate that the invention works for its intended purpose.  Reduction to practice, for
date of invention, is when the last test needed to show operability is completed and
understood and appreciated by a human.

              iii.  Earliest date of invention - The earliest possible date of invention is the date
of conception.  The date of conception is the date the inventor formed a complete working
embodiment of the invention in his or her mind.  In order to move the date of invention
from the date of actual or constructive reduction to practice, the inventor must establish
that he or she was diligently working on the invention from the date of conception to the
reduction to practice.  The diligence requirements are very fact specific.

b.  Research

              a.  Catalogs available from competitors and others
              b.  Publications, such as scientific journals and magazines
              c.  Internet (i.e.,
              d.  Formal patentability search

c.  Procedure

      If a person believes that he or she may have conceived of an invention, an invention
disclosure form describing the invention should be completed and placed somewhere for
safe keeping.  The invention disclosure form should be signed and dated by at least two
non-inventors.  If a laboratory notebook is kept, which is recommended for those who are
developing new products, the laboratory notebook page that includes the disclosure of an
invention should also be signed and dated by at least two witnesses who are not inventors,
but who understand the invention.  The invention disclosure form or laboratory notebook
description must be clear and detail enough such that any other person skilled in that field of
work can understand exactly what was in the inventor's mind, in the case of conception,
and what was done in the case of reduction to practice.  As a result, private code words or
extensive abbreviations should be avoided.  It is permissible and desirable to include
references to other documentation which provide evidentiary support for what is being
recorded in the notebook, for example, references to assembly drawings for prototypes or a
listing of numbers for purchase orders of specialized subassemblies made by outside

      Because even offering for sale a product that encompasses the invention or which is
made from a process invention may trigger the start of the one-year period to file the patent
application, even though the invention may not been fully developed into a commercial
product at that time, it is critical to identify patentable inventions early and to decide if an
application is to be filed.  In general, the patent application process should begin as soon as
possible to avoid loss of potential patent rights.

d.  Record Keeping - Long term

      It is extremely important to practice proper record keeping.  As discussed above,
laboratory notebooks should be kept to prove dates of conception of an invention and the
reduction of that invention to practice.  Such records are useful both in establishing the
priority of invention and can also be useful in defeating patent rights obtained by third
parties.  If a patent is obtained on an invention, all records related to the conception and
development of the invention must be identified and stored for the life of the patent, which
is typically 20 years from the filing date plus 6 years to allow for the applicable statute of
limitations (i.e., the time in which a lawsuit must be brought).