In patent parlance, “conception” refers to “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied to practice.” In other words, conception is the mental act of thinking of the idea of the invention and how it would be implemented.
Reasons to Develop and Preserve Evidence of Conception
There are a number of important reasons to develop and preserve evidence of this conception. First, it may be important to prove accurate inventorship in case a question arises at a later date. In the US, each inventor has an ownership right in a patent application and has the right to license, assign, or transfer his interest in the application without respect to the rights of the other inventors. This right is often restricted by contract, such as an obligation to assign the invention to an employer. Inaccurate inventorship may cause a patent to be unenforceable or invalid.
The US, as opposed to much of the rest of the world, a patent is granted to the first person to invent. If two or more applicants file separate patent applications at the PTO for the same invention, the PTO conducts what is called an “interference.” An interference is basically a mini-trial to determine which inventor invented first and is thus entitled to the patent. Like trials in court, evidence is what wins the day. One applicant may have come up with the idea before the other, but if he cannot prove it, he will not win the interference.
The US has a one year grace period for filing a patent application after certain activities, such as sales or public disclosures. If a patent application is rejected by a prior art reference that is dated within one year of the applications filing date, the inventor may use evidence of prior conception to remove the reference as prior art to overcome the rejection. Again, it is important to have such evidence to submit.
There are also certain circumstances when evidence of prior conception may be used to prove non-infringement or invalidity of a patent that one is accused of infringing.
How to Develop and Preserve Evidence of Conception
It is important to remember that what counts is what can be proved.
Inventors should keep detailed records of their inventive activity. This can be in the form of notebooks or other documents and should include as much of the following as possible:
- facts or circumstances leading to the invention;
- purpose of the invention or problem the invention is attempting to solve;
- description of the structure and function of the invention or the steps of any process that comprises the invention;
- sketches, drawings, pictures, or other graphical details of the invention;
- any and all known or possible applications of the invention;
- advantages of the invention over what is already known; and
- any other information that might be relevant to a future proceeding.
The evidence should be signed and dated and preferably witnessed by someone who understands the evidence. As the invention is further developed and refined, additional evidence should be developed at each step of the process to continue to show conception.
Evidence that is contemporaneously developed is almost always better than evidence that is developed at some later date. This is because memories fade and documents or other evidence can be lost. Contemporaneously developed evidence also tends to be more credible because it is not subject to possible taint of a later proceeding.
Evidence of conception will aid a patent attorney in preparing a patent application for the invention, as well as being useful for reasons above.
January 5, 2010 at 11:46 am |
[...] first thing I tell such clients is that they should be scrupulously documenting their inventive activities. The second thing is to file a patent application as soon as possible. Because the US system [...]