Introduction

A well-maintained notebook will be of crucial importance should your inventorship or your eligibility for a patent ever be called into question by the Patent and Trademark Office (PTO), other inventors, or companies that you have sued for infringement.

How To Make Entries

When using Appendix I: Notebook, it is important to remember that the more secure your notebook appears to be from the possibility of after-the-fact modifications by you, the better evidence it is. The first step in achieving this credibility is to use a bound notebook like this one. Your textual entries, sketches, and diagrams should be clearly written in ink to preclude erasure and the making of later entries. No large blank spaces should be left on a page. If you do need to leave space between separate entries, or at the bottom of a page, draw a large cross over the blank space to preclude the possibility of any subsequent entries. If you make a mistake in an entry, don’t attempt to erase it; merely line it out neatly and make a dated note of why it was incorrect. Your entries should be worded carefully and accurately to be complete and clear in themselves so that a disinterested person could verify that you had the ideas or did the work stated on the dates in question.

Where we indicate, your entries in Appendix I should be signed, dated, and witnessed. This should be done frequently. You should date each entry the same day you (and any co-inventors) make the entries and sign your name(s). If it is impossible to have a witness sign the same day you do, add a brief candid comment to this effect when the witness does sign. Similarly, if you made and/or built the invention some time ago, but haven’t made any records until now, again state the full and truthful facts, and date the entry as of the date you write and sign it. Remember, though, that entries made contemporaneously with your work or ideas will carry much more weight than after-the-fact entries, should you ever have to prove prior inventorship.

If possible, items that by their nature can’t be entered directly in the notebook by hand should be made on separate sheets. These, too, should be signed, dated, and witnessed and then pasted or affixed in the notebook in proper chronological order. The inserted sheet should be referred to by entries made directly in the notebook, thus tying them in to the other material. Photos or other entries which cannot be signed or written should be pasted in the notebook and referenced by legends (descriptive words, such as "photo taken of machine in operation") made directly in the notebook, preferably with lead lines which extend from the notebook page over onto the photo, so as to preclude a charge of substituting subsequently made photos. The page the photo is pasted on should be signed, dated, and witnessed in the usual manner.

If an item covers an entire page, it can be referred to on an adjacent page. It’s important to affix the items to the notebook page with a permanent adhesive, such as white glue or non-yellowing transparent tape.

If you have to draw a sketch in pencil and want to make a permanent record of it (to put in your notebook) without redrawing the sketch in ink, simply make a photocopy of the penciled sketch. Violà—a permanent copy!

Finally, if there are more than two inventors, make a new space for each additional inventor to sign.

Choose witnesses who are as impartial and competent as possible, which means that ideally they should not be close relatives or people who have been working so closely with you as to be possible coinventors. Witnesses should also be people who are likely to be available to testify later, should a dispute over your inventorship arise.

Record Your Conception

Resource: Patent It Yourself, Chapter 3

There are many reasons to accurately record the date and surrounding circumstances of your original conception of your invention. The most important of these is to have proof that you are the true inventor in case another inventor claims prior inventorship. Recording your conception in the manner we suggest here is like giving your invention a pedigree. With proper records, your invention will be recognized as yours; without this documentary evidence, your invention’s special identity and origins are subject to challenge.

There are a number of elements involved in recording the conception of your invention. These are:

• your invention’s title
• the circumstances of its conception
• its purpose or the problem solved
• a brief functional and structural description of the invention as you have conceived it
• an informal sketch
• all possible applications of your invention (ramifications)
• your invention’s novel features, insofar as you know them now
• a brief description of the closest known prior art, and
• the advantages of the invention over previous developments and/or knowledge in the relevant field.

We can’t overemphasize the importance of accurately documenting the conception of your invention, which is summed up in the following Inventor’s Commandment from Patent It Yourself.

Following this commandment will help you:

• prove prior conception in case of an interference or theft of your idea
• establish your inventorship in case someone else claims inventorship, and
• antedate any prior art that may be cited by the PTO that may cast doubt on the originality of your invention. (A prior art reference is any previous patent, article, or other document or actual public knowledge or use that is relevant to the PTO’s decision on whether your invention deserves a patent.)

[Missing Img] Notebook: Record of Conception pages are located in Appendix I: Notebook.

If you use no other part of this book, we urge you to provide the documentation we suggest here. When filling out the Record of Conception of Invention, remember our instructions for making entries set out in the introduction to this chapter.

Tip: You should use this form only when you have arrived at a relatively firm idea of what your invention consists of. Then, if you change your approach or think of additional complications after you have recorded your conception but prior to your building and testing activity, put these new ideas on the blank pages provided for this specific purpose at the end of the Record of Conception pages.

A sample record of the conception of an invention is provided on the following pages.

[Record of Conception of Invention] omitted for online sample chapter

Record the Building and Testing of Your Invention

Resource: Patent It Yourself, Chapter 3

[Missing Img] Notebook: Record of Building and Testing of Invention pages are located in Appendix I: Notebook..

When documenting the building and testing of your invention, you should record as much factual data about the process as possible. Provide conclusions only if they are supported by factual data. Items that by their nature can’t be entered directly in the notebook by hand—such as formal sketches or photos—should be signed, dated, and witnessed, and then pasted or affixed in the notebook in proper chronological order. You should also save all of your "other paperwork" involved with the conception, building, and testing of your invention, such as loose notes, bedside notes, receipts, letters, memos, etc. These items can be very convincing as supporting evidence to a judge if you ever need to prove any of the pertinent dates related to your invention. Because of the potential importance of this documentation, do yourself a favor and provide a place to save these papers. We suggest that you paste a 6" x 9" manila envelope inside the back cover of this book or use an expansion pocket file if the papers become too voluminous.

If you build and test your invention immediately after you conceive of it, fill out the Record of Conception of Invention and add a brief note indicating that you also built and tested it at the same time. Make a reference to and then complete the Record of Building and Testing of Invention, which is also in Appendix I: Notebook.

If you can’t build and test your invention yourself, many model makers, engineers, technicians, teachers, etc., are available who will be delighted to do the job for you for a fee, or for a percentage of the action. If you do use a model maker (consultant), you should take precautions to protect the confidentiality and proprietary status of your invention. There’s no substitute for checking out your consultant carefully by asking for references (assuming you don’t already know the consultant by reputation or referral).

In addition, have your consultant sign a copy of the Consultant’s Work Agreement included in Appendix V: Tear-Out Forms. See Chapter 4, Section F, of Patent It Yourself for instructions on completing this form.

Tip: When providing this documentation, remember to follow the instructions given at the beginning of this chapter.

File a Provisional Patent Application

Suppose you don’t have the facilities, skill, or time to build and test your invention, and you can’t file a patent application right away. In 1994 the government enacted the GATT (General Agreement on Tariffs and Trade) implementation law, which, for the first time in the U.S., enables an inventor to file a Provisional Patent Application (PPA) as a legal alternative to building and testing the invention. Let’s explore the PPA and its advantages and disadvantages.

What it is

A PPA is a short version of a patent application that an applicant can use to establish an early filing date for a later-filed Regular Patent Application (RPA). A PPA consists of the following:

• a detailed description of the invention telling how to make and use it
• drawing(s), if necessary to understand how to make and use the invention
• a cover sheet
• a fee, and
• a return receipt postcard.

What it is not

For those readers already familiar with the regular patent application process (see Chapter 2, Section E), unlike an RPA, a PPA does not require:

• a Patent Application Declaration (PAD)
• an Information Disclosure Statement (IDS)
• claims
• an abstract and summary
• a description of the invention’s background, or
• a statement of the invention’s objects and advantages.

Your PPA cannot by itself result in a patent. If you don’t file an RPA within a year of your PPA’s filing date, your PPA will go abandoned and will be forever useless. Also, your PPA cannot provide a filing date for subject matter that is not disclosed in it.

What type of detailed description is necessary for a valid PPA?

Your PPA must disclose clearly and fully how to make and use the invention. That is, it must have the same level of detail that is required in the part of the Specification section of a regular patent application where you describe the invention’s main embodiment and operation.

When to file a PPA

We recommend that you file a PPA only if:

• you have a good invention on which you wish to file an RPA, but are not currently able to do so due to lack of funds or resources
• you wish to lock in an early date, since you feel your invention is potentially valuable and might be independently developed by others or stolen from you
• a paper or other public disclosure of your invention is going to be made and you don’t have evidence sufficient to show that your "date of invention" antedates the public disclosure, or
• a paper or other public disclosure of your invention was already made, for example 11.5 months ago, and you don’t have time to prepare and file an RPA before the one-year deadline.

Reasons you may not wish to file a PPA:

1. You may tend to forego building and testing and lose the concomitant advantages, such as determining whether the invention is operable, practical, or useful, and having a working prototype to demonstrate to prospective manufacturers.
2. Your PPA may fail to contain a full description of how to make and use of the invention or any embodiment of it. In this case, you won’t be able to rely on the PPA’s filing date for the invention or any embodiment.
3. You may unintentionally forego foreign protection. This is because you cannot wait one year after filing the RPA, as is usually done, to foreign file. Instead you must make your foreign filing decision, as well as your regular U.S. filing decision, within one year after your PPA is filed. Note that foreign filing is extremely expensive and few foreign filers ever get their outlay back.
4. You may try to license or interest a manufacturer in your invention in the approximately ten-month period between the time you file the PPA and the time you must begin preparation of your RPA. Since ten months is usually too short a period to license an invention, you may get discouraged and fail to file an RPA, and thus give up a potentially valuable invention.
5. If you file an RPA that claims the date of your PPA and you do not file a Nonpublication Request at the time you file the RPA, your RPA will be published 18 months after you file the PPA, or about six months after you file the RPA. You may not want your application published so early.
6. A PPA’s date can be relied upon only if an RPA is filed within one year, while a properly witnessed record of building and testing generally can be relied upon even if the RPA is filed several years later.
7. If you file a PPA and then file an RPA claiming benefit of the PPA, but don’t file a Nonpublication Request, your RPA will be published about six months after your RPA’s filing date. Such a publication will destroy the trade secret status, if any, of your invention at an early date.

See Chapter 2, Section D, for the steps necessary to prepare a PPA.

Other Possible Applications of Your Invention

Resource: Patent It Yourself, Chapter 2

As you proceed to build and test your invention, you will probably have flashes of insight as to other possible uses for it. This section of the notebook is designed specifically for you to immediately record these "bolts from the blue" so that later on, when you draft your patent application or formulate marketing plans, you can easily refer to them.

Record Your Trademark Conception

Resource: Patent It Yourself, Chapter 1

The brand name or design symbol (or both) that you attach to or associate with your invention for marketing purposes is known as a trademark. Needless to say, if your product is successful in the marketplace, your trademark can become very valuable.

[Missing Img] Notebook: The Trademark Conception and Protection form in Appendix I: Notebook is provided for recording a drawing or description of any trademark you create. We provide space for four trademark conceptions in case a trademark search reveals a conflict.

For each trademark, you should provide the mark itself—a name, graphic design, or a name with a graphic design together with the generic descriptor "goods" or "service" with which the mark is to be used. For example, with Ivory soap, "IVORY" is the mark and "soap" is the goods or generic descriptor.

Tip: Although your proposed trademark will not be subject to protection under federal and state trademark laws until you either use it or apply to register it on the basis of intended use, it can be considered a trade secret until that time. Accordingly, we suggest these pages be signed, dated, and witnessed so you can prove that you came up with the name first in case of a trade secret dispute on this point. In Chapter 2, Section G, you can read how to record details as to the use and registration of your trademark in case of a later dispute over its ownership.

Record Your Distinctive Design Conception

Resource: Patent It Yourself, Chapter 1

[Missing Img] Notebook: On the Distinctive Design Conception form in Appendix I: Notebook, you should enter any distinctive product designs you feel might qualify for either copyright or design patent protection.

By product design, we mean the shape of your invention, such as the shape of a computer case, the shape of a bottle, the design of jewelry, etc. We provide four pages for you to do this. You should record the conception and the building and testing of your design, just as you did for a utility invention. If, however, your design is already shown in the Record of Conception of Invention or the Record of Building and Testing of Invention documentation of your utility invention, then of course that will suffice and you don’t have to make separate documentation records for the design.

If your invention has a distinctive design that is basically unrelated to its function, you may be able to protect the design from use by others by a design patent or copyright.

Design patents last for 14 years and give you the right to prevent others from using your distinctive design for that period of time, even if they created the design independently of you. (How to get a design patent is discussed in Chapter 10 of Patent It Yourself.) Copyright protection is usable for designs of toys and nonutilitarian articles, such as jewelry, or even utilitarian articles where the artwork is separable from the article, such as fabric design. Copyright protection lasts for your life plus 70 years (or for 95 to 120 years if the design was created as a work made for hire) and gives you the right to exclude others from copying your work. Each form of protection has some advantages and disadvantages. The primary advantage of the design patent is that it offers a broader scope of protection. The copyright, on the other hand, is much easier to create and maintain, and offers protection for a longer period of time. Because of the greater value of its advantages, we recommend that you use copyright protection for all toys, nonutilitarian articles, and objects. If the object is utilitarian and its aesthetic features can’t be separated from the article, use design patent protection. We recommend that you not try to obtain both forms of protection for one design. Asserting two "monopolies" over one creation may be construed by the courts as overreaching and, therefore, may result in a loss of protection for your design.