Think and Act Like an Inventor
How does one go from being a researcher to an inventor? One of the most important aspects of inventorship is thinking commercially: understanding how your research endeavors match up with trends and forces driving change in the marketplace. To do this a researcher must "think application." Ask yourself how your technology can work outside your lab to solve a problem faced by people in society; the bigger the problem, the larger the market.
By thinking of applications and the forces that influence change in these applications, you will broaden your perspective for inventive activity. Gradually you will begin to build and enhance pathways to people that understand the forces influencing change. Typically these will be people in industrial R&D settings who you may know from previous employment and education, e.g., former students, friends from graduate schools, acquaintances met at conferences, successful inventor peers, and so forth. Serial inventors seek these people out and develop their research networks.
Maintain Good Laboratory Records
Laboratory notebooks serve two essential purposes beyond good organization and record keeping. The first involves preparation of an invention disclosure and possible patent application, processes that are streamlined by good laboratory records. In particular, when patent attorneys begin the process of drafting patent applications, they first turn to researchers’ laboratory notebooks to determine the progress of ideas, experiments, and data. The alternative is oral disclosure; clearly a less precise process.
The second purpose involves defending an issued patent. United States patents are granted on a "first to invent" basis, unlike most other countries where patents are granted on a "first to file" basis. Thus, having adequate laboratory notebook records is essential to identifying the conception and reduction to practice of an invention (these terms are defined below).
Laboratory notebooks provide evidence in defense of challenges made to issued patents. Though patent infringement litigation rarely occurs, more valuable inventions are more likely to be contested. An "infringement" occurs when someone is commercially practicing technology that is protected by an issued patent. To defend against infringement, the patent’s owner (in this case the University of Colorado) must inform the infringer of the patent rights violation. If the infringer contests the claim of infringement, the patent owner typically initiates legal proceedings. Laboratory notebooks must be accessible to defend the patent during the legal proceedings.
To be named an inventor on a U.S. Patent, the applicant must prove two points: initial conception (formation of the idea) of a novel process or product coupled with "reduction to practice" or how the idea would actually work. Reduction to practice must follow initial conception otherwise other inventors could be granted the patent if they were first to reduce the invention to practice. Filing for patent protection is best when there is ample experimental evidence describing "how to do" or "how to make" a compound, device, or process. Patent filing should precede a public disclosure (abstract or article publication, seminar or poster presentation, or similar delivery of inventive information to any group not covered by a confidentiality agreement).
Protecting Your Invention: Two Methods to Support Patent Claims
1. Laboratory Notebooks are by far the most important source of invention documentation. Laboratory notebooks need not be in a particular format; however, the following standards present a reliable format to prevent claims of fraudulent insertion or deletion of entries.
- Use bound notebooks with pre-numbered pages.
- Sign your full name and date every page.
- Use ink when recording ideas and experiments.
- Use a single strike if anything is crossed out and initial as "strike-outs."
- Do not skip pages or leave empty spaces. Draw a line through any unused portion and initial and date the marking.
- Initial across the edge of auxiliary material: i.e., figures and computer printouts that are pasted into the notebook.
- Do not place results printed on thermal paper in your notebook as it fades over time (copy the data and place it in the notebook).
- Digital records can be submitted as evidence of an invention, but it is highly recommended that these records be supported with written documentation; courts do not favor digital records.
- Label ideas or proposals to differentiate them from work actually performed.
- Have records "witnessed" with signature and date by someone who understands the content of the work on a weekly basis. The witness should not be a direct contributor to the work being reported.
- Try to preserve the "first samples" of new materials produced by new methods.
- Retain records of purchase orders for components required for testing.
2. Invention Disclosures provide additional support for determining the actual time of an invention. File an Invention Disclosure with the Technology Transfer Office immediately after the initial conception and before reduction to practice. This confidential, signed, and dated document is an official university record that may be helpful in interference proceedings. Furthermore, the sooner we receive news of inventions, even if only a conception, the better we can understand your interests and prepare for the eventual marketing of your invention.