The following case illustrates the importance of documenting an invention’s development. Under current U.S. Patent Laws, the first-to-invent is awarded a patent on an invention and not the first to file a patent application. The reason is that the first-to-invent rule appears to be more fair compared to the “first to file” rule. The first-to-invent rule rewards the first person to invent the invention with the patent. The first to file rule rewards the person who wins the race to the Patent Office by filing an application with the Patent Office first.
In the following case, Henkel Corp. (“Henkel”) invoked an interference with the Patent Office based on a patent issued to Proctor & Gamble Company (“PG”). The interference is a proceeding before the Patent Office wherein Henkel asserts that they invented the invention before PG, and thus, Henkel should be awarded a patent, not PG. Eventually, PG won the interference based on one of PG’s published reports which showed that the PG inventor invented the invention prior to Henkel.
The Court’s decision turned on written documents showing that the inventor appreciated the invention before Henkel. In particular, the invention at issue related to dishwasher tablets that have regions that dissolve at different rates. The written documentation submitted by PG showed that PG appreciated the importance of the “different dissolution rates” before Henkel. Hence, the Court held that PG was the first-to-invent the invention and should be rewarded with the patent, not Henkel. Henkel Corp. v. The Proctor & Gamble Comp., 2008-1447 (Fed. Cir. 2009).
The Inventor’s Notebook is typically where the inventor writes down the progress of the invention’s development. The Notebook operates in a similar manner as PG’s published report for the purpose of establishing an earlier date of invention. Based on the Court’s decision discussed above, the Inventor’s Notebook should include reasons that the invention is unique. For example, in the chemical area, the Inventor’s Notebook should include the compounds that were used and the reasons that selected compounds are unique, or how they operate. In the mechanical area, the Inventor’s Notebook should include a sketch of the invention and the reasons for the arrangement and orientation of the important parts. The purpose is to show that the inventors appreciated the invention at the earliest date possible.
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