April 2010 Inventors Notebook

The April TIA meeting included a presentation by AJ Beal on how to manage the technical development of an invention and by Tom Kulaga on how to keep an inventor's notebook to document that development.

AJ Beal, a long-time member of the TIA, discussed technical project management. AJ handed out a sheet reprinted from a Department of Energy (DOE) document. The document contained information on the innovation process. It included a table illustrating the three stages of the innovation process.

The first stage is the innovation stage, which includes the product definition to making an engineering prototype. The first stage includes the preliminary marketing steps of defining the market, the differences between competing products, and identifying market barriers. This stage also includes defining the intellectual property, including the patents, finding the money for initial startup expenses, and determining business strategy.

The second stage is the entrepreneurial stage, which includes making a prototype to production. The second stage includes a full market analysis and plan, making a production prototype, finding customers, and building a business. The second stages focuses more on building a business around the invention rather than licensing it to another company.

The third stage is the managerial stage, which includes production for major market penetration. The third stage is growing a thriving business by improving and developing new products.

AJ handed out another sheet with information on technical project development. The sheet listed steps toward action. AJ presented a list of keywords to help the inventor plan for developing the invention. The purpose of the keywords is to stimulate thinking and action on the project.

Past actions are documented in an inventor's notebook.
Current actions are being worked on.
Future actions become a plan of what needs to be done.

Tom Kulaga discussed using an inventor's notebook. An inventor's notebook contains a chronological log of an inventor's activities. Everything an inventor does with respect to the invention should be recorded in a notebook. For example, as the invention is developed and prototypes are built, the inventor should include drawings and descriptions of the technical changes and improvements. If parts are purchased, that information should also go in the notebook. If the inventor speaks with anyone about the invention, such as when the inventor talks with someone about building a prototype, the name, address, and the specifics of that conversation should be recorded in the inventor's notebook.

An inventor's notebook is important for several reasons. The most likely use of an inventor's notebook is to help the inventor recall significant dates and events. If the inventor seeks a patent, the patent attorney will ask if any public disclosures or offers to sell a product were made and, if so, when. The inventor's notebook should have those dates.

The inventor's notebook also allows the inventor to record any oral confidentiality agreements. It is preferable to have all confidentiality or non-disclosure agreements in writing. But, in the cases where this is not possible, a notation in the inventor's notebook that the other person agreed to keep it confidential may be adequate, particularly if the other person signs the inventor's notebook notation of confidentiality.

Another purpose for keeping an inventor's notebook is if there is ever a dispute over inventorship. It is rare for an inventor to ever have to prove that the inventor was the first to invent the invention. In the over 300,000 patent applications filed every year, inventorship disputes occur about 100 to 150 times. A properly kept inventor's notebook will be helpful in showing who was the first to invent and that the inventor was diligent in reducing the invention to practice.

Another purpose for keeping an invention notebook is for disputes between co-inventors. This is much more likely to occur than a dispute over inventorship. For example, two people may be working on an invention and there may be question if both persons are inventors. Sometimes one person may file a patent application and the other person requests to be listed as a co-inventor. In these cases the inventor's notebook is invaluable for showing the collaborative effort, or lack of one.

How to keep an inventor's notebook:

Traditionally, an inventor's notebook is a bound record book, such as one where blank pages are fixed in a hard cover. The requirement is that the information in the notebook be authenticated for date and contents. A bound book makes this easy. If loose pages or e-mails are used, proving authentication is more difficult.

All entries in the inventor's notebook should be in ink or by other permanent means. It is OK to copy a penciled page and paste it into the notebook. Receipts and pictures can be pasted into the notebook. Tape can be used, also, but staples should be avoided. Again, the goal is to have the information permanently attached to the page such that any tampering is evident.

Generally, an inventor's notebook should contain only one invention. If an inventor has multiple inventions, each one should have its own inventor's notebook.

Requirements:

All entries in the notebook should be complete and meticulously made.

If a mistake is made, do not correct it or cross it out or use any corrective tape or liquid (White Out). Instead, make another entry discussing the previous entry and showing the correct information.

Don't leave blank spaces or lines. Draw a line through any blank space. Be consistent in how you fill out the inventor's notebook.

Each page of the inventor's notebook should be signed and dated by the inventor.

Each page of the inventor's notebook should be signed and dated by a witness. A witness cannot be a co-inventor. The witness should be able to understand what is on the page. Use the legend or something similar:

Read and understood by _______________________ date _____________

What to include:

The inventor's notebook should include all the details of the invention, made on the day that they occurred. Include how the invention is made and illustrate it with sketches, drawings, and pictures. Describe how the invention works and include any test results.

Conversations and meetings with others should be recorded in the notebook. For example, visits to vendors, distributors, tradeshows, manufacturers, etc., should be recorded. Write down the names, addresses, phone numbers, and other information for everyone you meet. Also write down what was discussed, include what details of the invention was disclosed and whether it was confidential.

Door Prize! A bound Record book was given away as a door prize to Glen Nelson, a visitor at the meeting.

Other business

The TIA is liquidating the library. Several old issues of Inventors Digest magazine were offered to the members in attendance.

The meeting adjourned and reconvened at Ryan's in Oak Ridge.