First to File: Patents for Today's Scientist and Engineer

Chapter 4 Canceling Prior Art and Other Benefits of Record Keeping

As the preceding chapters demonstrate, the conversion under the AIA from the first-to-invent standard to the first-to-file standard has fundamentally changed both the manner in which priority disputes are resolved and the definition of prior art. Where patent applicants have previously been able to prevail over competing patent applicants as well as eliminate certain prior art by producing laboratory notebook pages, internal memoranda, research reports, and other documentation of an early invention date, the AIA has shifted the applicant's emphasis from this type of documentation to the effective filing date of the patent application, and corporate strategies are being retooled accordingly. What value then does record keeping still have? It has considerable value, because the AIA has its own provisions that allow or require inventors to produce information that is best found in well-kept records, both for purposes of competing with others for patents on the same invention and in addressing prior art. Well-kept records are useful in other areas as well, including those that have not been changed by the AIA. This chapter begins by addressing situations where records showing that information was derived from an inventor, with or without the inventor's authorization, can work to the inventor's advantage, and continues with situations where records showing that an invention was a collaborative effort can also ...