85
Annotated References
tion, but it may also be employed to document diligence and reduc-
tion to practice. The importance of laboratory notebooks and how to
keep them are detailed in Chapter 4.
Review
The invention process involves conception, reduction to prac-
tice, diligence, and filing a patent application in the U.S.P.T.O. For
conception to occur, the inventor must have all the details of the in-
vention worked out in his or her mind. These details need to be doc-
umented and corroborated by a witness. After conception, the inven-
tor must work diligently to reduce the invention to practice and file a
patent application in the U.S.P.T.O. If two parties claim the same in-
vention in a patent application or an issued patent and a patent appli-
cation, the patent will only be awarded to the party that can prove it
was the first to invent. Therefore, documenting the circumstances
surrounding conception, reduction to practice, and diligence is a
very important part of the U.S. patent process.
Annotated References
1. Quentin Hardy, "Higher Callin~ How a Wife's Question Led Motorola to
Chase Global Cell-Phone Plan,"
The Wall Street yournal,
December 16, 1996.
(Exam-
ple of conception.)
2. Coleman v. Dines, 754 F.2d 353, 359, 224 U.S.P.Q: 857, 862 (Fed. Cir. 1985).
(Emphasizes the importance of having corroborating evidence of conception.)
3. Mergenthaler v. Scudder, 11 App. D.C. 264, 276, 1987 C.D. 724, 731 (1897).
(Sets precedent for construction being the only thing le# a)qer conception.)
4. Gunter v. Stream, 573 F.2d 77, 80, 197 U.S.P.Q: 482-484 (C.C.P.A. 1978).
(Sets precedent for construction being the only thing le~ after conception.)
5. McCarthy, J. Thomas (1996).
In
"McCarthy's Desk Encyclopedia of Intel-
lectual Property," 2nd ed., pp. 314-316. BNA Books, Washington, DC.
(Definition of
diligence.)
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