Patents without Paper: Proving a Date of Invention with Electronic Evidence
Lisa A. Dolak · Houston Law Review · 1999
Many high stakes patent battles are fought in interference proceedings conducted by the U.S. Patent and Trademark Office (PTO). Although various issues of patentability, validity, and enforceability may be considered during an interference proceeding, the central issue to be resolved is which of two or more parties first invented the subject matter at issue. Often, critical proof of inventive activities is found in laboratory notebooks-bound, paper notebooks in which researchers document their work. To conform to strict evidentiary requirements in interference proceedings, such as the rule that an inventor's evidence of invention must be corroborated, lab notebooks are traditionally signed and dated by the inventor and a witness. Because researchers increasingly use computers to conduct and document their work, issues have arisen concerning whether computer, or electronic, records meet the rigorous evidentiary standards imposed in interference proceedings. Recently, the PTO issued a notice stating that records are admissible as evidence in interferences . . . to the same extent that electronic records are admissible under the Federal Rules of Evidence.2 The notice is good news for the many research organizations that record and store evidence of research efforts and results via computer, because electronic records are ,videly admissible under the Federal Rules of Evidence. If steps are taken to ensure the reliability of electronic research records, such records can satisfy even the heightened evidentiary requirements that govern efforts to prove invention dates. In fact, the use of computers for the creation and maintenance of research records can provide evidentiary and operational advantages over reliance on paper records. This Article first describes the attributes of electronic records and the admissibility of such records under the Federal Rules of Evidence. Second, this Article discusses interference proceedings, the rules of evidence applied in such proceedings, and the use of evidence contained in laboratory notebooks to prove priority of invention. Finally, this Article asserts that evidence in electronic laboratory notebooks, if recorded and maintained through secure and reliable systems and procedures, can both satisfy the standards for admissibility under the Federal Rules of Evidence and provide evidentiary benefits beyond those attainable with paper records.