Recordkeeping Related to Inventions

       Until U.S. patent law changed on March 16, 2013, U.S. patents were granted to the “first inventor” of a new invention, provided that the inventor filed their patent application before the end of the one-year grace period that was allowed at that time. For U.S. patent applications that were filed prior to when the new law took effect, the “first inventor” rules still apply. It may be important for inventors who filed their patent applications under the prior law to retain documentation that shows when they first came up with the idea for the invention, developed prototypes, and took other steps related to the development of the invention.
     By enacting the new law, the U.S. adopted a “first inventor to file” system. Under the new law, the date the inventor first thought of the invention, made the first prototype, and took other actions to develop the invention, are generally not important. The filing date of the inventor’s patent application that discloses the invention is the key date for purposes of having priority over someone else who develops the same invention and who also files a patent application. Under the new law the general rule is that to obtain a valid U.S. patent, the inventor must file his or her patent application before either making a public disclosure or offering to sell something that includes the invention.
     There is an exception to the general rule. The exception is that an inventor who makes a public disclosure of his or her invention before filing a patent application, may still file a valid U.S. patent application provided that the application is filed within one year of the first public disclosure. Inventors who rely on this exception should keep records regarding the public disclosure they made before filing the patent application. Such records may include documenting the circumstances of the disclosure and particularly what was disclosed, the manner of disclosure and the persons to whom the disclosure was made. Having documentation about a public disclosure before a patent filing may be helpful in the event that someone else files a patent application on the same invention after the public disclosure and before the inventor who made the first public disclosure makes his or her patent filing.
     Documenting information about the development of an invention can also be helpful under the new law in the event that someone steals an inventor’s idea and files a patent application claiming that they are the inventor. In such circumstances records of the invention development may show the Patent Office who actually was the inventor.