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After the AIA, are lab notebooks a thing of the past?

   We recently attended a great online seminar about lab notebooks,  of all things. So…, no, the America Invents Act (“AIA”) hasn’t made lab notebooks obsolete.

For those in the sciences or R&D, you may be familiar with “ELN” (electronic lab notebook) practices. This morning’s excellent presentation was a team effort by Colin Sandercok; a Partner at Perkins Cole LLP; and Ted Pawela; Senior Director of Product Marketing at Accelrys. Accelrys provides many data management and informatics services/products, including ELN products.  Accelrys’ information  can be found here.

     The take-home from Colin and Ted’s presentation was: ‘don’t throw out the lab notebook with the AIA!’  As Colin and Ted correctly noted, inventorship squabbles over who invented what and when are not a thing of the past by any means- even in light of recently enacted (March 16, 2013) provisions of the AIA. As many readers are aware, the AIA pushed the U.S. from a “first-to-invent” patent system to a “first-to-file”  patent system.  Notwithstanding this change, patents still must be filed by one who is the inventor (or an assignee).  

While the AIA has put a heavier burden on the inventor to get his or her patent application filed before the other inventor(s) file, the AIA (at least in theory) hasn’t sanctioned stealing the invention of another inventor.  Thus, “derivation” proceedings under Section 146 of the Patent Act (35 U.S.C. §146) are available to determine if one person or entity derived a particular invention from another person (or in plain English, if they stole someone else’s great idea..). In addition, as Colin noted in his presentation, applications claiming pre-AIA priority dates may still be the subject of an interference proceeding. In fact, Colin noted that we may still be seeing interference proceedings out to 2020 or 2030!

   So..  if you’re in science or R&D, don’t throw out the lab notebook and, if you’re a patent attorney specializing in interference practice, you still have a job!

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