Patent and Trademark Law

In the field of patent law, where the United States Patent and Trademark Office (PTO) awards patents to those who are first to invent (and not necessarily to those who are first to file applications), it is advantageous for inventors to describe or otherwise memorialize their inventions in a laboratory notebook or workbook, or in another retrievable document typically called the “invention record” or “record of invention.”

The invention record may not only help to establish an early date of invention in a subsequent interference (or dispute with another applicant claiming the same or similar invention),^[1]� but it also provides the patent lawyers with the technical and factual information necessary to prepare a patent application. Often, inventors are instructed to identify in the invention record the most relevant prior art (e.g., patent or publications previously issued) as well as what the inventor believes to be the distinguishing features of the invention.^[2]� Often, patent attorneys rely on such information to satisfy their duty of disclosure owed to the PTO, and, if prior art identified in the invention record is not disclosed to the PTO, the patent-to-issue may be rendered unenforceable.^[3]�