How to Protect Your Invention - The Inventor's Journal

By: Elias Borges, patent & trademark lawyer.











Introduction: Having been in the business of protecting inventions for over 28 years, I have seen multiple times how inventor's have either lost their rights or had their rights severely constrained as a result of nefarious actions by third parties such as co-inventor's, partners, investors, independent contractors and sales/marketing agents. In such cases, the inventor is called upon to "prove" his/her ownership of the invention which, in some cases, can be remarkably difficult to do. In one example I was intimately involved with, a dispute as to "who invented what" resulted in millions of dollars of wasted R&D efforts and a prolonged legal battle taking many years and costing hundreds of thousands of dollars. A $10 notebook could have prevented all of that. Let me explain how.

The Problem: Protecting the invention from others who were tangentially involved in the project and might later either misappropriate the invention or claim some form of ownership in the invention. When a dispute arises, the party with the best evidence as to what was invented, when and by who is in the strongest position.

The Background: Inventing is a creative process where the inventor, inspired by an inventive spark, creates a design for a product, process or thing which solves some previously unanswered problem. The inventing process is often iterative, involving initial conception, research, preliminary design, prototyping, testing, re-designing, optimization, re-testing and the like until the invention is sufficiently developed to warrant commercialization. The process often involves more than just one person, particularly in the later stages of the project when other people are retained to work on different aspects of the project such as engineering, marketing, financing, and design optimization. If multiple people were involved in the creation of a product, particularly in the design or engineering of that product, there is always the possibility that more than one person was the inventor, and therefore, the invention may have multiple owners. Disputes often arise between different people all claiming some rights to the invention.

All through the inventing process the inventor(s) record their efforts by what ever means convenient in order to organize their thoughts and better plan their efforts. In most cases, these records are scattered within multiple notebooks, binders, drawing sheets, emails, scraps of paper and multiple computer files and directories. These records are often undated, unsigned, unorganized and, as a result, of little value when it comes to elucidating who invented what. There is however a simple and convenient solution to this problem: the inventor's journal. This is a paper journal wherein the inventor (or principle inventor in the case of multiple inventors) makes periodic entries to record the inventing process as it occurs. The inventor can update the journal with notes on ideas for improvements, experiments that were attempted, meetings that occurred, sketches, formulas, to-do lists, the names and locations of important data files, contact information, and any other information which may be of value at a later date. Should a dispute arise, all the inventor has to do is look through the journal to determine who did what and when. If the dispute is to be resolved by the aid of a third party such as a judge or arbitrator in a legal dispute, the journal itself can be entered into evidence, making for a compelling and decisive piece of evidence.

The Inventor's Journal

The journal itself should have some basic characteristics. It should be a paper journal, preferably in the form of a hard covered book with blank pages which are glued to the spine of the binding. The goal is to produce a written document who's authenticity can be trusted and relied on as a piece of evidence. Loose leaf paper bound in a three ringed binder does not engender the same level of trust and is prone to lost or misplaced pages. The size and caliber of the journal is a matter of personal preference, but anything from a 4" x 6" hard covered notebook purchased at a dollar store to a leather bound 8.5" x 11" notebook purchased in an upscale shop will do. Suitable examples are listed below.

The pages of the journal could be ruled but blank pages are also good as they permit the inventor to easily draw illustrations, schematics or drawings which are often necessary to properly explain and illustrate the invention. Preferably the journal should be of sufficient quality to lie flat when open, making it easier to create illustrations and jot down notes. The pages of the journal must be numbered to ensure that if pages are later removed their removal can be easily detected. The fist page of the journal should be titled with the name of the project (or some other suitable heading), the name of the inventor, and most importantly, the date. As entries are made in the journal, the date is recorded to ensure an easy and trustworthy chronology of events and developments. In the event that a few entries are not dated, their dates can be estimated from previous and later dated entries. Of course, entries in the journal should be made in ink, so a journal with some means of holding a pen is advantageous. Making notes with pencil should be avoided because such notes are susceptible to erasure and even fading. If used consistently, the inventor's journal becomes a tool to help the inventor invent as well as protect the inventor's investment.

Can an electronic device like a tablet, smart phone or laptop/desktop computer work as well. In my opinion, no. Remember, the goal is to create a piece of evidence which has intrinsic trustworthiness and which can be called upon as evidence in the event of a dispute. Electronic documents such as Microsoft word documents, Excel spread sheets, and even database records do not have this intrinsic level of trust. There are exceptions of course, but notebook software often lacks the versatility and trustworthiness of an old fashioned paper journal. Furthermore, electronic devices are surprisingly difficult to use in comparison to a simple paper journal. Sketches, drawings and illustrations are surprisingly difficult to generate in a notebook application, especially when compared to simple paper and pen. However, I concede that it may be possible to create an application for use on a portable electronic device such as a small tablet which can be used in combination with a stylus which could potentially rival the trustworthiness and ease of use of a paper journal. Such a device/application may fit the requirements of an inventor's journal provided it recorded the date of each entry, recorded and fixed in place the chronology of the entries, required each entry to be "saved" before a subsequent entry could be made, and rendered it impossible to either delete or amend past entries. If anyone knows of such a device and/or application, please let me know and I'll add it to the list of suitable journals.

List of Notebooks Suitable for Use as an Inventor's Journal:

Staples® Hardcover Notebook, 9-1/4" x 7-1/4" - Available at Staples, ~$8

Hilroy Composition Book, 9-3/4" x 7-1/2" - Available at Staples and Amazon, ~$6

Blueline® Hardcover Notebook, 9-1/4" x 7-1/4" - Available at Staples and Amazon, ~$8

Mead® Bonded Leather Journal, 6-1/2" x 9" - Available at Staples, ~$25









