Patent It Yourself - PDF Archive

54 | Patent it YOURSELF
be as impartial and competent as possible, which means
they shouldn’t be close relatives or people who have been
working so closely with you as to be possible coinventors.
A knowledgeable friend, business associate, or professional
will make an excellent witness, provided he or she has the
necessary technical ability or background to understand
the invention. Generally, a witness who understands
what the invention does and how it’s made and used will
be adequate. But if the invention is technically complex,
it’s best to get a witness who understands the invention’s
underlying theory. The witness should also be someone
who’s likely to be avail able later. Obviously, a person who’s
seriously ill, or of very advanced age, wouldn’t be a good
choice. Don’t ask your patent attorney (if you are using one)
to perform this function, since the courts and the PTO
won’t allow an attorney to represent someone and also be
that person’s witness.
If the invention is a very simple mechanical device,
practically anyone will have the technical qualifications to
be a witness. But if it involves advanced chemical or electronic
concepts, obviously a person with an adequate background
in the field will have to be used. The witness need not
understand the theory behind the invention, but should be
knowledgeable enough to understand what it does and how
it works. If called upon later, the witnesses should be able
to testify to their own knowledge that the physical and/or
chemical facts of the entry are correct. Thus they shouldn’t
just be witnesses to your signature, so you should not use a
notary or a lay person who just witnesses your signature, as
do witnesses to a will. Rather the witnesses should actually
read or view and understand the actual technical subject
material in the notebook, including the actual tests if they
are witnessing the building and testing (Fig. 3B). Obviously,
then, you should call in your witnesses to observe your final
tests and measurements so that they can later testify that
they did witness them.
Should You Have Your Notebook
Entries or Disclosure Notarized?
Many inventors ask if they should take their note book
or disclosure to a notary and sign it before the notary
and have the document notarized. While notarization
is slightly better than no witnesses at all, notarization
is far inferior to live witnesses. Why? In the U.S. system
of jurisprudence, the triers of fact (judge or jury)
base their decisions primarily on the testimony of live
witnesses, who are subject to cross examination and who
understand the document in question and are not merely
a “signature witness.”
While one witness may be sufficient, the law gives much
greater credence to two. If both are available, your case will
be very strong. Also having two witnesses will enhance the
likelihood of at least one of them being available to testify at
a later date. Also, if a dispute occurs between two inventors,
the one with the greater number of witnesses will prevail,
assuming all other considerations are substantially a wash.
Some notebooks already contain, on each page, a line
for the inventor’s signature and date, together with the
words “Witnessed and Understood” with lines for two
signatures and dates. If your notebook doesn’t already
contain these words and signature lines, merely write them
in as indicated in Figs. 3A to 3C. To really tie down the
trade secret status of your invention, you should add the
words “The above confidential information is” just before
the words “Witnessed and Understood,” as has been done
on Form 3-2 and on Figs. 3A, 3B, and 3C. You and the
witnesses should sign and enter the date on the appropriate
lines at the end of your description of the conception of
your invention and at the end of your description of your
building and testing.
6. What to Do With the Notebook
Now that you’ve made those nice notebook records of
conception and hopefully building and testing, what should
you do with the notebook? Basically nothing, except to keep
it in a safe place in case it’s ever needed (hopefully not!) for
one of the six “legal” reasons under Section C, above, and to
use it liberally as needed for one of the “invention process”
reasons under Section B, above.
G. Another Way to Record Conception
or Building and Testing—
The Invention Disclosure
Suppose you conclude that for some good reason it’s too
difficult or inconvenient for you to keep a notebook or
technical diary. There’s a second, albeit somewhat inferior,
way for you to record the conception or building and testing
of your invention. This is by using a document called an
“Invention Disclosure.”
Despite its formidable name, an Invention Disclosure
is hardly different from a properly completed notebook
entry of an invention. It should be a complete record of
your invention, including a title, its purpose(s), advantages,
a detailed description of it, in sufficient detail so that
one having ordinary skill in the field of your invention
will be able to make and use it, possible novel features,
ramifications, details of its construction if you built it, and