Researcher Notebook Guidelines
A researcher's success in obtaining a patent these days may depend not only on how original and useful the discovery is, but also on how carefully he or she has kept a research notebook. In the United States, being able to prove when you made an invention may be vital to getting a patent. In addition, patent claims are increasingly challenged by competitors. In such situations inventors may have to present their notebooks for inspection. Any irregularities in record keeping become red flags to an opponent's attorney.
Thus, researchers should take a few common-sense steps to protect themselves and their work. These practices not only help to back up patent claims, but also ensure against loss of valuable data, provide proof of fulfillment of contracts, and protect against allegations of conflict of interest or research fraud.
View our lab notebook guidelines
If you would like to receive more information and/or training on keeping a laboratory notebook, contact Cheryl Scadlock, Information Specialist at WARF.
Confidentiality Agreements
Unless done on a confidential basis, telling another party the details of your research may cost you patent rights. Such "public disclosure" can occur quite inadvertently when company executives or other researchers visit your lab or meet with you at conferences or other venues. Signing a written agreement prior to these meetings will document the intention of the parties to maintain the confidentiality of the information you provide to them. This can be achieved through a confidential disclosure agreement (CDA) between you and the other party.
For confidential disclosures that involve a technology disclosed to and accepted by WARF, please contact your WARF licensing manager to arrange a CDA between you and the interested company.
If you receive a company's CDA for signature, you may want to compare the provisions with the terms of WARF's agreement. Be particularly careful about any terms that are substantially different or more restrictive than the terms in WARF's CDA. Depending on the exact circumstances, such terms may be appropriate, but you may want to seek legal counsel on restrictive or unclear provisions.
View WARF's Standard Confidential Disclosure Agreement
Please contact your licensing manager if you need to arrange a CDA between you and another party.
Materials Transfer Agreements
Materials transfer agreements (MTAs) are agreements between you, another scientist, and your respective institutions. An MTA allows you to share your research materials, such as a cell line, plant germplasm, a chemical compound or a polymer, with another scientist for research purposes, while protecting your intellectual property rights to the materials. You should always have an MTA in place before sending your research materials to someone outside your laboratory.
To learn more about arranging an MTA, go to WARF's Materials Transfer Agreements page. If you have any questions, don't hesitate to contact your WARF licensing manager.
Timing: Disclosures and Publications
We suggest you bring your intellectual property to WARF as early as possible, preferably before any public discussion of the technology, so that we can help you to obtain the maximum benefit from U.S. and international patent laws.
Public Disclosure More Than One Year Before Filing a U.S. Patent Application
If you fail to file a U.S. patent application within one year of disclosing your invention publicly, all possibilities of obtaining a patent are lost. This rule applies in both the U.S. and in foreign countries.
Public Disclosure Less Than One Year Before Filing a U.S. Patent Application
The United States offers a one-year grace period from the time of public disclosure to the filing of a patent application. Thus, if you have already made a public disclosure of your invention but less than a year has passed since the date of the first disclosure, WARF should still be able to prepare a high-quality patent application on your work. This especially true if you bring your invention to WARF at least three months ahead of the deadline for filing a U.S. application.
Please Note: There is no one-year grace period for filing foreign patents. ALL foreign patent opportunities are usually lost if ANY disclosure occurs prior to the filing of a U.S. patent application. For certain technologies, this can be a major loss, since foreign markets may account for 50 to 70 percent of the income value of a technology.
No Public Disclosure Prior to Filing a U.S. Patent Application
This is the best possible case. If the technology is patentable, U.S. and foreign patent rights are obtainable. Please note that if your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to WARF prior to any public disclosures.
WARF needs some lead-time to consider a disclosure and, if accepted, draft an application. A total of three months is preferred, although accelerated handling is possible in some circumstances. Therefore, you should consider a disclosure to WARF at the same time you are preparing a manuscript for submission to a journal or are planning a poster session or public seminar. This also applies to dissertations being readied for submission to the library, abstracts, and other disclosures not usually considered "publications" for academic purposes.
The above disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Give your intellectual property manager a call if you have any questions.
