State of grace for lab books

For many years researchers have been harangued by well-meaning patent attorneys and intellectual property managers about the onerous standards to which they should maintain their lab books, just in case one day they are needed to prove the date of invention to the US Patent Office.

Every page has to be signed and dated, every page witnessed by another person and so on. I’m sure you’ve all heard it before, and perhaps you’ve complied with the eagerness of a New Year’s resolution that fizzles by February. When the real business of the next experiment takes hold, the possibility of needing a prim and proper lab book to display to the US Patent Office is soon forgotten.

But is this all going to change?

Although we can file a Patent Cooperation Treaty (PCT) patent application that covers just about every desirable country for a patent (138 countries at last count), there is no such thing as an international patent. You still need to dive off your PCT application into each of the nations and regions in which you want a granted patent. Each patent office will then provide their own opinion about the allowability of your patent depending on their local laws and regulations.

One major difference in which US patent law has long been at odds with the rest of the world is when it comes to judging the winner of the invention race. Everywhere else, the patent prize is awarded to the first person to reach the patent office, the ‘first to patent’. In the US, however, if two patents are in the examination pipeline at the same time, an interference proceeding will award the monopoly to the one who can prove (with a cast-iron lab book) that they were the ‘first to invent’.

You may have heard the rumours that changes are afoot in the US patent system. These reforms will make the US a ‘first to patent’ country in line with the rest of the world. Although this has been mooted for quite a while, the US House of Representatives has now passed the Patent Reform Bill 2007 by a vote of 220 to 175. The US Senate, however, is also considering a version of the reforms so it still may be a long time before a single version is agreed by both houses and signed by the US president.

One of the other big discrepancies in international patent law is the availability of a grace period. This is a period of time after public disclosure of an invention during which a patent application can still be safely filed. This safety net is currently available in several countries including the US, Canada and Australia.

This allows you to publish your results or present at a conference and still get your patent filed afterwards in these countries. Or to put it another way, your own publication will not qualify as ‘prior art’ to the invention.

Unfortunately, the grace period rules vary from country to country. For example, even though the provision of a grace period is included in the Australia-United States Free Trade Agreement, the implementation is different on either side of the Pacific Ocean.

You might be able to convince the US to turn a blind eye to your disclosures in the 12 months before your provisional patent application, whereas in Australia you can only try this for disclosures in the 12 months up to your complete application.

In most other countries, your public announcement will be an own-goal, and the patent offices will decline your patent on the grounds that you no longer have a secret to give them in exchange for a monopoly. So the grace period is handy but has been of limited use since it is not widely available around the major trading nations of the world.

It should not be used as part of a deliberate patenting strategy since the effect will be to scupper your patents in many places, especially Europe and the rising markets of India and China. Any chance you might have had in commercialising your invention is therefore likely to evaporate as a result.

In an ideal world, a consistent international approach to grace periods might have been achieved if the countries who are signatories of the Patent Cooperation Treaty administered by the World Intellectual Property Organisation (WIPO) could agree to a multilateral grace period rule which each country would then incorporate into their own patent laws. However, getting 138 countries to agree about grace periods has not yet been successful.

So what relevance are grace periods to lab books?

The answer lies in the way that the US government is ‘negotiating’ international patent reform. To return to the US reforms, rather than wait for the 138 signatories of the PCT to reach agreement, the US is trying something that may be more easily achieved since it does not involve an international treaty or free trade agreement.

Another section in the US Patent Reform Bill 2007 specifies that the removal of the ‘first to invent’ provisions will only come into effect 90 days after the US president is satisfied that Europe and Japan have adopted a patent grace period similar to that of the US. There is, however, no specific timetable for these changes to take place in Europe and Japan, so we should not expect the US to become a ‘first to file’ country anytime soon.

And if this ever does come to pass, can we all relax about lab books? Well maybe, but only a little. You see, lab books will still have many other benefits, some old and some new.

In the traditional category, is that it has always been important to keep accurate experimental records so that you can recall what you have done, reproduce the experiment and write up your work for publication.

A reminder of these cornerstone aspects is found in the recent publication of the updated Australian Code for the Responsible Conduct of Research, a joint publication by the National Health and Medical Research Council (NH&MRC), Australian Research Council (ARC) and Universities Australia.

This code reminds us that lab records are also important for refuting allegations of research misconduct and ensuring proper attribution of authorship. Compliance with this code is a prerequisite for receiving NH&MRC or ARC funding.

In the modern category, you may also find that if you have commercial parties involved in your research that there is a contractual obligation to keep diligent records, and that if your results have a commercial impact they may even need to be presented to a financial stock exchange.

There are also many occasions in which basic research has lead to patentable outcomes. In this scenario your lab records will be your best ally in showing your inventive contribution when it comes time to divide the royalty cheque among the inventors.

The changes in US patent law will potentially have wide-ranging implications for research around the world, but it is still unclear when they will come into effect. In any case, there will remain many valuable reasons for diligent record keeping and considering patents prior to publication.

Dr Lachlan Wilson is a patent and trade marks attorney with Watermark.