XII. Documentation

Documentation is extremely important in any TT activity. Since the entire process depends upon contacts, discussions, agreements, the timing of events, especially inventions and the actions relating to them, it is of utmost importance that one involved in the process keep as accurate, complete, and reliable records as possible. And since these activities often relate to money (or the prospect thereof), people tend to take them very seriously (and sometimes to court).

Therefore, it is essential that logs and/or records (above and beyond the usual receipts, checks, purchase orders, and similar abbreviated records) be kept on a regular basis, and preferably in a form that cannot be tampered, altered, or misrepresented. In relation to inventions, the usual preferred form is a bound notebook, with all entries in ink, with no erasures (errors lined out and initialed), and with each page signed, dated, and witnessed by (i.e., "read and understood by") someone who understands what it is that he/she is signing. These can be important when applying for a patent, especially in establishing who was the first to invent, and in showing "due diligence".

Realistically, or course, no one wants to be bothered with this sort of meticulous bookkeeping on a daily basis. I would suggest that the potential inventor should go to these lengths only on those days when significant ideas occur, or when important changes to the concept or design occur, and we all know that these do not occur every day. But even small changes are often worth recording, if only to avoid repeating them. You might want to keep a log most of the time, but only bother with witnessing on the entries you feel are important. Unfortunately, that is not always an easy conclusion at the time. In summary, I would recommend an attempt at relatively continuous and complete record keeping for the serious inventor. (It need not be in beautiful prose with perfect diagrams, and can certainly be done by hand with free-hand sketches if that is easier.)

In the course of conversations, by phone or in person, it is important to know who talked with whom, when, for what purpose, and the essence of what was said. These matters can be important when negotiating or drafting agreements, even if there is no legal battle. They are even important for reference during subsequent conversations. Further, if a question comes up with regard to the propriety of actions taken, it is always helpful to have the documentation to support the action, or even to show that it was approved by your superior.

Certain documents are actually required in connection with patentable inventions by government employees. For example, Section 1.65 of 38CFR [CFR38, 1992] requires that governments employee-inventors must file a Disclosure of Invention [Appendix L] with the VA Office of General Counsel. (This applies to part-time employees, WOC (without compensation) employees and consultants as well). The Office of General Counsel (GC) then makes the determination that either (1) the rights to said invention belong to the Federal government; or (2) the rights belong to the individual inventor(s), with a royalty-free, nonexclusive, paid-up license to the government.

The primary reason for documenting work on a patentable device is that in the United States, a patent is awarded to the "first to invent", whereas most other countries award a patent to the "first to file". Hence, the need for documentation comes up in the U.S. if there is an infringement or an interference, in which a second party challenges the validity of your patent on the grounds that he/she is the original inventor and predates your discovery or invention. Good documentation then becomes crucial. However, the U.S. Congress is now considering whether to change the U.S. patent practice to conform with the standards of the rest of the world, in which the deciding factor would then be the first to file for a patent, regardless of who invented the device first. Documentation would not then be a factor in the validity of your patent, but would still be important in establishing your status as a legal inventor (see Section XIV).

There are three particularly important points to be made about the requirement of filing a patent disclosure in the VA:

1. The time of filing such a document is ambiguous. Presumably, it should be filed as soon as practical after the inventor realizes that he/she may have invented something patentable.

2. If the Office of GC should decide to award the patent rights to the inventor (a common occurrence within the VA), then as of the date of notification, the inventor can no longer work to develop that invention while being paid by the Federal government. The reason is that it would have at least the appearance of a conflict of interest, since the employee would then be paid for developing a product that is actually his/her personal property.

3. We have found that the standard VA form for Disclosure of Invention is incomplete and can lead to lengthy correspondence from GC asking for additional information. Therefore, we have developed our own form [Appendix L] which seems to eliminate this problem.

It is important to note that no possible conflict of interest arises if the invention is made under a Cooperative R&D Agreement, since that agreement specifies under what conditions the invention belongs either to the government or to the company, with a portion of the royalties going to the inventor in either case.

As Chief of the Technology Transfer Section, I have found it useful to keep a rather detailed running "logbook" of daily activities and interactions, both to document important TT events (including conversations) and to give a time perspective to the sequence of events for future reference. I might even make an entry such as "My spouse stayed home sick today" simply to help me recall the details of that day. Bear in mind, however, that this log (if kept on a computer) may be of limited legal value, since it can easily be altered.

One type of documentation that could prove to be very important is the documentation of approval by your superior(s) for TT activities that might later come into question as a possible conflict of interest. It will serve to show that your actions were not a secret, and that they had your bosss approval. Such documentation would ideally show your reasons and justification for such actions. Remember that, according to VA policy [Appendix F], employees are directed to avoid even the appearance of a conflict of interest.