The following article appears in the journal JOM, 51 (8) (1999), p. 48. JOM is a publication of The Minerals, Metals & Materials Society

The Value and Validity of Electronic Records in Patent Matters

There are numerous situations in patent law wherein the proof of facts is best achieved through documentary evidence; such evidence tends to be given more weight than the recollection of undocu-mented facts or oral communications. It is common today to use computers to create, revise, store, and transmit documents. Documents and other information may be stored in the hard drive of the computer or on various magnetic medias such as floppy disks, CD-ROMS, or tapes. Information may be transmitted electronically over the Internet as well as other local and wide-area network systems.

One example of the need to prove facts in a patent context is the avoidance of prior art by proving that one has made an invention before the effective date of the prior art. Facts involved in such proof may include the technical disclosure of an invention and the dates of invention. In interference proceedings in the United States wherein two or more parties are each seeking to obtain a patent for an identical invention, proof of the date of creation of the idea (i.e., conception) and proof of the reduction to practice are generally of critical importance. The reduction to practice may be an actual reduction to practice through the physical verification of an invention's operability or a constructive reduction to practice through the filing of a patent application. These issues involve proof of details of the technical disclosure and dates. In addi-tion, witnesses who can corroborate the existence of the disclosure are important.

Another situation where proof of facts can be important is whether one filing a patent application has, in fact, disclosed the best mode of practicing the invention known to the inventor as of the filing date. Invention disclosures created prior to the filing date can shed light on what the inventor knew before the filing date. Al-so, agreement situations, such as joint ventures or licenses, may involve the need to establish a line of demarcation between background rights and inventions made after the date of the agreement. Records can be valuable in proving such facts.

The more difficult it is to challenge the accuracy of the evidence, the easier it is to prove that factual assertions are accurate. For example, if an inventor kept a record of research and development in a loose-leaf notebook with entries made in pencil and gaps left in a random fashion between successive entries, such a system would be subject to challenge. Contrast this with the probative weight given to a bound notebook wherein all entries were made in ink and in sequence without gaps, thereby minimizing the likelihood of alteration, substitution, or removal of pages or later insertion of information into blank spaces.

One obvious weakness of facts stored in computers or on magnetic media is that they are subject to alteration without the alterations being readily detectable. Also, it is more difficult to have a witness's signature attesting to the existence of the record at a given date and the content thereof.

One obvious way of enhancing the credibility of facts stored on magnetic media would be to print hard copies and have the documents signed and dated by the appropriate individuals, such as the inventors and witnesses. As an alternative to original signatures by the inventor or inventors, a disclosure of an invention could be transmitted electronically to one or more witnesses, with the inventors employing a typed signature and date, and the witnesses printing the document, reviewing the same, and signing and dating the same as witnesses.

Where time is of the essence and the parties involved are in many different geographic locations, transmission by electronic means assures immediate delivery of the document or documents to a plurality of locations. As it is important that the witnesses be able to understand the technology, this approach broadens the universe of potential witnesses.

Another advantage of the use of computers and magnetic-storage media is that security means, such as the use of access codes and encryption, may be employed. Access codes limit the avail-ability of the information to others, while encryption enables controlled access to the key to decrypt the information. The use of passwords and encryption can also be of value in proving that a third party could not have altered the documents.

It should be noted that in patent litigation the use of electronic storage will not serve as a bar to an opposing party getting access to information merely because it is stored in this manner. An appropriately worded request would reach such information in the absence of an independent basis for withholding the information (e.g., the attorney-client privilege).

In important situations, the information can be placed on magnetic media and placed in escrow or in the hands of another trustworthy entity, with the date of delivery being recorded. The date of delivery is important as otherwise one could backdate the date on the computer and then print out the document with the false date.

One could also "burn" the information into a CD-ROM, thereby precluding subsequent alteration. Delivery of the CD-ROM to a third party at an early date would be important in this context in or-der to establish a date; otherwise it could be difficult to prove that the computer records were not backdated prior to creation of the CD-ROM.

There is no reason, in respect of patent considerations, to avoid taking maximum advantage of the modern technology available through the use of computers, the Internet, network technology, and related technologies, provided that appropriate procedures are adopted in certain instances so as to avoid weakening the evidentiary impact of the information. This is best accomplished by establishing policies and procedures that will enable one to have the best of both worlds in terms of the benefits of modern technology and the ability to prove important facts in a patent matter.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC.

For more information, contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44nd Floor, Pittsburgh, Pennsyl-vania 15219; (412) 566-2077; fax 9412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.