This is the first of a three part series dealing with three important
stages in the development of an invention; conception, actual, and
constructive, reduction to practice.
It is a common misconception that conception refers to the explosion
in the mind of the inventor that stimulates the development of the
invention, or that conception involves realizing the scope of a
problem to be solved and the desirability of solving it. In fact, in
patent law terms, conception is much more. Conception requires the
formulation, in the inventor's mind, of a complete way of solving some
problem. A general approach, or identification of a problem, is not
enough. A rough rule of thumb is that conception is complete when no
more than routine skill in the art is needed to complete the
invention. If inventive or creative effort is still required to work
out the method of solving a problem, then conception is not complete.
In fact, evidence of further experimentation or research can act as
evidence against completion of conception.
Establishing conception is critical because, coupled with diligence
(discussed in a previous article in this newsletter and available
online at www.invention-protection.com) towards reduction to practice,
can be used to establish an earlier date of invention, and possibly
defeat claims of later inventors.
Utility is a necessary part of conception. For example, a person who
synthesizes a chemical compound with no idea of its usefulness has not
conceived it, even though that same synthesis might serve as prior art
against a subsequent inventor! One might think that a drawing of an
invention would show conception, but this is not necessarily so,
particularly when the drawings are preliminary in nature and would not
allow person of ordinary skill in the art to reduce the invention to
practice, even if the drawing is witnessed by another. The inventor
must be prepared to show that he or she had a definite and permanent
idea of the complete invention in order to claim conception.
The key to an early claim of conception is a good set of records. The
easiest, and most effective, is the inventor's notebook. Record dates
and events of development carefully, and have the notebook witnessed,
in writing, by a person who is not so close to the inventive process
as to have a possible conflict of interest. The date of conception can
often only be proven retroactively, by analyzing this type of record,
to find the date when the last piece of the inventive puzzle actually
fell in place. Remember, your own recollection can be faulty, and if
you ever need to prove your date of conception, you will want more
than your own testimony to back up your claims.
Next time, we will take up the concept of actual reduction to
practice.
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