Many inventors believe that they can achieve a measure of protection for their invention simply by mailing a description of their invention to themselves and keeping the postmarked envelope sealed. This myth is propagated on numerous websites and even in books purporting to advise inventors on their best course of action. The theory is that the sealed, postmarked package can then be used to prove that the inventor conceived the invention prior to the date of the postmark. Unfortunately, there are a number of problems with this theory that render such an action virtually worthless.
Problems with the Myth
First and foremost, the only way for an inventor to obtain legal rights in the United States to his or her invention is to obtain a patent from the Untied States Patent and Trademark Office (“USPTO”). No other method, from an inventor mailing the invention to him or herself to conducting a search to filing a provisional application without following up with a regular application, is sufficient to secure patent rights in the United States. Therefore, those inventors who believe mailing themselves their invention is all they need to do to obtain protection are mistaken.
Furthermore, there are specific deadlines set out in the law for when an inventor may apply for a patent. An inventor has only one year from the first public disclosure or offer for sale of his or her invention to file an application with the USPTO. Inventors cannot toll this time limit by mailing a description of the invention to themselves.
Some inventors who have heard the myth realize that they will have to file an application within the requisite time period regardless of what other actions they take. However, they still believe that mailing themselves their invention will have value in proving that they were the first inventor should someone else try to patent the invention first. Under United States patent law, the first person to invent an invention is entitled to the patent for that invention, so long as the first to invent did not abandon, suppress, or conceal the invention. If two inventors both file an application for the same invention, the USPTO may declare an interference and will look at evidence to decide who was the first inventor.
According to the myth, the sealed postmarked envelope containing the description of the invention can be used as evidence in an interference to prove that the inventor was the first inventor. However, such evidence can be easily faked. A devious person could send an unsealed envelope to him or herself, then insert a description of another person's invention therein later and seal it. Thus, they will end up with a sealed postmarked envelope containing a description of the invention, even though they did not invent the invention. Furthermore, envelopes can be steamed open and resealed. Therefore, the fact that the envelope is sealed does not mean that the contents have not been altered since the date on the postmark.
An inventor could testify or sign an affidavit stating that the invention description really was placed in the envelope before the date of the postmark. However, this testimony would be no more reliable and of no more value than testimony that the inventor invented the invention before the same date. Therefore, the inventor can present the same quality of testimony merely by testifying as to the facts without bothering to mail themselves their invention. The existence of the sealed postmarked envelope does not add to the level of evidence presented by the inventor.
The tragedy of the mail-yourself-your-invention myth is that many inventors who believe this myth may rely on this method to the exclusion of actions that could result in actual protection of their invention. They may not find out that they are not protected until it is too late to take the correct steps and receive protection.
There are steps that an inventor can take to document their invention that are useful in establishing their date of invention should it be necessary, either during an interference or during infringement litigation. The gold standard is the inventor's notebook. An inventor's notebook is basically a log of every step the inventor took in developing his or her invention.
To prepare an inventor's notebook, it is best to start with a bound book with pre-numbered blank pages. Another option is a composition book or other notebook into which additional pages cannot be added. If the pages are not numbered, the first step is to number every page, both front and back, in ink. The inventor should then record every idea, sketch, data, etc. concerning the invention in the notebook, dating every entry. The inventor should not skip around in the book, but rather should start on page one and proceed consecutively, filling each page before moving on to the next, to show that additional information was not added later. If any blank spaces are left, a line should be drawn through them to indicate that they are blank. This also shows that additional information was not added later. No pages should be removed, and nothing should be erased. The inventor should fix errors by crossing them out, adding a correction nearby, and initialing and dating the cross-out and correction. Material that needs to be added to the notebook, such as computer printouts and photographs, should be pasted onto the pages of the notebook. The inventor should periodically ask one or more witnesses to read the material entered thus far into the notebook. Each witness should then make an entry at the end of the existing material indicating that he or she read and understood that material in the notebook as of that date, and the witness should sign and date the statement. Ideally, the witnesses should also provide contact information in case the inventor ever needs to call upon them to testify.
These steps will ensure that the notebook is of maximum evidentiary value by ensuring that alteration of the notebook is difficult and providing names of witnesses who may be called to testify concerning the contents of the notebook. These witnesses can testify that the inventor had indeed invented the invention as of the relevant date, as indicated by the notebook. The notebook can also provide support for an inventor's assertion that he or she worked diligently on the invention and did not abandon it.
Obviously, it is best if an inventor begins an inventor's notebook before beginning work on an invention. However, even if an inventor did not keep an inventor's notebook, he or she may establish that the invention was conceived at least as of a later date by preparing a record of invention. A record of invention is a written description of the invention, including all relevant information, that is signed and dated by the inventor and one or more witnesses. While a record of invention does not provide evidence as strong as that provided by an inventor's notebook, it does provide some evidence and, more importantly, provides the names of witnesses who can testify that the inventor did invent the invention at least as of the date of the record of invention.