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    Records no longer win a race, but they win disputes

    First-to-file ended the race to prove the earliest invention date, yet records still decide who invented, what was communicated and when.

    Lesson 2 of 8 · 5 min

    A line drawing of a closed notebook with a ribbon marker floating above a block of black obsidian

    What changed, and what did not

    US law now measures prior art, the earlier material that can block a patent, against your effective filing date (35 U.S.C. § 102). So a notebook no longer wins a race to prove who invented first. Records still decide who invented, what was communicated and when.

    Where records carry weight

    • Derivation. This is a claim that someone took the invention from you. A petition is due within 1 year of the earlier of grant or publication (35 U.S.C. § 135). The showing of communication must be corroborated, which means backed by evidence beyond your own word (37 C.F.R. § 42.405).
    • Inventorship. Records help show who contributed what, as the Manual of Patent Examining Procedure (MPEP), the USPTO's examiner handbook, recognizes (MPEP § 2157).
    • Grace-period exceptions. If a paper lists more authors than inventors, you may need to prove the disclosure came from the inventors (MPEP § 2153.01).
    • Prior commercial use. This defense needs clear and convincing evidence (35 U.S.C. § 273).
    • Trade secrets. You must be able to show the "reasonable measures" you took (18 U.S.C. § 1839).

    What a good record looks like

    Conception is the moment the complete idea forms in the inventor's mind. One commentary on the Apator case reports that an unwitnessed notebook alone cannot corroborate testimony about conception (IPWatchdog). A witness matters.

    The National Cancer Institute's guidance is the best practical checklist we found (NCI Technology Transfer Center). It is good practice, not a legal standard, and we found no USPTO notebook standard. For paper records it suggests:

    • A bound notebook.
    • Signing and dating every page.
    • A non-inventor witness who signs "read and understood".
    • No erasing.

    For electronic records it suggests a named custodian, write-protected storage, time-stamps and restricted access (NCI Technology Transfer Center).

    Start now, not at trial

    Evidence of failed attempts, long-felt need and sales can support a patent later, and the time to keep it is while you develop (Graham). Save the failed experiments as well as the one that worked.

    Timeless wisdom

    In our judgment, evidence made at the time carries weight that memory does not. A derivation claim needs corroboration of what was communicated (37 C.F.R. § 42.405). The prior commercial use defense needs clear and convincing evidence (35 U.S.C. § 273). Graham adds a reason to keep evidence of failed attempts, long-felt need and sales while developing, not at trial (Graham). In our judgment, the habit matters more than the format: date it, keep it and have someone else see it.

    What's current

    As of November 6, 2026

    Google v. Valtrus (October 19, 2026, precedential) reportedly held that Word metadata on original invention disclosure files corroborated a co-inventor's testimony, because the inventor did not write the metadata. We rely on commentary and have not read the opinion (IPWatchdog). The case arose under the rules in place before the America Invents Act (AIA), so it concerns corroboration, not first-to-file priority, and the result also rested on a declaration and expert analysis. In our judgment, keep native files, not only PDFs.

    Fortress Iron raises the stakes on recording who conceived what (opinion). For AI-assisted work, the November 28, 2025 notice does not require documenting contributions (90 FR 54636). In our judgment, a dated record of what the human specified, chose and changed is still the practical evidence. Derivation petitions were rare as of an October 2018 tracker (PostGrantProceedings).

    Key takeaways

    • Under first-to-file, records no longer win a race to the earliest invention date.
    • Records still matter for inventorship, derivation, grace-period proof, prior use and trade secrets.
    • A record no one else has seen is weak evidence, so use a non-inventor witness.
    • Keep original native files, along with failed attempts as well as successes.

    Check your understanding

    1. Why keep careful invention records now that the US gives priority based on filing date?
    2. Which record would best match the guidance in this lesson?

    Write down your invention

    Sources

    1. 35 U.S.C. § 102
    2. 35 U.S.C. § 135
    3. 37 C.F.R. § 42.405
    4. MPEP § 2157
    5. MPEP § 2153
    6. 35 U.S.C. § 273
    7. 18 U.S.C. § 1839
    8. IPWatchdog on Apator (2018)
    9. NCI Technology Transfer Center, keeping laboratory records
    10. Graham v. John Deere Co.
    11. IPWatchdog on Google v. Valtrus (2026)
    12. Fortress Iron opinion (Fed. Cir. 2026)
    13. 90 FR 54636
    14. PostGrantProceedings, PTAB trial statistics (October 2018)

    The Academy is general education, not legal advice, and reading it doesn't create an attorney-client relationship. Patent law and fees change, so check the linked sources and have a registered patent attorney or agent review your situation before you file. Obsidyan sells patent software, including AI drafting tools, so weigh what these lessons say about AI tools with that in mind.

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