© 2002, Dawsey Co., LPA
August 2002

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.