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DK2550_half 11/30/04 4:32 PM Page 1

PATENT LAW
for
SCIENTISTS
and
ENGINEERS

Copyright 2005 by Taylor & Francis Group, LLC

DK2550_title 1/10/05 10:52 AM Page 1

PATENT LAW
for
SCIENTISTS
and
ENGINEERS

edited by
Avery N. Goldstein

Boca Raton London New York Singapore

A CRC title, part of the Taylor & Francis imprint, a member of the
Taylor & Francis Group, the academic division of T&F Informa plc.

Copyright 2005 by Taylor & Francis Group, LLC

 DK2550_Discl Page 1 Monday, February 7, 2005 2:47 PM

Published in 2005 by
CRC Press
Taylor & Francis Group
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Boca Raton, FL 33487-2742

© 2005 by Taylor & Francis Group, LLC

CRC Press is an imprint of Taylor & Francis Group
No claim to original U.S. Government works
Printed in the United States of America on acid-free paper
10 9 8 7 6 5 4 3 2 1
International Standard Book Number-10: 0-8247-2383-X (Hardcover)
International Standard Book Number-13: 978-0-8247-2383-5 (Hardcover)
This book contains information obtained from authentic and highly regarded sources. Reprinted material is
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 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page v 10.2.2005 9:04am

Preface
Technology is the watchword of our age. Corporations and universities
have responded to changes in the economic order by accelerating the pace
of technological development and commercialization. A successful com-
pany now must have superior technology and to justify research expend-
itures, the resulting intellectual property must be protectable.
The patent system represents a bargain between the inventor and soci-
ety: in exchange for teaching the public of an inventor’s discovery, society
gives the inventor a limited term monopoly to exclude others from prac-
ticing the invention. The tinkers and visionaries of the previous times have
largely been replaced by a professional inventor class of scientists and
engineers who derive livelihoods by the solving of complex technological
problems. The solutions are brought to the benefit of the institution, and
ultimately society, only through the efforts of other professionals who take
an invention through the complex manufacturing, regulatory, and legal
facets of modern society.
The change in invention setting from the romantic notions of a sole
inventor toiling through the night to professional scientists and engineers
employed in an institutional workplace has affected not only the philosophy
and nature of science but the responsibilities charged to the inventor.
A scientist or engineer practicing their craft now must be aware of how
patent rights are woven through the research process. A breakthrough
discovery without proper patent protection may never reach the public,
since investment in the discovery cannot be justified if there is not a time
of exclusivity to recoup the cost of investment capital. This work has been
assembled under the premise that patent rights are integral to the work of
the scientist and engineer and not an adjunct to the solution of technical
problems.
While many texts have been written to deliver an understanding of
intellectual property law to scientists and engineers, these works have
generally failed to provide an appropriate scope, which is neither too
expansive nor too detailed. Rather than attempt to give a mile-high view
of all types of intellectual property or, at the other extreme, to turn the
technical reader into a pseudo-patent attorney, this work is intended to
provide the practicing scientist, engineer, or student with the understanding

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page vi 10.2.2005 9:04am

of those aspects of patent law that are needed to best protect their inven-
tions. Thus, for the secondary forms of intellectual property from the stand-
point of a scientist or engineer, trademark and copyright law, as well as the
mechanics of patent prosecution, the reader is generally referred elsewhere.
An assumption is inherent in this volume that the reader will have the
benefit of interacting with an information specialist to search patent data-
bases, and a patent agent or attorney to draft and prosecute patent applica-
tions. It is strongly recommended that an inventor seek out such patent
professionals to assure that a potential invention be afforded the greatest
opportunity to obtain the full protection available under the patent laws of
various countries and multinational treaties. It is my intention that the
reader finds the following pages filled with information that can be imple-
mented into the daily research routine.
Wherever practical, the issues discussed in a given chapter are followed
with fact patterns to emphasize actions necessary to protect the latent patent
rights that may exist in the solution of a technical problem. The illustration
of actual scenarios encountered by an engineer or scientist are intended to
highlight a practical course of action to best protect latent patent rights that
may well exist in an invention.

Avery N. Goldstein

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page vii 10.2.2005 9:04am

Editor
Avery N. Goldstein is a partner at the intellectual law firm of Gifford,
Krass, Groh, Sprinkle, Citkowski & Anderson, P.C. He is admitted to prac-
tice before the United States Patent and Trademark Office, the courts of the
State of Michigan and the federal courts. His practice is focused on biotech-
nology, chemistry, and nanotechnology patent prosecution. A patent he
prosecuted was recently named as one of the 10 most important patents in
nanotechnology by Nanotechnology Law & Business. He was the editor of the
Handbook of Nanophase Materials (1997). He previously worked as a Senior
Research Chemist in the chemical industry. He has authored over 20 papers
in the field and holds several patents in the area of nanotechnology. He
holds a Bachelor of Science degree in Chemistry, Bachelor of Science in
Biological Science, and a Juris Doctor degree from Wayne State University
and a doctorate degree in Chemistry from the University of California at
Berkeley. He is married with two children.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page viii 10.2.2005 9:04am

Contributors
Tom Brody Roberta J. Morris
Registered Patent Agent Patent Attorney
Coudert Brothers L.L.P Ann Arbor, Michigan
San Francisco, California
Peter J. Newman
Angela M. Davison University of Alabama at
Intellectual Property Counsel Birmingham
Ross Controls Birmingham Office of Grants and
Troy, Michigan Contracts Administration
(OGCA)
Ernest I. Gifford Birmingham, Alabama
Partner
Gifford, Krass, Groh, Sprinkle, Judith M. Riley
Anderson & Citkowski, P.C. Partner
Troy, Michigan Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C.
Avery N. Goldstein Troy, Michigan
Partner
Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C.
Troy, Michigan

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page ix 10.2.2005 9:04am

Contents
Part I: Introduction
Chapter 1 Anatomy of a patent
Roberta J. Morris

Part II: Inventive activities

Chapter 2 Research records in the patent process
Avery N. Goldstein

Chapter 3 Inventor actions that can jeopardize patent rights

Roberta J. Morris

Chapter 4 The invention disclosure document: recording the

essential facts of your invention
Judith M. Riley

Part III: Relationships

Chapter 5 Ownership of intellectual property: employer rights to
intellectual property
Ernest I. Gifford and Avery N. Goldstein

Chapter 6 Inventorship
Angela M. Davison

Chapter 7 Internet patent document searching and interactions

with an information specialist
Avery N. Goldstein

Chapter 8 Interactions with a patent agent or attorney

Tom Brody

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_prelims Final Proof page x 10.2.2005 9:04am

Part IV: Ancillary patent activities

Chapter 9 How to read a patent
Judith M. Riley

Chapter 10 Technology transfer: patent licensing and

related Strategies
Peter J. Newman

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 1 3.2.2005 2:27pm

Part I

Introduction

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 3 3.2.2005 2:27pm

chapter one

Anatomy of a patent
Roberta J. Morris
Patent Attorney

Contents
1.1 Introduction
1.1.1 What patents are, and are not
1.1.1.1 The right to exclude, not to do
1.1.1.2 Patents have nationality
1.1.1.3 Patents v. copyrights, patents v. trademarks
1.1.1.4 Patenting v. trade secrets
1.2 Parts of a patent, and how to read one
1.2.1 Specification, figures, and claims
1.2.2 Patent as instrument of legal rights v. patent as ‘‘prior art’’
1.2.2.1 ‘‘Read on’’
1.2.2.2 Claim charts
1.2.2.3 A useful table about specification and claims
1.3 The application for a patent: what kind of patent? what
kind of application?
1.3.1 Kinds of patents
1.3.2 Kinds of applications, and a non-application
1.3.2.1 Provisional
1.3.2.2 Regular application
1.3.2.3 Statutory invention registration
1.4 Requirements of a utility patent
1.4.1 The invention — especially as claimed
1.4.1.1 Utility
1.4.1.2 Novelty
1.4.1.3 Nonobviousness
1.4.2 The invention, especially what is in the specification
1.4.2.1 Written description
1.4.2.2 Enablement
1.4.2.3 Best mode

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4 Roberta J. Morris

1.5 Case studies

1.5.1 A sample patent: 6,055,695, Lint Roller Assembly
(Figure 1, pages 6 through 11)
1.5.2 Should I patent my invention or hold it as a trade secret?
Appendix

1.1 Introduction
What is a patent? In this chapter we will look at a real patent, and under-
stand the parts of the patent and why they are, and must be, there. We will
also learn a little about the legal effects of having a patent — what a patent
entitles its owners to do, and what it does not entitle them to do.

1.1.1 What patents are, and are not

Here is a practical definition of ‘‘patent’’:
A patent is a grant
from the government
to someone who demonstrates to the satisfaction of the
Patent Office that
something new and useful has been invented,
and, once issued, it permits the owner to exclude other people
from practicing the patented invention or putting it in the stream
of commerce.
There are a few key words in this sentence, and you probably have a feel for
what they mean but you may not be totally sure. Among the first that you
need to understand (and that patent lawyers might use in talking to new
clients, assuming that the phrase is transparent when it might not be) is
‘‘practicing the invention.’’
Hah! Fooled you! You thought I would focus first on ‘‘new’’ and ‘‘use-
ful.’’ Those words are very important, true, and they are the subject of this
and later chapters. They are also terms of art, which means that they have
special legal significance. Terms of art can mean what you think they mean,
but you should be careful when you use them so that you distinguish
between their colloquial meanings and their legal ones.
‘‘Practicing the invention’’ is a phrase you may hear your patent
lawyers say and, while they may not doubt that you understand it, you
may not feel so certain yourself. So let us start with ‘‘practicing.’’ I practice
an invention if I do it — if it is a process or method; or if I make it — if it
is a piece of equipment, chemical, drug, or bit of biological matter; and if
I do or make it the way the patent says to do or make it. This brings us to
another key concept: how does the rest of the world know what the patent
‘‘says’’?

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Chapter one: Anatomy of a patent 5

A patent (see the following pages for a sample) speaks in two ways,
it teaches and it claims. Sometimes what your patent ‘‘says’’ is what it
teaches, and sometimes it is what it claims. When patent lawyers speak of
someone practicing the patented invention, they mean that what the person
does is covered by one or more of the claims of the patent.
Figure 1 on pages 6 to 11 is a copy of U.S. Patent No. 6,055,695 entitled
‘‘Lint Roller Assembly’’ as issued by the United States Patent and Trade-
mark Office. Figure 1.1 is the cover page. The claims are at the end of the
patent (see Figure 1.3b, column 4, lines 4 to 50). The claims are numbered
and each must complete a single sentence that begins ‘‘What I (or we) claim
is. . . . ’’ We discuss claims more fully below.
The important thing to remember is that the word ‘‘claim’’ is a term of art
in patent law; it does not have its ordinary meaning. What you claim is not
what you argue, or what you contend, or what you assert you want in the
lawsuit (all of which are fine synonyms for ‘‘what you claim’’ in other areas of
the law, as well as everyday speech). What you claim in your patent is (or are)
specific sentences that use language to describe your invention, in three
dimensions, as it changes in time, as it is put together, as it does its work, etc.
We will discuss the claims in more detail later, but first let us go back to
the definition of a patent and examine some of the other words and phrases.

1. How do you put an invention into the stream of commerce? Under

the patent statute, you do that by selling it, or offering it for sale, or
importing it. Someone who does any of those things without au-
thorization from the patent owner may not himself be practicing the
invention, but the patent statute designates those things as infringe-
ment too.
2. How do you ‘‘demonstrate [anything] to the satisfaction of the
Patent Office?’’ You apply for a patent. This is different from
a copyright, but like a trademark (see Table 1.1 on page 14). I use
the phrase ‘‘Patent Office’’ but the full name is United States Patent
and Trademark Office; it is a part of the United States Department of
Commerce. You satisfy the Patent Office by complying with re-
quirements from three main sources:
a. statutes: enacted by Congress and signed into law by the
President;
b. regulations: promulgated by the Patent Office as a government
agency; and
c. internal guidelines of the Patent Office, such as the Manual of
Patent Examining Procedure, which do not have the force of law
(so a court can disregard them) but which the patent examiners
follow, so you need to be aware of them;
all as interpreted by the federal courts.

You can read these things for yourself on the Patent Office website, http://
www.uspto.gov/.

Copyright 2005 by Taylor & Francis Group, LLC

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6 Roberta J. Morris

Figure 1.1 United States Patent 6,055,695 ‘‘Lint Roller Assembly,’’ cover page.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 7 3.2.2005 2:27pm

Chapter one: Anatomy of a patent 7

Figure 1.2a United States Patent 6,055,995, Figure sheet 1 of 3.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 8 3.2.2005 2:27pm

8 Roberta J. Morris

Figure 1.2b United States Patent 6,055,995, Figure sheet 2 of 3.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 9 3.2.2005 2:27pm

Chapter one: Anatomy of a patent 9

Figure 1.2c United States Patent 6,055,995, Figure sheet 3 of 3.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 10 3.2.2005 2:27pm

10 Roberta J. Morris

Figure 1.3a United States Patent 6,055,995, text columns 1 and 2.

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c001 Final Proof page 11 3.2.2005 2:27pm

Chapter one: Anatomy of a patent 11

Figure 1.3b United States Patent 6,055,995, text columns 3 and 4.

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12 Roberta J. Morris

1.1.1.1 The right to exclude, not to do

A patent is a right to exclude, not a right to do. You may understand those
words, but invariably there will come a time when you do not believe them.
Alas, they are not debatable.
Here is an example. Imagine that I invent and patent the wheel.
You invent and patent the bicycle. Which of us can manufacture bicycles?
Answer: nobody. I cannot make bicycles, because your patent excludes
everyone from making bicycles unless you authorize them to do so. (Note:
The ordinary way to authorize is to license. See Chapter 10.) But what about
you? Unless you are happy to sell wheel-less frames, you cannot sell
bicycles either. I have the patent on the wheel, and I can exclude you from
making wheels. What happens?

1. I can sell you wheels that you incorporate in your bicycles. Now we
are both happy. (That is because if you buy something from the
patent owners, or someone they have licensed, you are automatic-
ally licensed to use it, unless by an explicit term in a contract they
have placed some restrictions on your activities are restricted.)
2. You can get a license from me to make your own wheels.
3. We can go to court, and either (a) a judge will decide who is right
(right about what? you ask. We will get to the basic issues of patent
law later) or (b) we will settle the lawsuit among ourselves.
Most patent litigation ends in settlement, so if anyone does go to
court, the case will probably be settled. The settlement may take the
form of me buying your company, or you buying mine, or maybe
a cross-licensing deal. Or perhaps one of us will sell or assign
our patent rights to the other in exchange for money, and go do
something else.

We will revisit the right to exclude but not to do again, when we talk about
patents as prior art (see Section 1.2.2). ‘‘Prior art’’ is another term of art in
patent law. The meaning may be exactly what you would guess, but it is
good to be wary about throwing around terms of art unless you are quite
confident you are using them correctly. The wrong term of art in the wrong
place could lead to confusion, or worse, liability. ‘‘Prior art’’ refers to
anything in your field of technology before your invention. When does
‘‘before’’ end? That is another complicated question, which is discussed in
later chapters.

1.1.1.2 Patents have nationality

Patents are grants from the sovereign (the government). This means that
they have nationality. My U.S. patent gives me rights in Michigan, but if
I cross the Ambassador Bridge over to Ontario, my patent is useless. If I want
the same kind of rights on the other side of the bridge, I must apply for
a patent in Canada. Anyone of any nationality may apply for a patent in

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Chapter one: Anatomy of a patent 13

any country, but each country can only issue a patent that confers rights in
that country. (Note: The European Union has considered having a pan-
European patent but in November 2002 rejected the idea yet again. By the
time you read this book, things may have changed. One place to look
for information is the website for the European Patent Office, http://www.
european-patent-office.org.)
Worldwide patent protection is costly, as you might imagine. The good
news is that you can start the process for multicountry patenting and then
have some time to decide whether your invention is really going to be
commercially successful, and where you are most likely to want to have a
patent. This is called ‘‘filing a PCT application’’ where PCT stands for Patent
Cooperation Treaty.

1.1.1.3 Patents v. copyrights, patents v. trademarks

If you are reading this book, chances are that you know the difference
between patents, copyrights, and trademarks. But just to review, some
comparisons are shown in Table 1.1.
Might a typical reader of this book want all three kinds of protection?
Sure. Say you invent a new device and you write a manual or instructions for
use and you make up a clever name and logo for the device or for the
company that will make or market it. You will want to consider patent
protection for the invention, copyright protection for the instructions (they
are not likely to be all that ‘‘creative,’’ and the copyright will be a ‘‘thin’’ one,
but at least you would have another arrow in your quiver if someone sells
knock-offs of your invention and simply photocopies your manual), and
trademark protection for your name and logo. (And you will probably
want to register a domain name for use on the Internet, which is separate
from obtaining trademark protection and is even more remote from the
subject of this book.)

1.1.1.4 Patenting v. trade secrets

1.1.1.4.1 Differences. Instead of going to the expense in time and
money of obtaining a patent for your invention, you might want to keep it
as a ‘‘trade secret.’’ Or you might want to patent the basic invention, but later,
as you develop a more cost-effective or less-polluting or faster process for
making it, you might want to keep those improvements to the commercial
process as trade secrets. What is the difference beween a patent and a trade
secret?
Length of time of protection. A trade secret is protectable forever —
as long as it is kept secret. If the secret is not discoverable by independent
investigation (i.e., some way other than stealing it from the secret-holder),
and is not disclosed by the holder, then it remains a protectable secret. Trade
secrets can be licensed to people who promise to keep the secret, and thieves
can be sued for misappropriation.

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14 Roberta J. Morris

Table 1.1 Comparison between Patent, Copyright, and Trademark Features

Questions Patent Copyright Trademark
What is protected? Inventions that Creative expression Symbols, words,
are new or phrases that
and usefula designate
the origin
(manufacturer,
producer) of
goods and
services
The words in the top 35 USC 101 17 USC 102 15 USC 1051
row are not quotations
from the statutes.
If I want to see the
statutes, where
do I start?b
What verb describes Apply Register Apply (then, if
what I do to get successful,
a [patent, copyright, register)
or trademark]?
To whom or with United States Library of United States
whom do I [that Patent and Congress, Patent and
verb]? Trademark Copyright Office Trademark
Office Office
Patents, copyrights, No No Yes
and trademarks
are creations of federal
(national) law.
Is there parallel or
similar protection
under state law?
a
These are ‘‘utility’’ patents. You can also patent a ‘‘design’’ and a ‘‘plant’’ (see Section 1.3.1) but when most
people think of patents, they are thinking of utility patents.
b
One place to see the text of statutes is www.findlaw.com/casecode/uscodes.

A patent, on the other hand, has a term set by statute. The patent is not
in force (you cannot sue anyone for infringement) until it is issued by the
Patent Office. It expires 20 years after the earliest filing date, which is
usually at least 2 years before it was issued. There are exceptions at each
end, but this statement is a good general rule to start with: a patent has a life
of about 17 or 18 years.
Costs. The costs associated with trade secret protection vary, depend-
ing on how you want to keep the secret, and how you make sure it stays
secret. You may hire counsel to draft nondisclosure agreements, you may

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Chapter one: Anatomy of a patent 15

hire security companies to provide human or electronic security or you

may just buy locks.
By contrast, obtaining a U.S. patent has somewhat predictable
costs. From application through issuance, a patent is likely to cost in the
neighborhood of $20,000 or more. There are fees to the Patent Office
for applying and for issuance (as well as for missing deadlines, for getting
expedited examination, for maintaining the patent in force every 4 years after
issuance until expiration, and so on). The Patent Office current fee schedule
can be found at http://www.uspto.gov/go/fees/fees.htm.
In addition to paying Patent Office fees, most inventors use the services
of a patent attorney or patent agent (someone licensed to practice before the
Patent Office). These fees vary depending on the complexity of the inven-
tion, the technology generally, the existence of other patents and applicants
and the degree of similarity with their inventions, the way things unfold at
the Patent Office (many aspects of which may not be controllable by the
applicants or their patent attorneys or agents), etc.
Damages (what a court can order an infringer to pay you). The patent
statute and the case law that has interpreted it are generous to patent owners.
Your ‘‘damages’’ (in legal parlance, the word ‘‘damages’’ refers to the money
you win), can be no less than ‘‘a reasonable royalty’’ — the royalty the
infringer should have paid you to begin with. In addition, you may receive
‘‘lost profits,’’ which could include amounts you would have made on the
patented item but for the infringement, as well as amounts from ‘‘convoyed
sales’’ — other aspects of your business that might have done better if
the infringer had not been in the market. If your case is deemed ‘‘excep-
tional,’’ you can also receive reimbursement of your attorney fees (which in
patent litigation can run into millions of dollars because the litigation can
take many years to resolve) and the damages can be multiplied up to three
times.
Trade secret damages are governed by state law. Most states have
enacted the Uniform Trade Secrets Act, and it provides for compensatory
damages, and damages for unjust enrichment, for the misappropriation. If
the misappropriator acted willfully and maliciously, then the damages can
be doubled. The Uniform Trade Secrets Act follows the usual rule that each
side pays its own attorney fees, but there are exceptions such as if the claim
of misappropriation by the trade secret owner was made in bad faith, or if
the misappropriation was willful and malicious.

1.1.1.4.2 Why choose to patent? Given the shorter term and the likely
higher costs, why would you ever choose to patent? The obvious reason is
that it is hard to keep a secret. Also, the upside potential from a lawsuit may
be worth something, not just in its own right, but also as leverage in
bargaining to license your invention. In addition, other people you deal
with or would like to deal with (investors, lenders, and even key employees)

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16 Roberta J. Morris

may also want you to have patents among your assets and may expect you
to be patent-savvy.

1.2 Parts of a patent, and how to read one

1.2.1 Specification, figures, and claims
A patent, such as the one shown in Figure 1 on pages 6 to 12, has a cover
sheet (Figure 1.1) and, after that, three major parts: the figures (Fig. 1.2a
through c), the specification (Figure 1.3a and 1.3b up to column 4, line 2),
and the claims (Figure 1.3b, column 4, line 3 to line 50).
The specification and the claims are written in words, and every patent
must have both. The figures are pictures that show how the invention is put
together and how it works. All patents except chemical composition patents
must have figures. Chemical composition patents generally have formulae.
Each figure must be numbered, and anything on a figure — whether it is a
whole area, a specific piece, a feature on a specific piece, or a hole or void —
must be individually numbered if it is discussed in the specification. For
example, in Figure 1.2a and Figure 1.2b, the recess designated with numeral
26 appears in the patent drawings and is discussed in column 3 at various
places, such as lines 3 to 8 (Figure 1.3b).
The specification is the place for all the ‘‘talk.’’ It must include an
explanation of the figures. It must give the educated reader sufficient
information to make and use the invention. This is called the enablement
requirement. The concept in patent law of the educated reader is known as
the person of ordinary skill in the art. The specification must also state the
inventor’s preferred way to make and use the claimed invention (but need
not state preferences as to things that are not claimed). This is the best mode
requirement. All the terms in boldface are discussed in greater detail else-
where in this book.
The claims are the words that define your invention legally. Patent
lawyers like to say they define the ‘‘metes and bounds’’ of the invention,
just as real estate on a deed is defined by its ‘‘metes and bounds.’’ Whenever
you consider a patent, whether to make sure it is valid or to see if someone
infringes it or should be offered a license, you must look to the claims.
‘‘Construing the claims’’ (deciding what the words means) is often difficult
mental work; drafting good claims can be even harder.

1.2.2 Patent as instrument of legal rights v. patent as ‘‘prior art’’

To understand the differences between a patent as a declaration of legal
rights, on the one hand, and a patent as ‘‘prior art,’’ on the other, you will
need to understand the phrase read on and be comfortable with the use of a
claim chart.

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Chapter one: Anatomy of a patent 17

If we are interested in whether or not your claims are valid, we must

compare them to the prior art. But the prior art undoubtedly includes other
people’s patents. What part of those patents is most important if you want to
know if your patent is valid? What part of those patents is most important if
you want to know if you can practice your invention without infringing those
patents? The answers to those questions are different. Your patent is valid if
your claims do not read on the prior art. You will not infringe those other
patents if their claims do not read on the object you make, use, sell, offer for
sale, or import, or, if the patent is on a process or method, the processes or
methods you use.

1.2.2.1 ‘‘Read on’’

The grammatical subject of ‘‘read on’’ is always a claim. The grammatical
object of ‘‘read on’’ is either

. an accused device, if the question is whether or not the claim is

infringed, or
. the prior art, if the question is whether or not the claim is invalid.

Thus we may say that claim 5 of the patent reads on the competitor’s model
23-BQ (so model 23-BQ infringes that claim). Or claim 5 may read on the
competitor’s old model 15-LJ, which was sold 50 years ago throughout
the U.S., in which case claim 5 is invalid.
In order for a patent owner to prevail against an accused infringer, the
claim in question must be both valid and infringed. (In addition, the patent
as a whole must be free of inequitable conduct, discussed in Chapter). Thus
the infringement inquiry focuses on the claim of the patent in question.
But when a patent is relevant not for the owner’s rights but as prior art
to someone else’s patent or patent application, then we care about what it
teaches. We care much less about what it claims. (Generally the claims do
not teach anything that is not taught elsewhere in the patent; if they do, then
they may be invalid.) The primary reason you look at the claims of a prior
art patent is to make sure you will not be infringing it, or to see a way to
design around it. But infringement of a prior art patent by practicing your
patent is a different inquiry from invalidation of your patent by that prior
art patent.

1.2.2.2 Claim charts

A claim chart is a two-column table in which you compare the language
of a patent claim to whatever it is you care about — a possibly infringing
device or process, or the prior art. In the left hand column you put the claim,
broken down into its conceptual pieces* to suit the inquiry of the claim chart
maker:

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18 Roberta J. Morris

* Patent lawyers may speak of the ‘‘elements’’ of the claim. That

can be confusing. Sometimes ‘‘element’’ may refer to a labeled
clause, when the claim is written in outline form (1 – A – (i), etc.).
Such a claim might have elements 1 through 5, and element 4 might
have sub-elements A and B, etc. But it may be that for the purposes
of a claim chart, elements 1 through 3 can be lumped together
because everyone would agree that they are found in whatever the
claim is being compared to. Element 5, however, may need to be
broken down into its individual words. I use the colloquial
‘‘pieces’’ to emphasize that the division of the claim is ad hoc.
For example, in the printed patent some parts of the claim may be indented
and/or labeled with letters and numbers. (In Figure 1.3b, claim 1 is format-
ted with indentation, at column 4, lines 4 to 17.) If some items are not
controversial, the claim chart maker may put them together into a single
row of the chart. Alternatively, a three-word phrase in the claim may be the
essence of the conflict, and each word’s scope is contested. In that case, each
of the three words might occupy its own row. There are no rules; logic and
intelligence dictate how you make the chart.
Whether you are considering infringement or validity, look for a 1:1
correspondence between the parts of the claim and whatever it is being
compared to. If there is a 1:1 correspondence between the claim and the
accused device, the claim is infringed. If there is a 1:1 correspondence
between the claim and the prior art, the claim is invalid.
Consider the Lint Roller Assembly Patent’s claim 1 (Figure 1.3b, column
4, lines 4 to 17). Compare it to lint roller assemblies you may have used long
before the patent was applied for. The application date is listed on Figure
1.1, on the right side of the patent cover sheet. This patent application was
first filed on June 24, 1998. You would probably guess that every lint roller
since lint rollers were first made would have ‘‘a tubular and cylindrical lint
roller’’ (the first indented phrase) and a roller support that has a smaller
diameter than the roller itself (the third indented phrase). But the second
indented phrase, which specifies that the housing is made from two ‘‘sub-
stantially identical parts,’’ is different. The words in that part of the claim
would have to be considered very carefully, whether the question was
infringement or invalidity.

1.2.2.3 A useful table about specification and claims

Table 1.2 reinforces what you should know already. Let us say you have
just obtained a patent. Let us call it the New patent. Your competitor
has a patent that is older than yours, the Old patent. You may be concerned
about whether your New patent is valid over the Old patent, and
you may be concerned about whether, in practicing your own invention
(now covered by the New patent), you need a license under the Old
patent.

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Chapter one: Anatomy of a patent 19

Wait, you may say: if the Patent Examiner granted me the New patent
when she knew all about the Old patent and maybe even initially rejected
my claims in light of it, doesn’t that mean I could not possibly infringe the
Old? The answer is a resounding no. If you find this puzzling, you are in
excellent company with some of my best law students, chief executive
officers (CEOs), federal judges, etc. But I hope that you will not be puzzled
after you have had a chance to study Table 1.2, and to think about patents,
their specifications — where they teach — and their claims — where they
wall off the owner’s area of exclusivity.
The reason that the answer is no is that validity is a different inquiry from
infringement. Validity of the New patent depends on the New patent’s
claims. Infringement of the Old patent depends on the Old patent’s claims.

1.3 The application for a patent: what kind of patent?

what kind of application?
1.3.1 Kinds of patents
The Patent Office issues three kinds of patents: utility patents, design
patents, and plant patents. If you are reading this book, chances are you
want a utility patent, a patent on an invention. The claims in a utility patent
address how a device or process is made or works. They may even address
how the object is ‘‘designed’’ in the usual sense of the word ‘‘designed’’ (on
a drafting board, with rulers and templates, or on a computer using a CAD
program) so that the claimed invention functions in the way the inventor
had in mind. But the word design in the phrase ‘‘design patent’’ is another
term of art.

Table 1.2 Infringement and Validity Assessment between Old Patent and
New Patent

Roles of New ‘‘New’’ is the patent of interest. ‘‘Old’’ is the patent of interest.
and Old ‘‘Old’’ is the Prior Art. ‘‘New’’ describes the accused
device, because it is made according
to the New patent.
Is the New patent valid Is the Old patent infringed by
over the Old patent? someone practicing the New patent?
--------------------------------------------------------
New patent Look at New patent’s Look at New patent’s
CLAIMS SPECIFICATION to understand
what someone practicing
the New patent would do.
Old patent Look at Old patent’s Look at Old patent’s CLAIMS.
SPECIFICATION
to see what it ‘‘teaches.’’

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20 Roberta J. Morris

A design patent is available only to protect the way your device looks,
and then only to the extent that how it looks is purely ornamental and not at
all functional. Thus the design of indentations on the bottom of a running
shoe could be protectable by a design patent, but if the shoe advertised that
its soles were unusually good at gripping wet surfaces, the design patent
could be invalid.
To put it another way: just because you have ‘‘designed’’ something does
not mean you want a design patent. In fact, usually you do not. A ‘‘design’’
patent protects only the appearance of the object, and the elements of that
appearance that are dictated purely by esthetic considerations. If the appear-
ance of an item has a functional purpose, then it is not patentable as a design.
The item may, however, be entitled to a utility patent.
A plant patent is for a new variety of plant that is reproduced asexually.
Plants that reproduce by seeds are not patentable, but they may be entitled
to certificates from the Department of Agriculture under the Plant Variety
Protection Act.

1.3.2 Kinds of applications, and a non-application

Until the mid-1990s, if you wanted to apply for a patent, you had to have a
complete draft to submit to the Patent Office, including claims. Then U.S.
law changed, to make it more in harmony with the laws of other countries.
As part of those changes, the ‘‘provisional’’ application came into existence.
A provisional application does not need claims, and has the advantage of
giving the applicant a filing date for whatever disclosure is made in the
provisional. Thus researchers who want to give a talk at a conference about
their work, or want to submit an article for publication in a prestigious
journal, may file their talk or manuscript as their provisional application
and safeguard themselves against having created invalidating prior art. (For
a discussion of why the talk or manuscript might be invalidating prior art,
see Chapter 3.) Similarly, companies wanting to show a device — or even a
prototype or a subassembly — at a trade show can file their literature and
diagrams as the provisional. This will give them an advantage, especially if
they want to file in countries (such as Europe and Japan) where there is no
grace period for an inventor to publish, sell, or offer to sell an invention
before filing the patent application.

1.3.2.1 Provisional
The provisional application need not have claims or an inventor oath, and
is much cheaper to file than a regular application. An independent inventor
or anyone entitled to reduced rates (university researchers, small businesses)
is currently charged a fee of $80. The cost of a regular application, assuming
it does not have more than the basic numbers of independent and total

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Chapter one: Anatomy of a patent 21

claims, is $395. (The fees are double if the inventors have assigned their
rights to larger companies.) Filing a provisional gets the filer a date, but does
not obligate the Patent Office to do anything with the application. The Patent
Office’s work begins only when the regular application is filed and the
regular fee paid.

1.3.2.2 Regular application

A regular application, as indicated above, costs more, must include at least
one claim, and triggers the process of examination by the Patent Office.

1.3.2.3 Statutory invention registration

Occasionally inventors may want their invention to be part of the patent
literature, so that their disclosure is searchable and findable at the
Patent Office. They do not, however, want to obtain a patent. In that case
they may file a Statutory Invention Registration. This makes their invention
part of the ‘‘prior art’’ as of its filing date. It therefore has defensive value,
but no offensive value (in the monetary and litigation sense).

1.4 Requirements of a utility patent

In addition to a utility patent having the parts specified by the statute —
specification, figures, and claims — it must have certain content. The statute
(35 USC section 101) says that ‘‘whoever invents [something] new and
useful . . . may obtain a patent. . . . ’’
What is it that must be new and useful? Answer: the invention de-
scribed in each claim, and each claim is evaluated separately. So when I
refer to the ‘‘claimed inventions’’ with an ‘‘s’’ at the end, I am emphasizing
that the invention in claim 1 can be different from the invention in claim 12
(in ways that are crucial to the proof that the claim is valid or that it is
infringed). I do not mean to say that you have more than one patent, but
only that your one patent has claims of various scope.
How do you tell the public that your claimed inventions are useful?
Answer: you can explain the utility in the specification if it is not instantly
clear, and you draft the claims to make sure that the usefulness will be
garnered from anyone practicing the invention. How do you tell the public
that your invention is new? Answer: you can hype, tout, and otherwise
praise your invention in the specification, and describe how it overcomes
problems of the prior art, but the true test will be whether your claims have
been drafted so that they do not read on the prior art.
This is just another reminder that the specification and claims are
different animals, that their roles are different, and that you have to pay
attention to both, whether you are applying for a patent or scrutinizing
someone else’s.

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22 Roberta J. Morris

1.4.1 The invention — especially as claimed

1.4.1.1 Utility
Most inventions have obvious utility, and the utility requirement is not a
source of controversy. There are a few exceptions, however. One is for
unbelievable inventions. The classic example is a perpetual motion machine.
People used to say that cures for the common cold were also inherently
suspect, but with the biotech revolution maybe that is no longer true. Claims
to perpetual motion machines may be challenged on the grounds of utility,
but they also may be challenged on enablement grounds (see Section
1.4.2.2). The other class of inventions that have recently been subject to
utility challenges are in the biotechnology area. They may be intermediate
biological materials whose use is unknown, or whose only use is as a
possible means to something else, as yet unknown or undoable. If your
invention is in the biotech area, you will need to investigate the current
requirements for utility. The best place to start will probably be at the Patent
Office website, http://www.uspto.gov/web/offices/pac/dapp/utility.htm, where
there is a document concerning the utility requirements.

1.4.1.2 Novelty
‘‘Novelty’’ in patent law means that the claim does not read on the prior art.
Whether a claim is in an application and a Patent Examiner has to decide if it
is ‘‘new,’’ or the claim is in an issued patent and a potential licensee, or
litigant, wants to decide if it is valid with regard to the novelty requirement,
the person evaluating the claim should at least mentally, if not with pencil
and paper (or computer), make a claim chart. Every element, or better, piece
(see Section 1.2.2.2) of the claimed invention must be found in the prior art
in order for the claim to be invalidated as not new. But there are two ways to
show lack of novelty, and they have several different aspects. One way is to
find a single piece of prior art — a device that has already been made or
sold, a patent that teaches about every aspect of the claimed invention, or a
journal article, advertisement, or manual that completely describes every
feature that is mentioned in the claim. If a single piece of prior art invali-
dates the claim, the claim is said to be anticipated.
The other way to show lack of novelty is to use more than one piece of
prior art, or one piece of prior art that almost, but not quite, teaches every
aspect of the claimed invention, but which, when coupled with the know-
ledge of ‘‘the person of ordinary skill in the art,’’ has it all. Then the claim is
said to be obvious in light of the prior art.
Anticipation has the advantage of simplicity (only one piece of prior art
need be considered) for both the patent owner and the patent challenger.
But an attack based on obviousness is harder for the challenger for other
reasons besides complexity. We address that in the next section.

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Chapter one: Anatomy of a patent 23

1.4.1.3 Nonobviousness
If there is no single piece of prior art that anticipates a claim, the claim
may nonetheless not be new. It may be ‘‘obvious to a person of ordinary skill
in the art.’’ This means that more than one piece of prior art, or one or more
pieces plus the knowledge of that person (sometimes called ‘‘the ordinary
artisan,’’ and sometimes called by the acronym ‘‘POSITA’’) invalidates it.
As soon as the attack goes from anticipation to obviousness, the attacker
has some other problems: first, the attacker must show that there is a
‘‘motivation or suggestion to combine’’ the pieces of prior art in the prior
art itself; and second, the patent defender can invoke ‘‘secondary consider-
ations’’ to demonstrate that what may look like obviousness really is not.
Secondary considerations are practical events which provide circumstantial
evidence that the invention is new relative to the prior art. Some are post-
invention events that suggest that the world thinks well of the invention.
They include commercial success of the inventor (or even of copiers) and
recognition by others (such as being named inventor of the year, or having
journals and text books salute the invention). Others are events that predate
the invention, such as the failure of others to reach a solution that the
inventor has achieved, and the long-felt need for the invention.

1.4.2 The invention, especially what is in the specification

The Patent Office has information on the requirements for the specification
at http://www.uspto.gov/web/offices/pac/dapp/35usc112.htm. This web page is
entitled ‘‘35 U.S.C. 112 Rejections Not Based On Prior Art.’’ There are
three requirements for the specification in the statute, specifically in Section
112, paragraph 1. They are called the written description requirement,
enablement, and best mode. The statute, formatted to show the three
requirements (and to show why until recently they were thought of by
many people as being only two — enablement and best mode) says:
[}1] The specification
shall contain a written description
of the invention, and
of the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and
use the same,
and shall set forth the best mode contemplated by the inventor
of carrying out his invention.

Although the requirements of Section 112, paragraph 1 are phrased in terms

of what the specification says, remember that validity always centers on a
particular claim: it is the claimed invention that must be adequately de-
scribed in the specification, that the specification must enable the POSITA to

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24 Roberta J. Morris

make and use, and for which the inventors must describe their best mode of
making and using as of the date of their application. Often the claimed
invention and the general idea described in the specification are the same,
and the specific words of the claim can be safely ignored. Sometimes,
however, the claimed invention is more specific, and has a detail that is
not central to the general idea of the invention. In that situation, attackers of
the patent on the grounds of Section 112 must once again think in terms of a
claim chart so that they can show how the specification fails to support the
claimed invention.
Generally, attacks under the best mode and enablement provisions of
Section 112 are made in the courts, against issued patents, rather than in the
Patent Office, against applications for patent. Among other reasons, this is
because the patent examiners may not have the practical knowledge to
understand whether the POSITA is enabled to make and use the invention,
nor the inside knowledge to know whether the inventors have disclosed
their best mode.

1.4.2.1 Written description

The written description requirement means that the claim(s) must bear out
what the specification indicates is a central or essential feature of the inven-
tion. Thus if a specification says that the whole point of the invention is
to use fried eggs, but the claims just say eggs, then the written description
and the claims do not agree. For almost all patents, a ‘‘written description’’
problem emerges, if ever, in litigation. If patent examiners think that the
claims and the specification differ, they are more likely to use a different
statutory provision, Section 112, paragraph 2, which requires that ‘‘The
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant
regards as his invention.’’ Rejections of applications claims on the grounds
of Section 112, paragraph 2 are fairly common. The examiner will say
that there is no ‘‘antecedent basis’’ for a term used in the claim. That is, the
term appears for the first time in the claim and was not previously used in
the specification. Such rejections can generally be overcome easily, as long as
the term was in the claims as originally filed.

1.4.2.2 Enablement
As mentioned above, the enablement requirement means that the
inventor must enable POSITAs to make and use the invention. Sometimes
an enablement attack might turn on the level of education and experience
someone must have in order to qualify as a ‘‘person of ordinary skill in
the art,’’ but more often the attack turns on whether or not that POSITA
could make or use the invention ‘‘without undue experimentation.’’ If there
are only hints in the specification, and the POSITA would then have to work
out problems in the lab over several person-months or even person-years,
the patent claims may be vulnerable as not ‘‘enabled.’’

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Chapter one: Anatomy of a patent 25

1.4.2.3 Best mode

There are two things to remember about the best mode requirement: first, it
is the best mode in the minds of the inventors, not their assistants or bosses
or people in the next lab; and, second, it is the best mode at the time the
application is filed. Thus if research is kept separate from development,
the ideas of the development people do not need to be in the specification
(unless they are co-inventors — see Chapter 6).
Timing remains key of course. If inventors disclose their idea to their
management, and management hires a patent lawyer, and the patent lawyer
works on the application for a few months, then by the date the application
is filed the inventors may have a different ‘‘best mode’’ than they had when
they started. This means that everyone should have the best mode require-
ment in mind throughout the application process.

1.5 Case studies

1.5.1 A sample patent: 6,055,695, Lint Roller Assembly (Figure 1,
pages 6 through 11)
Look over the specification, including the figures, and the claims of U.S.
Patent No. 6,055,695, Lint Roller Assembly. Find the antecedent basis for the
word ‘‘housing.’’ Where is it discussed? What language in the claims is
related to the improvement over the prior art concerning the fact that
prior art assemblies needed ‘‘two different molding cavities’’ (Figure 1.3a,
column 1, lines 28 to 31)? Ask yourself if you could achieve the same
economy and simplicity of manufacture as the inventor did, without infrin-
ging one or more of these claims? Well-drafted claims will make it hard to
design around the patent without sacrificing the inventive advantages for
which patent protection was sought.

1.5.2 Should I patent my invention or hold it as a trade secret?

The answer to the question ‘‘Should I patent my invention or hold it as a
trade secret?’’ may be ‘‘Both.’’ There are some aspects of an invention that
may be better kept as trade secrets, and others that should be patented.
Quite often, people choose to patent the basic idea (of course, enabling
POSITAs to make and use it, at least in the laboratory or on a by-hand
basis). Later, when they perfect the ‘‘black arts’’ required to scale it up to
commercial manufacture, those techniques are kept as trade secrets.
The enablement and best mode requirements can present problems
related to the interplay of patents and trade secrets. Sometimes the patent
specification will explain that something must be done with software. If the
patent owner has written that code, but is holding it as a trade secret, that
could create enablement problems down the road. The question will be how
hard it would be for POSITAs to write their own code.

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26 Roberta J. Morris

At other times the patent owner will apply for the patent before deter-
mining how to scale the invention up to commercial manufacture. After the
patent application is filed, the development work will begin. That might
create both enablement and best mode problems, but if the claimed inven-
tion covers the device itself, and nothing in the claim addresses large-scale
production, then the inventors probably do not have to worry about failing
to enable anyone to make the invention commercially. As always, the focus
must be on what is claimed, not on the general idea discussed in the
specification.

Appendix
From http://www.uspto.gov/web/offices/pac/doc/general/index.html#patent (last
modified 5/1/03):
Utility patents may be granted to anyone who invents or dis-
covers any new and useful process, machine, article of manufac-
ture, or compositions of matters, or any new useful improvement
thereof;
Design patents may be granted to anyone who invents a new,
original, and ornamental design for an article of manufacture;
and
Plant patents may be granted to anyone who invents or discovers
and asexually reproduces any distinct and new variety of plants.
From http://www.uspto.gov/web/offices/pac/doc/general/index.html#prov:
Provisional Application for a Patent
Since June 8, 1995, the USPTO has offered inventors the option of
filing a provisional application for patent which was designed to
provide a lower cost first patent filing in the United States and
to give U.S. applicants parity with foreign applicants. Claims and
oath or declaration are NOT required for a provisional applica-
tion. Provisional application provides the means to establish an
early effective filing date in a patent application and permits the
term ‘‘Patent Pending’’ to be applied in connection with the
invention. Provisional applications may not be filed for design
inventions.
The filing date of a provisional application is the date on
which a written description of the invention, drawings if neces-
sary, and the name of the inventor(s) are received in the USPTO.
To be complete, a provisional application must also include the
filing fee, and a cover sheet specifying that the application is a
provisional application for patent. The applicant would then have
up to 12 months to file a non-provisional application for patent as

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Chapter one: Anatomy of a patent 27

described above. The claimed subject matter in the later filed

non-provisional application is entitled to the benefit of the filing
date of the provisional application if it has support in the provi-
sional application. If a provisional application is not filed in
English, then any non-provisional application claiming priority
to the provisional application must have a translation of the
provisional application filed therein. See title 37, Code of Federal
Regulations, Section 1.78(a)(5).
Provisional applications are NOT examined on their merits.
A provisional application will become abandoned by the oper-
ation of law 12 months from its filing date. The 12-month
pendency for a provisional application is not counted toward
the 20-year term of a patent granted on a subsequently filed
non-provisional application which relies on the filing date of
the provisional application.
A surcharge is required for filing the basic filing fee or the
cover sheet on a date later than the filing of the provisional
application.
A brochure on Provisional Application for Patent is available
by calling the USPTO General Information Services at 1-800-786-
9199 or 703-308-4357 or by accessing USPTO’s website at http://
www.uspto.gov/.

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Part II

Inventive activities

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chapter two

Research records in the

patent process
Avery N. Goldstein
Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski, P.C.

Contents
2.1 Introduction
2.2 Legal situations where laboratory records are reviewed
2.2.1 Predating prior art
2.2.2 Interference
2.2.3 Defense to a charge of patent infringement
2.2.4 Determination of inventorship
2.2.5 Nondisclosure agreement prior knowledge
2.2.6 Trade secret issues
2.3 Types of research records and their usage
2.3.1 Primary notebook usage
2.3.1.1 Notebook assignment
2.3.1.2 Entry mechanics
2.3.1.3 Alterations
2.3.1.4 Chronology
2.3.1.5 Page completion
2.3.1.6 Attestation
2.3.1.7 Guest entries
2.3.2 Supplemental records
2.3.3 Alternate media references
2.3.4 Electronic record-keeping variations
2.4 Record archiving
2.4.1 Technologist–custodian interface
2.4.2 Audit committee
2.4.3 Storage and security

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32 Avery N. Goldstein

2.4.4
Accessing stored information
2.4.4.1 Evidentiary inquiry
2.4.4.2 Technical inquiry
2.5 Trade secret maintenance
2.5.1 Compartmentalized information
2.5.2 Daily handling
2.6 Concluding remarks
Additional Reading

2.1 Introduction
The notebook is a ubiquitous feature in the laboratory setting. While no one
can dispute the necessity of documenting experimental work, the effort
required to prepare, evidence, and store laboratory data is a frequent lament
of the overtaxed researcher and a considerable expense to the organization
as a whole. This chapter seeks to highlight the requirements of effective
experimental documentation as it relates to the patent process and to pro-
vide a logical rationale for documentation procedures.
The legal purpose for documenting experimental work is to provide a
trier of fact with a convincing evidentiary paper trial to support the factual
assertions of the researcher regarding the date and substance of the inven-
tion. A laboratory notebook and a system of documentation add credibility
beyond oral evidence and erratic written notes. The goal of documentation
is to survive challenges under the rules of evidence and provide a convin-
cing piece of evidence in support of the researcher’s legal position. In the
U.S., the Federal Rules of Evidence most often need to be satisfied since
patent law is a matter under federal, as opposed to state, jurisdiction. All
aspects of record-keeping put in place should serve to counter an allegation
of forged or falsified laboratory documents. Before elaborating on specific
procedures it is worthwhile describing some general principles of good
laboratory documentation.
A laboratory documentation system that leaves control over records in
the hands of the researcher is vulnerable to challenges of misconduct. To
place this statement in context, when laboratory notebooks are used in a
legal proceeding to secure or defend patent rights, there is invariably an
opposing party with an interest in discrediting the evidence found in the
laboratory notebooks. It is not an overstatement that the survival of a
corporation as a viable entity may be at stake when decisions about who
is the rightful inventor or a patent infringer are involved. An opposing party
with so much at stake can be expected to raise every viable challenge to
discount the weight a trier of fact will give to various pieces of supporting
evidence. This legal strategy can be successful even if the dispute is never
brought in front of a trier of fact since it weighs towards a settlement more
favorable to the opposing party.

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Chapter two: Research records in the patent process 33

2.2 Legal situations where laboratory records are reviewed

There is a variety of circumstances where laboratory records are considered.
The weight given to laboratory documentary evidence should not be under-
estimated since it is collected at a time before dispute or contest and, as
such, is considered less likely to be colored by personal or financial interests
that later develop. In some proceedings before the United States Patent
Office, where there is no provision for hearing or evaluating anything
other than written evidence, laboratory documentation is often the pivotal
evidence. In detailing the varied situations where laboratory records are
important pieces of evidence, it is hoped that the reader gains an added
appreciation as to the value of implementing a credible record-keeping
system.

2.2.1 Predating prior art

In some patent jurisdictions, most notably the U.S., there is a mechanism to
‘‘swear behind’’ a reference that is cited as prior art to reject pending patent
claims. When the reference is published up to one year before the filing date
of patent application and after the patent applicant’s actual date of ‘‘redu-
cing the invention to practice,’’ one is allowed to provide evidence as to the
timing of invention relative to the reference publication date. In this context,
reduction to practice means more than having the conception of the inven-
tion and includes getting the invention to work in some form. The details of
this procedure are found in 37 CFR §1.131. This procedure usually involves
a declaration prepared by a patent professional to incorporate the state-
ments of the inventor or other knowledgeable individual regarding the
timeline of the invention. Documentary evidence is appended to the declar-
ation in support of the statements made by the declarant.

2.2.2 Interference
Laboratory research documents are also needed to establish inventorship in
those jurisdictions that reward the first to invent. The U.S. is most notable
among the ‘‘first to invent’’ jurisdictions. The majority of patent jurisdictions
reward the first to file a patent application and therefore are not concerned
about invention date. An interference involves a dispute of inventorship
between a patent applicant and another pending application or an issued
patent. An interference proceeding is conducted within the Patent Office
and relies heavily on laboratory records in establishing the successful claim
of inventorship. When the Patent Office issues patents claiming the same
subject matter, it is left to the court system to determine which patent is
valid.

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34 Avery N. Goldstein

Evidence provided by someone making a claim of inventorship is

considered to be self-serving and therefore looked upon with skepticism.
This evidence needs to be corroborated by a noninventor, who has far less
stake in the proceedings and therefore is considered to be a more credible
source. A well-crafted documentation system is designed to address this
need for corroboration.

2.2.3 Defense to a charge of patent infringement

When charged with patent infringement, an effective defense is that the one
previously invented had maintained efforts toward public use, publication,
or patenting. Laboratory records are useful in establishing invention prior to
the patented invention, which is the subject of the infringement charge.
Continued research in the technology area of the patented subject matter
evidence that the invention was not abandoned, suppressed, or concealed.
Evidence of continued research is important since the defense is degraded
by abandonment, suppression, or concealment of the invention.

2.2.4 Determination of inventorship

The validity of a patent is jeopardized by improper inventorship. An organ-
ization may have an internal dispute regarding inventorship and a patent
professional may have to assess whether the contributions of an individual
rise to the level of inventorship. A defendant charged with patent infringe-
ment may assert a defense that the patent in question is invalid for improper
inventorship either through mistake or fraud. Laboratory records in such
instances are invaluable in determining the role various individuals played
in the inventive process.

2.2.5 Nondisclosure agreement prior knowledge

An organization often agrees to hold the confidential information of others
in confidence in order to have an opportunity to evaluate the information in
the context of evaluating a future relationship or providing services to the
discloser. Confidential disclosures are usually defined by both parties sign-
ing a nondisclosure agreement. Confidentiality agreements are synonym-
ously known as nondisclosure agreements and represent a legal contract of
rights and obligations for each of the parties. This topic is discussed in
greater detail in Chapter 3. If the organization had independently devel-
oped the same information that it receives under a nondisclosure agreement
and wants to use that information outside the context of the agreement, then
the organization must show that it had knowledge of the information prior
to receipt under the agreement. The need for such a showing of
prior knowledge and/or development typically occurs just after receipt

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Chapter two: Research records in the patent process 35

of the information from the disclosing party or after litigation has com-
menced with respect to violation of the agreement.

2.2.6 Trade secret issues

There are often tricks of the trade that may be essential to getting a process
to work properly or a product to have certain properties that confer a
competitive advantage. These tricks are usually difficult to discover but
trivial to perform once found. An organization usually decides that the
obligations of disclosure and the limited term monopoly associated with
patents make the best form of protection for these tricks to be retained as
trade secrets. Examples of trade secrets include the formula for Coca-Cola1,
or starting an enzymatic reaction with a touch from a mustache whisker.
Maintenance of a trade secret means that access to the details are on a need-
to-know basis, storage is in a protected environment, and there are proced-
ures in place for identifying who gains access to the secret. A competitive
organization that hires a competitor employee who has had access to a trade
secret may have to show independent development of the secret in the face
of a charge of trade secret misappropriation.
A variation on this situation is a former employee who has a noncom-
petition clause as part of their termination of employment. The date
of subsequent work in the noncompetition area may also have to be proven
after the fact. Since employment and trade secrets are the subject of
state law, the requirements of such a showing vary between the jurisdic-
tions.
A developing area of trade secret disputes is industrial espionage. Both
an alleged victim and defendant to such a charge will require laboratory
records to support their respective positions. It has become common that a
developer of a technology will publish their results or insert into their
product a marker that if found in a competitor’s offering, is indicative of
misappropriation. A nontechnical example is a telephone book having
fictitious entries that serve as identifying markers. Conversely, a charge is
countered by evidence showing reverse engineering, independent develop-
ment, or other bases for technical knowledge.

2.3 Types of research records and their usage

The forms available for keeping research records are constantly increasing
as computers and personal digital assistants (PDAs) become more popular.
Even with computerization of the laboratory, the bound and numbered
notebook remains the dominant laboratory record-keeping form. A note-
book ledger is the primary source of recordation, with supplemental graphs,
images, etc. that are the product of instrumentation being secured thereto.
Additionally there are alternate media records that can only be referenced in

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36 Avery N. Goldstein

the principal notebook. These alternate media records include videotapes,

audio recordings, film negatives, computer discs, CDs, and DVDs.
Regardless of the form of the primary recordation notebook, there must
be a mechanism to insert supplemental data records and reference alternate
media records. An exemplary set of procedures is provided for a technolo-
gist to record experimental data and a manager to assure that an archival
system is in place for proper notebook handling once a book or project is
completed. It should be emphasized that alternate procedures should be
adopted to fit the situational needs of the individual cases with the under-
standing that the resulting documents and their handling must be able to
convince a trier of fact that for the documents to be falsified would require a
conspiracy of unbelievable proportions.

2.3.1 Primary notebook usage

The paper notebook is the place where observations and procedures are
recorded in real time. The notebook should also include:

. equipment used, illustrations of the set-ups, delays in setting up or

receiving equipment;
. theories for proposed experiments;
. ideas resulting from brainstorming sessions;
. ideas for additional experiments; and
. potential new product uses derived from initial work.

These additions are important since they evidence the date of conception
of any invention that result from these prospective remarks. The notebook
should represent a single source where all ideas and work relating to
a project are found or referenced in the case of alternate format media.
Effort should be made to provide objective observations and terms
without editorial comment as ‘‘good,’’ ‘‘bad,’’ ‘‘failure,’’ or the like. Features
of a notebook that will be given credible weight as legal evidence are
provided.

2.3.1.1 Notebook assignment

The management of notebooks is the responsibility of both the technologist
and the technical manager. Each person working on a technical project
should be assigned his or her own individual notebook. Upon assignment,
the notebook is the responsibility of the user until completed and checked in
with a record custodian. The notebook is the property of the organization
and should be regarded as the most valuable asset with which the techno-
logist is entrusted. Considering the costs of salary, equipment, and con-
sumables used to generate the notebook, the high value attributed to the
notebook is justified. Considering the value of the notebook, safeguards for

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Chapter two: Research records in the patent process 37

protecting it include at a minimum, securing it when not in use and only

taking the notebook off premises under extraordinary circumstances, and
even then only after assuring a secure copy exists.
In general, a technologist should have a notebook for each individual
project so as to keep different conceptual projects separately. As detailed
below, this will facilitate information retrieval at a later date. However, the
practicality of handling multiple notebooks suggests that each technologist
should be issued no more than two notebooks unless there is a compelling
justification.
The transition between a completed notebook and a new notebook
relating to the same project should require the surrendering of the old
notebook before a new notebook is issued. This procedure precludes a
challenge of manipulating the data between old and new notebooks. If
a technologist has need for reference to an old notebook, a procedure for
doing so is detailed in Section 4.4.2.

2.3.1.2 Entry mechanics

The notebook should have preprinted, numbered pages and be bound.
Entries in a notebook should be in nonerasable ink to avoid a challenge or
subsequent erasure. For this reason, no pencil notations should be made.
While once black ink was considered preferable owing to the inability of
xeroxography to make adequate duplicates, this is no longer the case.
Information must be legible and wherever possible avoid jargon or abbre-
viations that can be ambiguous. For the sake of efficiency, a term can be
explicitly defined once and an abbreviation assigned that can be used
consistently thereafter. The use of loose pages to record data that are then
transferred to the notebook is strongly disfavored.

2.3.1.3 Alterations
Notebook deletions should involve a legible strikethrough and should
not involve the use of correction fluid or erasures. A page should never
be removed from a notebook for the obvious challenge that removal creates
not only to the creditability of the notebook itself, but the entire record-
handling system. Additions should be dated in another colored ink and/
or with a notation indicating that the comments are additive. However,
additions should not disrupt the chronology of the notebook. Additions
should reference the page and the number of the experiment being
modified.

2.3.1.4 Chronology
The notebook must reflect the timeline of experimental work. The entry is
started on a notebook page and the date of entry should be inserted on the
top of that page. All entries on a notebook page should be separately dated
if entered on days later than that shown at the top of the page.

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38 Avery N. Goldstein

2.3.1.5 Page completion

Every page of the notebook should be filled. Unused portions of the margins
and the bottom portion of the page should include a large ‘‘X’’ or hatch
marks. Those portions marked as unused, should not be used subsequently.
Each experiment should include a code number to aid another researcher
review the notebook without the benefit of the author being present. The
coding system should be explained as a preliminary matter at the beginning
of the notebook. A coding system may include the notebook number, page
number, date coding, or combinations thereof. The technologist should
complete the page with a date and signature.

2.3.1.6 Attestation
The first level of attestation is the signature of the technologist author. On a
regular basis, such as weekly or biweekly, someone who can read and
understand the entries should witness the notebook with the statement
‘‘read and understood by [reader’s signature].’’ The witness should not be
involved in the particular project or have a professional stake in the fate of
the project. Even better, is having two people witness the notebook and not
relying on the same person to always witness entries. This standard pre-
cludes a laboratory manager to whom the technologist author reports. With
a breakthrough discovery, a notebook entry should be witnessed the same
day or at least before the next regularly scheduled witnessing.
The reason a witness is remote from the project is that in several types
of proceedings the statements of a coinventor are not admissible to
prove conception, reduction to practice, or other critical inventive mile-
stones. Avoiding coinventor witnessing saves one from needing to under-
stand the complexity of evidence rules within interference and litigation
proceedings.

2.3.1.7 Guest entries

In instances where someone other than the assignee of the notebook makes
an entry, there should be an explanation of why the guest is providing an
entry. If there is a person who represents a permitted exception to the one-
person–one-notebook rule, then it should be noted as a preface in the
notebook. The most common instance for a shared notebook is experiments
that run continuously over days or longer and shift workers share the data
recordation. A guest contributor to a notebook might be someone taking a
reading after the notebook assignee has left unexpectedly. A guest entry
should be signed and dated by the guest.

2.3.2 Supplemental records

There are any number of spectra, instrument printouts, blue prints, sche-
matics, and the like that one would like to incorporate into a notebook.

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Chapter two: Research records in the patent process 39

These supplemental records should be attached by a method that will not

degrade appreciably over time. Many cellophane tapes are themselves
unacceptable for this reason. As it is unclear how a particular adhesive
might age, the use of glue and tape/staples to give redundant forms of
adhesion is preferred. After attachment of a supplemental record, a writing
including lines and a date of insertion should be written to overlap
the edges. In the event where the supplemental record separates from the
notebook substrate, it’s location and identity can be determined from
the added writings.
When an insert is taken from an instrument output it should be printed
with, or have written thereon, the file name, negative number, or other
corroborating information. The instrument make and model should also
be noted along with the conditions under which the output was generated.

2.3.3 Alternate media references

Some types of data are not amenable to insertion into a notebook in a way
that affords evidentiary controls. For instance, a computer readable disk
could be inserted into a pocket affixed to the notebook, but not in a way that
is not susceptible to a challenge of subsequent tampering. The solution lies
in archiving a copy of the alternate media in a way that a custodian not
associated with the project in question restricts access to the media.
A notebook reference to the media and custodial control completes the
incorporation by reference of the alternate media. The requirements of a
custodial record-keeper with respect to alternate media are the same as
those with respect to completed notebooks, and are described in detail in
Section 4.
When the alternate media is computer editable, it is strongly recom-
mended that the custodian be given two copies of the alternate media: a first
copy that is available for check out and usage by a technologist and a
second copy that is archived. Still better is a system where the duplicate
versions of the alternate media are stored in different locations to provide
a measure of insurance in case either repository suffers a fire or other
catastrophic event.
The question as to what needs to be deposited with a custodian is
largely dependent on the nature of the technology, yet the material placed
in the hands of the custodian should serve as proof when called upon to
show that the invention had been reduced to practice and/or that develop-
ment was ongoing. Reduction to practice is supported by samples, data,
and characterization that evidence that one had possession of an exemplary
version of the invention. In the case of a recombinant organism, deposit
of the organism itself with a certified repository satisfies this requirement.
The storage of test samples evidence proof of new alloy or structure under
development. Videotapes of the operation of a production process under
various conditions are strong evidence of a production process refinement.

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40 Avery N. Goldstein

Successful experimental data are not the only information that is sup-
portive of invention. Should one be so fortunate as to get only positive
results, it is still desirable to perform comparative experiments that serve
as controls or benchmarks corresponding to known systems. Comparative
data outside of the inventive scope are also helpful in establishing surpris-
ing benefits found within the inventive range. The extent of the effort
needed to discover the operative range of an invention and other such
information becomes quite helpful in responding to a claim rejection or
validity challenge based on the obviousness of the invention.

2.3.4 Electronic record-keeping variations

With the advent of computer networks, the notion of the conventional paper
notebook is being challenged. An electronic record-keeping system can now
be put into place that does away with the conventional concerns about ink
color and legible handwriting. These systems, while still in the minority,
offer considerable efficiencies in terms of data-handling and subsequent
retrieval. The key to an effective electronic record-keeping system is that
neither a technologist submitting an entry to such a system nor anyone else
associated with the project has the ability to edit or otherwise modify an
electronic record entry. The computer system manager now has the respon-
sibility for building a set of firewalls and access limitations that will serve as
evidence of a credible data-handling system. The system manager can be
expected to proffer an affidavit or testimony as to the system implemented.
With a noneditable record entry system in place, a system manager provides
an archival backup copy of entries on a removable storage medium that is
amenable to placement in a repository. With a chain of custody from the
technologist onto a server without the ability to edit data after submission,
followed by the backing up of the data records onto portable storage media
that are archived and stored in a controlled access setting, one can achieve a
strong evidentiary trial without a written notebook.
Separate from the storage of data records on portable storage media, a
computer system manager can leave access to prior record postings as
a reference service to the technologist. This system is beneficial in that the
postings can be compiled into a database that is searched by keywords, field
identifiers, cross-references to other postings, and whatever else might be
desirable. Additionally, an electronic record database can also track the
identity of individuals accessing certain data postings and allows for access
restriction to selected personnel.
While there is an expectation that electronic record-keeping will only
expand in the future, it is important to note that patent authorities and the
courts are accustomed to weighing the evidentiary value of handwritten
notebooks. The experience of individual triers of fact with respect to elec-
tronic record-keeping and computer systems may be quite limited. As such,
in constructing an electronic record-keeping system one should err on the

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Chapter two: Research records in the patent process 41

side of excess system controls and mechanisms that validate the integrity
of the records. While there is no reason that a completely electronic record-
keeping system cannot comport with the evidentiary requirements for
various proceedings with a patent authority or a court system, such occur-
rences still remain the exception.

2.4 Record archiving

Adequate record-keeping alone does not preclude a challenge as to the
evidentiary value of the notebook. A complete data-handling system pre-
vents technologist access to archived notebooks and thereby removes the
possibility that the inventor could alter the recorded data after the fact. The
record archive must also serve the need of the technologist or his successor
to access deposited data for the repetition of experiments. A cataloging
system is in place to retrieve archived items for evidentiary purposes and
for technologist referential needs. A series of useful steps are detailed in this
section that, when implemented, provide a data chain of custody that will
be given credence by a trier of fact.

2.4.1 Technologist–custodian interface

The custodian of records within an organization is someone who could not
possibly be an inventor. A custodian is often a technical librarian, office
manager, or an office professional. The custodian has a logbook that records
an identification number of a notebook checked out to a technologist. The date
of the notebook checkout is also recorded since a notebook is in the hands of
the assigned technologist until full or a predetermined period of time has
elapsed. Typical deadlines for the return of a notebook are 6 months to 1 year.
Before a technologist receives a new notebook, an old notebook relating
to the same project must be returned for archiving. When a technologist
is requesting a notebook for a new project, the total number of notebooks
outstanding to the technologist is reviewed. If the number of note-
books outstanding exceeds a preselected number, the request is denied
and the technologist is referred to a supervisor to justify the need for the
additional notebook.
The other time a technologist interacts with a document custodian is
when there is need for information from a previously archived notebook.
The notebook may be used later by the author or another technologist
working on a subsequent generation of a project to reproduce experiments,
obtain control data, or for numerous other purposes. The custodian cannot
release original notebooks without an archival copy being secured. The
custodian indexes through a sign-out and sign-in process when the
borrowed copy of the cataloged notebook is returned to a technologist
laboratory setting.

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42 Avery N. Goldstein

2.4.2 Audit committee

An audit committee is established to assure that technologists are using
proper notebook procedure, technical managers are conveying procedures
and enforcing the procedures, and the custodian is retaining isolated arch-
ival notebooks and the various custodial logs. An audit committee usually
includes the patent attorney to assess the evidentiary robustness of the data-
handling system, a technologist, a custodian, and a manager so that all the
roles involved in laboratory data recordation are represented. The audit
committee should meet on at least an annual basis or when particular issues
are raised. The committee has the responsibility for setting and implement-
ing a data-handling system that tracks the current state of evidentiary rules
and procedures.

2.4.3 Storage and security

A notebook returned to a custodian is checked for compliance with the
record-keeping procedures detailed above with respect to page completion,
entry permanency and legibility, witnessing, and supplemental data inser-
tion. Any deficiencies are noted in a custodian bound and numbered note-
book. A notebook absent inventor or witness signatures is returned for
correction, otherwise the deficiencies are noted and the notebook passed
on through the check-in procedure. While it is tempting to correct deficien-
cies in the notebook as part of custodial check-in, this should not be done.
Retrospective changes to the notebook are specifically what this laborious
process of safeguarding records is intended to prevent. Invariably having a
procedure for regularly modifying notebook entries will be far more dam-
aging to the evidentiary value of the records within the system than the
specific deficiencies within a given notebook.
Instead of modifying defective entries, the inventor and the manager
are notified of the notebook deficiencies to provide feedback that record-
keeping protocol has not been observed. A custodial checklist of possible
defects is an efficient way of communicating problems and assures that the
remarks remain consistent between multiple custodial personnel and inci-
dents. Repeated problems with the same inventor or common deficiencies
become topics for audit committee review. The use of a checklist helps an
audit committee track defect statistics and provides evidence of a uniform
standard in the event that disciplinarian action is to be taken.
A custodian, upon checking in a notebook, creates a duplicate copy of
the notebook. The original or copy is then placed in a secure storage facility
having restricted access and an access log.
For large research organizations, it is often most efficient to transfer the
notebook or other checked-in material to microfiche to facilitate long-term
storage and the noneditable format of microfiche strengthens the eviden-
tiary value of the record-keeping system. The use of a commercial contractor

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c002 Final Proof page 43 3.2.2005 2:22pm

Chapter two: Research records in the patent process 43

to perform microfiche transfer adds to the evidentiary value by including a

separate log of data transfer dates independent of that associated with the
research organization.
For a small research organization, a locked file cabinet with access being
limited only to the custodian is a viable system. Alternatively, a commercial
record storage facility will provide document warehousing in a variety of
formats. Archival storage of the original documents with reference access to
notebook paper copies preserves the evidentiary integrity of the originals.
A custodian maintaining an original record collection must not only
provide security over the records but also the access to the collection. The
key, password, or other access mode must itself be secured in a way that
supports the evidentiary position that no one generating records has access
to original records once checked-in with the custodian. Storage of the
access key in a restricted area such as a locked drawer and a procedure to
list and limit the personnel who can gain use of the access key, when use is
granted, and how the key is retrieved are adequate to verify proper chain of
custody with respect to an access key.

2.4.4 Accessing stored information

The reason for storing records is that there is an expectation that the records
and the particulars of record entry maybe called upon at a later date. There
are two general types of request for stored record access: evidentiary and
technical. Stored record access for each of these purposes is discussed.

2.4.4.1 Evidentiary inquiry

The archival data storage system is intended to support evidentiary inquir-
ies made of the research organization in a legal context. Access to the stored
information is therefore provided in those instances where proof of an
inventive step such as conception, reduction to practice, continued efforts,
or a due diligence investigation are required. Typically access to the stored
information is made by an attorney preparing for, or involved in, a question
about an inventive act or the inventive contribution of an individual. Other
organization officials may also need access to establish a variety of facts
including employment dates. In some instances, records requested as part of
litigation may be subpoenaed and the custodian should be prepared to
provide an affidavit or deposition detailing the mechanics of the record-
keeping system in place and the chain of custody as to those documents.
The document custodian upon receiving a request for access to the
archival materials should log information about the requester and the
purpose of the request. An inquiry should be made of the requester to
determine if their purpose requires access to the archived material itself,
or if access to a verified copy is adequate and the answer noted. The
chairperson of the audit committee or another organization official should

Copyright 2005 by Taylor & Francis Group, LLC

 GOLDSTEIN/Patent Law for Scientists and Engineers DK2550_c002 Final Proof page 44 3.2.2005 2:22pm

44 Avery N. Goldstein

promptly review the request and transmit a response to the custodian to act
accordingly. If at all possible, the original archived document should be
retained and a copy provided to once again preclude a challenge that a
document was outside of custodial care for a period of time. When the
original is required, a certified or notarized copy should be retained in the
archive so as to maintain document storage integrity.
When a document or copy of a document from the archive is provided,
the document should be labeled with appropriate limitations on the use
of the document consistent with the approved request. Labelings include
‘‘confidential,’’ ‘‘do not copy,’’ or ‘‘attorney’s eyes only.’’ The latter is
typical were a competitor is granted access to documents as part of litiga-
tion, but there is a stipulation made prior to forwarding the document that
the competitor will not derive a technical advantage through review of the
document.

2.4.4.2 Technical inquiry

A technologist may have a need to refer to a notebook that they themselves
previously completed or a notebook completed by a colleague. While the
evidentiary copy of records should not be accessible to a technologist after
submission, an organization has some discretion in deciding the safeguard
level applied to information retrieval for technical purposes. Efficiency and
trade secret maintenance are the competing factors that are balanced in
implementing a technical information access policy. The organizational
efficiency extremum is a self-serve library granting a technologist unlimited
access to archived record duplicates, while the other extremum involves
taking steps to curtail access consistent with protection of trade secrets
found within the data-handling system. This is a fundamental policy deci-
sion that is intimately tied to the nature of the organization mission and the
technology. An organization must decide as an initial matter whether it will
use trade secret law as a basis for protecting intellectual property in concert
with patents. The factors to be assessed in determining if particular infor-
mation constitutes a trade secret are difficult to apply prospectively. As a
result, a policy to treat all materials as trade secret should be implemented
and relaxed as justified by a particular instance, rather than attempting to
add restraints after information has received casual treatment.

2.5 Trade secret maintenance

Once an organization makes a determination that trade secrets are a valuable
way to protect certain inventive endeavors, then a system of data-handling
must be implemented consistent with this objective. It is unlikely that a trade
secret can be adequately maintained if it has not been treated as such from
inception, since seemingly harmless acts can destroy the secret nature of the
information. The details of trade secret law are available to the interested
reader.

Copyright 2005 by Taylor & Francis Group, LLC

Other documents randomly have
different content
 CHAPTER II.

But while this was doing, King Agamemnon went throughout the
host, and if he saw anyone stirring himself to get ready for the battle
he praised him and gave him good encouragement; but whomsoever
he saw halting and lingering and slothful, him he blamed and
rebuked whether he were common man or chief. The last that he
came to was Diomed, son of Tydeus, with Sthenelus, son of
Capaneus, standing by his side. And Agamemnon spake, “How is
this, son of Tydeus? Shrinkest thou from the battle? This was not thy
father’s wont. I never saw him indeed, but I have heard that he was
braver than all other men. Once he came to Mycenæ with great
Polynices to gather allies against Thebes. And the men of Mycenæ
would have sent them, only Zeus showed evil signs from heaven and
forbade them. Then the Greeks sent Tydeus on an embassy to
Thebes, where he found many of the sons of Cadmus feasting in the
palace of Eteocles; but Tydeus was not afraid, though he was but
one among many. He challenged them to contend with him in sport,
and in everything he prevailed. But the sons of Cadmus bare it ill,
and they laid an ambush for Tydeus as he went back, fifty men with
two leaders—Mæon and Lycophon. But Tydeus slew them all, leaving
only Mæon alive, that he might carry back the tidings to Thebes.
Such was thy father; but his son is worse in battle, but better, it may
be, in speech.”
Nothing said Diomed, for he reverenced the king; but Sthenelus
cried out, “Why speakest thou false, King Agamemnon, knowing the
truth? We are not worse but better than our fathers. Did not we take
Thebes, though we had fewer men than they, who indeed took it
not?” But Diomed frowned and said, “Be silent, friend. I blame not
King Agamemnon that he rouses the Greeks to battle. Great glory
will it be to him if they take the city, and great loss if they be
worsted. But it is for us to be valiant.”
So he passed through all the host. And the Greeks went forward
to the battle, as the waves that curl themselves and then dash upon
the shore, throwing high the foam. In order they went after their
chiefs; you had thought them dumb, so silent were they. But the
Trojans were like a flock of ewes which wait to be milked, and bleat
hearing the voice of their lambs, so confused a cry went out from
their army, for there were men of many tongues gathered together.
And on either side the gods urged them on, but chiefly Athené the
Greeks, and Ares the sons of Troy. Then, as two streams in flood
meet in some chasm, so the armies dashed together, shield on shield
and spear on spear.
Antilochus, son of Nestor, was the first to slay a man of Troy,
Echepolus by name, smiting him through the helmet into the
forehead. Like a tower he fell, and Elphenor the Euban sought to
drag him away that he might strip him of his arms. But Agenor
smote him with his spear as he stooped, so baring his side to a
wound. Dreadful was the fight around his body. Like wolves the
Trojans and the Greeks rushed upon each other. And Ajax Telamon
slew Simoisius (so they called him, because he was born on the
banks of Simoïs). He fell as a poplar falls, and Antiphon, son of King
Priam, aimed at Ajax, but, missing him, slew Leucus, the valiant
comrade of Ulysses. And Ulysses, in great anger, stalked through the
foremost fighters, brandishing his spear, and the sons of Troy gave
way, and when he hurled it he slew Democoön, a son of Priam. Then
Hector and the foremost ranks of Troy were borne backward, till
Apollo cried from the heights of Pergamos, “On, Trojans! The flesh of
these Greeks is not stone or iron, that ye cannot pierce it. Know,
too, that the mighty Achilles does not fight to-day.” But on the other
side Athené urged on the Greeks to battle. Then Peiros the Thracian
slew Diores, first striking him to the ground with a huge stone, and
then piercing him with his spear; and him in turn Thoas of Ætolia
slew, but could not spoil of his arms, so strongly did the men of
Thrace defend the body. Then Athené roused Diomed to battle,
making a fire shine from his helmet, bright as Orion shines in the
vintage time. First there met him two warriors, sons of Dares, priest
of Hephæstus, Phegeus and Idæus, the one fighting on foot and the
other from his chariot. First Phegeus threw his spear and missed his
aim; but Diomed missed not, smiting him through the breast. And
Idæus, when he saw his brother fall, fled, Hephæstus saving him,
lest the old man should be altogether bereaved. And each of the
chiefs slew a foe; but there was none like Diomed, who raged
through the battle so furiously that you could not tell with which
host he was, whether with the Greeks or with the sons of Troy. Then
Pandarus aimed an arrow at him, and smote him in the right
shoulder as he was rushing forward, and cried aloud, “On, great-
hearted sons of Troy, the bravest of the Greeks is wounded! Soon,
methinks, will his strength fail him, unless Apollo has deceived me.”
But Diomed cared not for the arrow. Only he leapt down from
the chariot and spake to Sthenelus, his charioteer, “Come down and
draw this arrow from my shoulder.” Then Sthenelus drew it, and the
blood spirted out from the wound. And Diomed prayed to Athené, “O
goddess, if ever thou hast helped me, be with me now, and grant
me to slay this boaster whose arrow has wounded me!” So speaking,
he rushed into the ranks of the Trojans, slaying a man at every
stroke. Æneas saw him, and thought how he might stay him in his
course. So he passed through the host till he found Pandarus.
“Pandarus,” he said, “where are thy bow and arrows? See how this
man deals death through the ranks. Send a shaft at him, first
making thy prayer to Zeus.”
Then Pandarus answered,—
“This man, methinks, is Diomed. The shield and the helmet and
the horses are his. And yet I know not whether he is not a god.
Some god, at least, stands by him and guards him. But now I sent
an arrow at him and smote him on the shoulder, right through the
corselet, and thought that I had slain him; but lo! I have harmed
him not at all. And now I know not what to do, for here I have no
chariot. Eleven, indeed, there are at home, in the house of my father
Lycaon, and the old man was earnest with me that I should bring
one of them; but I would not, fearing for my horses, lest they should
not have provender enough. So I came, trusting in my bow, and lo!
it has failed me these two times. Two of the chiefs I have hit,
Menelaüs and Diomed, and from each have seen the red blood flow,
yet have I not harmed them. Surely, if ever I return safe to my
home, I will break this useless bow.”
“Nay,” said Æneas, “talk not thus. Climb into my chariot, and see
what horses we have in Troy. They will carry us safe to the city, even
should Diomed prevail against us. But take the rein and the whip,
and I will fight; or, if thou wilt, fight thou, and I will drive.”
“Nay,” said Pandarus, “let the horses have the driver whom they
know. It might lose us both, should we turn to flee, and they linger
or start aside, missing their master’s voice.”
So Pandarus mounted the chariot and they drove together
against Diomed. And Sthenelus saw them coming, and said to his
comrades—“I see two mighty warriors, Lycaon and Æneas. It would
be well that we should go back to our chariot.”
But Diomed frowned and said, “Talk not of going back. Thou wilt
talk in vain to me. As for my chariot, I care not for it. As I am will I
go against these men. Both shall not return safe, even if one should
escape. But do thou stay my chariot where it is, tying the reins to
the rail; and if I slay these men, mount the chariot of Æneas and
drive into the hosts of the Greeks. There are no horses under the
sun such as these, for they are of the breed which Zeus himself gave
to King Tros.”
Meanwhile Pandarus and Æneas were coming near, and
Pandarus cast his spear. Right through the shield of Diomed it
passed, and reached the corselet, and Pandarus cried,—
“Thou art hit in the loin. This, methinks, will lay thee low.”
“Nay,” said Diomed, “thou hast missed and not hit at all.”
 And as he spake he threw his spear. Through nose and teeth
and tongue it passed, and stood out below the chin. Headlong from
the chariot he fell, and his armor clashed about him. Straightway
Æneas leapt off with spear and shield to guard the body of his
friend, and stood as a lion stands over a carcase. But Diomed lifted a
great stone, such as two men of our day could scarcely carry, and
cast it. It struck Æneas on the hip, crushing the bone. The hero
stooped on his knee, clutching the ground with his hand, and
darkness covered his eyes. That hour he had perished, but his
mother Aphrodité caught him in her white arms and threw her veil
about him. But even so Diomed was loath to let his foe escape, and
knowing that the goddess was not of those who mingle in the battle,
he rushed on her and wounded her on the wrist, and the blood
gushed out—such blood (they call it ichor) as flows in the veins of
the immortal gods, who eat not the meat and drink not the drink of
men. With a loud shriek she dropped her son, but Apollo caught him
up and covered him with a dark mist, lest perchance one of the
Greeks should spy him and slay him. And still Diomed pursued.
Thrice he rushed on, and thrice Apollo pushed back his shining
shield; but the fourth time the god cried to him,—
“Be wise, son of Tydeus, and give way, nor think to match the
gods.”
And Diomed gave way, fearing the wrath of the far-shooting
bow. But Apollo carried Æneas out of the battle, and laid him down
in his own temple in the citadel of Troy, and there Artemis and
Latona healed him of his wound. And all the while the Trojans and
the Greeks were fighting, as they thought, about his body, for Apollo
had made a likeness of the hero and thrown it down in their midst.
Then Sarpedon the Lycian spake to Hector with bitter words,—
“Where are thy boasts, Hector? Thou saidst that thou couldst
guard thy city, without thy people or thy allies, thou alone, with thy
brothers and thy brothers-in-law. But I cannot see even one of
them. They go and hide themselves, as dogs before a lion. It is we,
your allies, who maintain the battle. I have come from far to help
thy people,—from Lycia, where I left wife and child and wealth,—nor
do I shrink from the fight, but thou shouldst do thy part.”
And the words stung Hector to the heart. He leapt from his
chariot and went through the host, urging them to the battle. And
on the other side the Greeks strengthened themselves. But Ares
brought back Æneas whole from his wound, and gave him courage
and might. Right glad were his comrades to see him, nor did they
ask him any question; scant leisure was there for questions that day.
Then were done many valiant deeds, nor did any bear himself more
bravely than Æneas. Two chieftains of the Greeks he slew, Crethon
and Orsilochus, who came from the banks of Alpheüs. Sore vexed
was Menelaüs to see them fall, and he rushed to avenge them, Ares
urging him on, for he hoped that Æneas would slay him. But
Antilochus, Nestor’s son, saw him go, and hasted to his side that he
might help him. So they went and slew Pylæmenes, King of the
Paphlagonians, and Medon, his charioteer. Then Hector rushed to
the front, and Ares was by his side. Diomed saw him, and the god
also, for his eyes were opened that day, and he fell back a space and
cried,—
“O my friends! here Hector comes; nor he alone, but Ares is with
him in the shape of a mortal man. Let us give place, still keeping our
faces to the foe, for men must not fight with gods.”
Then drew near to each other Sarpedon the Lycian and
Tlepolemus, the son of Hercules, the one a son and the other a
grandson of Zeus. First Tlepolemus spake,—
“What art thou doing here, Sarpedon? Surely ’tis a false report
that thou art a son of Zeus. The sons of Zeus in the old days were
better men than thou art, such as my father Hercules, who came to
this city when Laomedon would not give him the horses which he
had promised, and brake down the walls and wasted the streets. No
help, methinks, wilt thou be to the sons of Troy, slain here by my
hands.”
 But Sarpedon answered, “He indeed spoiled Troy, for Laomedon
did him grievous wrong. But thou shalt not fare so, but rather meet
with thy death.”
Then they both hurled their spears, aiming truly, both of them.
For Sarpedon smote Tlepolemus in the neck, piercing it through so
that he fell dead, and Tlepolemus smote Sarpedon in the left thigh,
driving the spear close to the bone, but slaying him not, his father
Zeus warding off the doom of death. And his comrades carried him
out of the battle, sorely burdened with the spear, which no one had
thought to take out of the wound. And as he was borne along,
Hector passed by, and Sarpedon rejoiced to see him, and cried,—
“Son of Priam, suffer me not to become a prey to the Greeks; let
me at least die in your city, for Lycia I may see no more, nor wife,
nor child.”
But Hector heeded him not, so eager was he for the battle. So
his comrades carried him to the great beech-tree and laid him down,
and one of them drew the spear out of his thigh. When it was drawn
out he fainted, but the cool north wind blew and revived him, and he
breathed again.
But all the while Hector, with Ares at his side, dealt death and
destruction through the ranks of the Greeks. Heré and Athené saw
him where they sat on the top of Olympus, and were wroth. So they
went to Father Zeus and prayed that it might be lawful to them to
stop him in his fury. And Zeus said, “Be it as you will.” So they yoked
the horses to the chariot of Heré and passed down to earth, the
horses flying at every stride over so much space as a man sees who
sits upon a cliff and looks across the sea to where it meets the sky.
They alighted on the spot where the two rivers Simoïs and
Scamander join their streams. There they loosed the horses from the
yoke, and then sped like doves to where the bravest of the Greeks
stood round King Diomed. There Heré took the shape of Stentor
with the lungs of bronze, whose voice was as the voice of fifty men,
and cried, “Shame, men of Greece! When Achilles went to the battle,
the men of Troy came not beyond the gates, but now they fight far
from the city, even by the ships.” But Athené went to Diomed where
he stood wiping away the blood from the wound where Pandarus
had struck him with the arrow. And she spake, “Surely the son of
Tydeus is little like to his sire. Small of stature was he, but a keen
fighter. But thou—whether it be weariness or fear that keeps thee
back I know not—canst scarcely be a true son of Tydeus.”
But Diomed answered, “Nay, great goddess, for I know thee who
thou art, daughter of Zeus, it is not weariness or fear that keeps me
back. ’Tis thy own command that I heed. Thou didst bid me fight
with none other of the immortal gods but only with Aphrodité,
should she come to the battle. Therefore I give place, for I see Ares
lording it through the ranks of war.”
“Heed not Ares; drive thy chariot at him, and smite him with the
spear. This very morning he promised that he would help the
Greeks, and now he hath changed his purpose.”
And as she spake she pushed Sthenelus, who drove the chariot,
so that he leapt out upon the ground, and she mounted herself and
caught the reins and lashed the horses. So the two went together,
and they found Ares where he had just slain Periphas the Ætolian.
But Athené had donned the helmet of Hades, which whosoever puts
on straightway becomes invisible, for she would not that Ares should
see her who she was. The god saw Diomed come near, and left
Periphas, and cast his spear over the yoke of the chariot, eager to
slay the hero. But Athené caught the spear in her hand, and turned
it aside, so that it flew vainly through the air. Then Diomed in turn
thrust forward his spear, and Athené leant upon it, so that it pierced
the loin of Ares where his girdle was clasped. And Ares shouted with
the pain, loud as a host of men, thousands nine or ten, shouts when
it joins in battle. And the Greeks and Trojans trembled as they
heard. And Diomed saw the god go up to Olympus as a thunder-
cloud goes up when the wind of the south blows hot.
But when Ares had departed the Greeks prevailed again, slaying
many of the sons of Troy and of their allies. But at last Helenus, the
wise seer, spake to Hector and Æneas,—
 “Cause the army to draw back to the walls, and go through the
ranks and give them such strength and courage as ye may. And do
thou, Hector, when thou hast so done, pass into the city, and bid thy
mother go with the daughters of Troy, and take the costliest robe
that she hath, and lay it on the knees of Athené in her temple,
vowing therewith to sacrifice twelve heifers, if perchance she may
have pity upon us, and keep this Diomed from our walls. Surely
there is no Greek so strong as he; we did not fear even Achilles’ self
so much as we fear this man to-day, so dreadful is he and fierce. Go,
and we will make such stand meanwhile as we can.”
Then Hector passed through the ranks, bidding them be of good
heart, and so departed to the city.
But when he was gone, Glaucus the Lycian and Diomed met in
the space between the two hosts. And Diomed said,—
“Who art thou that meetest me thus? for never have I seen thee
before. If thou art a man, know that luckless are the fathers whose
sons meet my spear. But if thou art a god, I will not fight with thee.
It fares ill with them that fight with gods.”
Then Glaucus answered, “Diomed, why askest thou of my race?
The races of men are as the leaves of the forest which the wind
blows to the earth, and lo! in the spring they shoot forth again. Yet,
if thou wouldst know it, hearken to my words. There is a city Ephyra
in the land of Argos, where Sisyphus dwelt, who was the craftiest of
men; and Sisyphus begat Glaucus, and Glaucus, Bellerophon. Now
Bellerophon was the fairest and most valiant of men. And Queen
Antea accused him falsely to her husband, King Prœtus. Whereupon
the king sent him to his father-in-law, who was king of Lycia, and
gave him a tablet, whereon were written letters of death, so that the
king having read them should cause him to be slain. So Bellerophon
came to Lycia. And for nine days the king feasted him, but on the
tenth he asked for the tablet. And when he had read it, he sought
how he might slay him. For first he sent him to subdue the
Chimæra. Now the Chimæra was a marvellous thing, having the
forepart of a lion, and the body of a goat, and the tail of a snake.
And afterwards he sent him against the Solymi, who are the fiercest
warriors of all that dwell on the earth. And his third labor was that
he slew the Amazons. And as he was returning the king set an
ambush for him, yet harmed him not, for Bellerophon slew all the
men that lay in wait for him. Then the king knew him to be a good
man and of the race of the gods. Wherefore he kept him, and gave
him his daughter to wife, and with her the half of his kingdom; and
the Lycians gave him a fair domain of orchard and plough-land. Now
Bellerophon had three children—Laodamia, who bare Sarpedon to
Zeus; and Isander, whom Ares slew in battle against the Solymi; and
Hippolochus, my father, who sent me hither, bidding me ever bear
myself bravely, nor shame the race of my fathers.”
This Diomed was right glad to hear, and cried, “Nay, but thou art
a friend by inheritance. For in former times Œneus, my grandfather,
feasted Bellerophon for twenty days, and gave him a belt broidered
with purple, and Bellerophon gave him a great cup with two mouths,
which indeed I left behind me when I came hither. And now let us
two make agreement that we fight not with each other, for there are
Trojans enough whom I may slay, and there are Greeks enough for
thee. And let us also exchange our armor, that these men may know
us to be friends by inheritance.”
So they leapt down from their chariots and exchanged their
armor. And Zeus took away all wise counsel from the heart of
Glaucus, so that he gave golden armor for armor of bronze, the
worth of a hundred oxen for the worth of nine.
Hector came into the city by the Scæan gates, and as he went
wives and mothers crowded about him, asking how it had fared with
their husbands and sons. But he said nought, save to bid them pray;
and indeed there was sore news for many if he had told that which
he knew. Then he came to the palace of King Priam, and there he
saw Hecuba, his mother, and with her Laodicé, fairest of her
daughters. She caught him by the hand and said,—
“Why hast thou come from the battle, my son? Do the Greeks
press thee hard, and art thou minded to pray to Father Zeus from
the citadel? Let me bring thee honey-sweet wine, that thou mayest
pour out before him, aye, and that thou mayest drink thyself, and
gladden thy heart.”
But Hector said, “Give me not wine, my mother, lest thou
weaken my knees and make me forget my courage. Nor must I pour
out an offering with Zeus thus, with unwashed hands. But do thou
gather the mothers of Troy together, and go to the temple of
Athené, and take a robe, the one that is the most precious and
beautiful in thy stores, and lay it on the knees of the goddess, and
pray her to keep this dreadful Diomed from the walls of Troy; and
forget not to vow therewith twelve heifers as a sacrifice. As for me, I
will go and seek Paris, if perchance he will come with me to the war.
Would that the earth might open and swallow him up, for of a truth
he is a curse to King Priam and to Troy.”
So Queen Hecuba and the mothers of Troy did as Hector had
bidden them. But when they laid the robe on the knees of the
goddess she would not hear them.
And Hector went to the house of Paris, where it stood on the
citadel, near to his own dwelling and the dwelling of Priam. He found
him busy with his arms, and the fair Helen sat near him and gave
their tasks to her maidens.
But Hector spake: “Be not wroth, my brother. The people perish
about the wall, and the war burns hot round the city, and all for thy
sake. Rouse thee, lest it be consumed.”
And Paris answered, “Brother, thou hast spoken well. It was not
in wrath that I sat here. I was vexed at my sore defeat. But now my
wife has urged me to join the battle, and truly it is well, for victory
comes now to one and now to another. Wait thou, then, till I don my
arms, or if thou wouldst depart, I will overtake thee.”
So Hector departed and went to his own home, seeking his wife
Andromaché, but found her not, for she was on a tower of the wall
with her child and her child’s nurse, weeping sore for fear. And
Hector spake to the maids,—
 “Tell me, whither went the white-armed Andromaché; to see
some sister-in-law, or to the temple of Athené with the mothers of
Troy?”
“Nay,” said an aged woman, keeper of the house. “She went to
one of the towers of the wall, for she had heard that the Greeks
were pressing our people hard. She hasted like as she were mad,
and the nurse carried the child.”
So Hector ran through the city to the Scæan gates, and there
Andromaché spied him, and hasted to meet him—Andromaché,
daughter of King Eëtion, of Thebé-under-Placus. And with her was
the nurse, bearing the young child on her bosom—Hector’s only
child, beautiful, headed as a star. His father called him Scamandrius,
after the river, but the sons of Troy called him Astyanax, the “City-
King,” because it was his father who saved the city. Silently he
smiled when he saw the child, but Andromaché clasped his hand and
wept, and said,—
“O Hector, thy courage will bring thee to death. Thou hast no
pity on thy wife and child, but sparest not thyself, and all the Greeks
will rush on thee and slay thee. It were better for me, losing thee, to
die; for I have no comfort but thee. My father is dead, for Achilles
slew him in Thebé—slew him but spoiled him not, so much he
reverenced him. With his arms he burnt him, and the mountain-
nymphs planted poplars about his grave. Seven brethren I had, and
lo! they all fell in one day by the hand of the great Achilles. And my
mother, she is dead, for when she had been ransomed, Artemis
smote her with an arrow in her father’s house. But thou art father to
me, and mother and brother and husband also. Have pity, then, and
stay here upon the wall, lest thou leave me a widow and thy child an
orphan. And set the people here in array by this fig-tree, where the
city is easiest to be taken; for there come the bravest of the Greeks,
Ajax the Greater, and Ajax the Less, and Idomeneus, and the two
sons of Atreus, and the son of Tydeus.”
But Hector said, “Nay, let these things be my care. I would not
that any son or daughter of Troy should see me skulking from the
war. And my own heart loathes the thought, and bids me fight in the
front. Well I know, indeed, that Priam, and the people of Priam, and
holy Troy, will perish. Yet it is not for Troy, or for the people, or even
for my father or my mother that I care so much, as for thee in the
day when some Greek shall carry thee away captive, and thou shalt
ply the loom or carry the pitcher in the land of Greece. And some
one shall say when he sees thee, ‘This was Hector’s wife, who was
the bravest of the sons of Troy.’ May the earth cover me before that
day!”
Then Hector stretched out his arms to his child. But the child
drew back into the bosom of his nurse with a loud cry, fearing the
shining bronze and the horse-hair plume which nodded awfully from
his helmet top. Then father and mother laughed aloud. And Hector
took the helmet from his head and laid it on the ground, and caught
his child in his hands, and kissed him and dandled him, praying
aloud to Father Zeus and all the gods.
“Grant, Father Zeus and all ye gods, that this child may be as I
am, great among the sons of Troy; and may they say some day,
when they see him carrying home the bloody spoils from the war, ‘A
better man than his father, this,’ and his mother shall be glad at
heart.”
Then he gave the child to his mother, and she clasped him to her
breast and smiled a tearful smile. And her husband had pity on her,
and stroked her with his hand, and spake,—
“Be not troubled over much. No man shall slay me against the
ordering of fate; but as for fate, that, I trow, no man may escape,
be he coward or brave. But go, ply thy tasks, the shuttle and the
loom, and give their tasks to thy maidens, and let men take thought
for the battle.”
Then Hector took up his helmet from the ground, and
Andromaché went her way to her home, oft turning back her eyes.
And when she was come, she and all her maidens wailed for the
living Hector as though he were dead, for she thought that she
should never see him any more returning safe from the battle.
And as Hector went his way, Paris came running, clad in shining
arms, like to some proud steed which has been fed high in his stall,
and now scours the plain with head aloft and mane streaming over
his shoulders. And he spake to Hector,—
“I have kept thee, I fear, when thou wast in haste, nor came at
thy bidding.”
But Hector answered, “No man can blame thy courage, only
thou wilfully heldest back from the battle. Therefore do the sons of
Troy speak shame of thee. But now let us go to the war.”
So they went together out of the gates, and fell upon the hosts
of the Greeks and slew many chiefs of fame, and Glaucus the Lycian
went with them.
Now when Athené saw that the Greeks were perishing by the
hand of Hector and his companions, it grieved her sore. So she
came down from the heights of Olympus, if haply she might help
them. And Apollo met her and said,—
“Art thou come, Athené, to help the Greeks whom thou lovest?
Well, let us stay the battle for this day; hereafter they shall fight till
the doom of Troy be accomplished.”
But Athené answered, “How shall we stay it?”
And Apollo said, “We will set on Hector to challenge the bravest
of the Greeks to fight with him, man to man.”
So they two put the matter into the mind of Helenus the seer.
Then Helenus went near to Hector:—
“Listen to me, for I am thy brother. Cause the rest of the sons of
Troy and of the Greeks to sit down, and do thou challenge the
bravest of the Greeks to fight with thee, man to man. And be sure
thou shalt not fall in the battle, for the will of the immortal gods is
so.”
 Then Hector greatly rejoiced, and passed to the front of the
army, holding his spear by the middle, and kept back the sons of
Troy; and King Agamemnon did likewise with his own people. Then
Hector spake:—
“Hear me, sons of Troy, and ye men of Greece. The covenant
that we made one with another hath been broken, for Zeus would
have it so, purposing evil to both, till either you shall take our high-
walled city, or we shall conquer you by your ships. But let one of you
who call yourselves champions of the Greeks come forth and fight
with me, man to man. And let it be so that if he vanquish me he
shall spoil me of my arms but give my body to my people, that they
may burn it with fire; and if I vanquish him, I will spoil him of his
arms but give his body to the Greeks, that they may bury him and
raise a great mound above him by the broad salt river of Hellespont.
And so men of after days shall see it, sailing by, and say, ‘This is the
tomb of the bravest of the Greeks, whom Hector slew.’ So shall my
name live for ever.”
But all the Greeks kept silence, fearing to meet him in battle, but
shamed to hold back. Then at last Menelaüs leapt forward and
spake:—
“Surely now ye are women and not men. Foul shame it were
should there be no man to stand up against this Hector. Lo! I will
fight with him my own self, for the issues of battle are with the
immortal gods.”
So he spake in his rage rashly, courting death, for Hector was
much stronger than he. Then King Agamemnon answered:—
“Nay, but this is folly, my brother. Seek not in thy anger to fight
with one that is stronger than thou; for as for this Hector, even
Achilles was loath to meet him. Sit thou down among thy comrades,
and the Greeks will find some champion who shall fight with him.”
And Menelaüs hearkened to his brother’s words, and sat down.
Then Nestor rose in the midst and spake:—
 “Woe is me to-day for Greece! How would the old Peleus grieve
to hear such a tale! Well I remember how he rejoiced when I told
him of the house and lineage of all the chieftains of the Greeks, and
now he would hear that they cower before Hector, and are sore
afraid when he calls them to the battle. Surely he would pray this
day that he might die! Oh that I were such as I was in the old days,
when the men of Pylos fought with the Arcadians by the stream of
Iardanus! Now the leader of the Arcadians was Ereuthalion, and he
wore the arms of Areïthous, whom men called ‘Areïthous of the club,’
because he fought not with bow or spear, but with a club of iron.
Him Lycurgus slew, not by might but by craft, taking him in a narrow
place where his club of iron availed him not, and smiting him with
his spear. He slew him, and took his arms. And when Lycurgus grew
old he gave the arms to Ereuthalion to wear. So Ereuthalion wore
them, and challenged the men of Pylos to fight with him. But they
feared him. Only I, who was the youngest of all, stood forth, and
Athené gave me glory that day, for I slew him, though he was the
strongest and tallest among the sons of men. Would that I were
such to-day! Right soon would I meet this mighty Hector.”
Then rose up nine chiefs of fame. First of all, King Agamemnon,
lord of many nations, and next to him Diomed, son of Tydeus, and
Ajax the Greater and Ajax the Less, and then Idomeneus and
Meriones, who was his companion in arms, and Eurypylus, and
Thoas, son of Andræmon, and the wise Ulysses.
Then Nestor said, “Let us cast lots who shall do battle with the
mighty Hector.”
So they threw the lots into the helmet of King Agamemnon, a lot
for each. And the people prayed, “Grant, ye gods, that the lot of
Ajax the Greater may leap forth, or the lot of Diomed, or the lot of
King Agamemnon.” Then Nestor shook the lots in the helmet, and
the one which they most wished leapt forth. For the herald took it
through the ranks and showed it to the chiefs, but none knew it for
his own till he came to where Ajax the Greater stood among his
comrades. But Ajax had marked it with his mark, and put forth his
hand for it, and claimed it, right glad at heart. On the ground by his
feet he threw it, and said,—
“Mine is the lot, my friends, and right glad I am, for I think that I
shall prevail over the mighty Hector. But come, let me don my arms;
and pray ye to Zeus, but silently, lest the Trojans hear, or aloud, if ye
will, for no fear have we. Not by force or craft shall any one
vanquish me, for not such are the men that Salamis breeds.”
So he armed himself and moved forwards, dreadful as Ares,
smiling with grim face. With mighty strides he came, brandishing his
long-shafted spear. And all the Greeks were glad to behold him, but
the knees of the Trojans were loosened with fear, and great Hector’s
heart beat fast; but he trembled not, nor gave place, seeing that he
had himself called him to battle. So Ajax came near, holding before
the great shield, like a wall, which Tychius, best of craftsmen, had
made for him. Seven folds of bull’s hide it had, and an eighth of
bronze. Threateningly he spake:—
“Now shalt thou know, Hector, what manner of men there are
yet among our chiefs, though Achilles the lion-hearted is far away,
sitting idly in his tent, in great wrath with King Agamemnon. Do
thou, then, begin the battle.”
“Speak not to me, Zeus-descended Ajax,” said Hector, “as
though I were a woman or a child, knowing nothing of war. Well I
know all the arts of battle, to ply my shield this way and that, to
guide my car through the tumult of steeds, and to stand fighting
hand to hand. But I would not smite so stout a foe by stealth, but
openly, if it so befall.”
And as he spake he hurled his long shafted spear, and smote the
great shield on the rim of the eighth fold, that was of bronze.
Through six folds it passed, but in the seventh it was stayed. Then
Ajax hurled his spear, striking Hector’s shield. Through shield it
passed and corselet, and cut the tunic close against the loin; but
Hector shrank away and escaped the doom of death. Then, each
with a fresh spear, they rushed together like lions or wild boars of
the wood. First Hector smote the middle of the shield of Ajax, but
pierced it not, for the spear-point was bent back; then Ajax, with a
great bound, drove his spear at Hector’s shield and pierced it,
forcing him back, and grazing his neck so that the black blood welled
out. Yet did not Hector cease from the combat. A great stone and
rough he caught up from the ground, and hurled it at the boss of
the seven-fold shield. Loud rang the bronze, but the shield brake
not. Then Ajax took a stone heavier by far, and threw it with all his
might. It brake the shield of Hector, and bore him backwards, so that
he fell at length with his shield above him. But Apollo raised him up.
Then did both draw their swords; but ere they could join in close
battle came the heralds, and held their sceptres between them, and
Idæus, the herald of Troy, spake:—
“Fight no more, my sons; Zeus loves you both, and ye are both
mighty warriors. That we all know right well. But now the night bids
you cease, and it is well to heed its bidding.”
Then said Ajax, “Nay, Idæus, but it is for Hector to speak, for he
called the bravest of the Greeks to battle. And as he wills it, so will
I.”
And Hector said, “O Ajax, the gods have given thee stature and
strength and skill, nor is there any better warrior among the Greeks.
Let us cease then from the battle; we may yet meet again, till the
gods give the victory to me or thee. And now let us give gifts the
one to the other, so that Trojans and Greeks may say—Hector and
Ajax met in fierce fight and parted in friendship.”
So Hector gave to Ajax a silver-studded sword with the scabbard
and the sword-belt, and Ajax gave to Hector a buckler splendid with
purple. So they parted. Right glad were the sons of Troy when they
saw Hector returning safe. Glad also were the Greeks, as they led
Ajax rejoicing in his victory to King Agamemnon. Whereupon the
king called the chiefs to banquet together, and bade slay an ox of
five years old, and Ajax he honored most of all, giving him the chine.
And when the feast was ended, Nestor said,—
 “It were well that we should cease awhile from war and burn the
dead, for many, in truth, are fallen. And we will build a great wall,
and dig a trench about it, and we will make gates, wide that a
chariot may pass through, so that our ships may be safe, if the sons
of Troy should press us hard.”
But the next morning came a herald from Troy to the chiefs, as
they sat in council by the ship of King Agamemnon, and said,—
“This is the word of Priam and the men of Troy: Paris will give
back all the treasures of the fair Helen, and many more besides; but
the fair Helen herself he will not give. But if this please you not,
grant us a truce that we may bury our dead.”
Then Diomed spake, “Nay, we will not take the fair Helen’s self,
for a man may know, even though he be a fool, that the doom of
Troy is come.”
And King Agamemnon said, “Herald, thou hast heard the word of
the Greeks, but as for the truce, be it as you will.”
So the next day they burnt their dead, and the Greeks made a
wall with gates and dug a trench about it. And when it was finished,
even at sunset, they made ready a meal, and lo! there came ships
from Lemnos bringing wine, and Greeks bought thereof, some with
bronze, and some with iron, and some with shields of ox hide. All
night they feasted right joyously. The sons of Troy also feasted in
their city. But the dreadful thunder rolled through the night, for Zeus
was counselling evil against them.
 CHAPTER III.

THE WOUNDING OF THE CHIEFS.

The next day the battle was set in array as before. And all the
morning the armies fought without advantage to the one or the
other; but at noon, at the hour when one who cuts wood upon the
hills sits down to his meal, the Greeks prevailed and drove back the
sons of Troy. Nor was there one of all the chiefs who fought so
bravely as King Agamemnon. Many valiant men he slew, and among
them the two sons of Antimachus. These, indeed, he took alive in
their chariot, for they had dropped the reins, and stood helpless
before him, crying out that he should spare them and take ransom,
for that Antimachus their father had much gold and bronze and iron
in his house, and would gladly buy them back alive. Now Antimachus
had taken a bribe from Prince Paris, and had given counsel to the
Trojans that they should not give back the fair Helen. So when King
Agamemnon heard them, he said, “Nay, but if ye be sons of
Antimachus, who counselled the men of Troy that they should slay
Menelaüs when he came an ambassador to their city, ye shall die for
your father’s sin.” So he slew them both, and leaving them he still
rushed on, driving back the Trojans even to the walls of their city.
Nor did Hector himself dare to meet him, for Zeus had sent him a
message saying that he should hold himself back till King
Agamemnon should chance to be wounded. And indeed this chance
happened presently, for the king had slain Iphidamas, son to
Antenor, and Coön, his brother, the eldest born, was very wroth to
see it. So standing sideways he aimed with his spear, Agamemnon
not knowing, and smote the king in the hand near the wrist. Then
he seized the body of his brother, and shouted to his comrades that
they should help him; but Agamemnon dealt him a deadly blow
underneath his shield. So he fell; and for a while, while the wound
was warm, the king fought as before; but when it grew cold and stiff
great pain came upon him, and he leapt into his chariot and bade
the charioteer drive him to the ships, for that he could fight no
more.
Then again the battle went for the Trojans, though Diomed and
Ulysses, who fought very valiantly, stayed it awhile, Diomed coming
very near to slay Hector. But Paris, who was in hiding behind the
pillar on the tomb of Ilus, drew his bow, and smote him with an
arrow through the ankle of the right foot. Loud he boasted of his
aim. “Only,” he said, “I would that I had pierced thee in the loin;
then hadst thou troubled the sons of Troy no more.”
But Diomed answered, “Small good were thy bow to thee,
cowardly archer, if thou shouldst dare to meet me face to face. And
as for this graze on my foot, I care no more than if a woman or child
had smitten me. Not such the wounds I deal; as for those that meet
my spear in the battle, I trow that they are dearer to the fowls of
the air than to women in the chamber.”
Then Ulysses stood before him while he drew the arrow out of
his foot. Grievous was the smart of the wound, for all his brave
words. Wherefore he leapt into his chariot, and bade drive in haste
to the ships. So Ulysses was left alone, and the Trojans came about
him as men with dogs come about a wild boar who stands at bay
gnashing his white teeth. Fiercely he stood at bay, and slew five
chiefs of fame. But one of them, Socus by name, before he fell,
wounded him on the side, scraping the flesh from the ribs. High
spurted the blood from the wound, and the Trojans shouted to see
it. Then Ulysses shouted for help; three times he shouted, and
Menelaüs heard him and called to Ajax that it was the voice of
Ulysses, and that they should help him. So they went together and
made head awhile against the Trojans. But soon Paris wounded with
an arrow another brave chieftain, even the physician Machaon. Then
Ajax himself was affrighted and gave way, but slowly, and sore
against his will. Just so a lion is driven off from a herd of oxen by
dogs and men. Loath he is to go, so hungry is he, but the spears
and the burning torches affright him. So Ajax gave way. Now he
would turn and face the sons of Troy, and now he would flee, and
they sought how to slay him, but harmed him not. Then once more
Paris loosed his bow and wounded a chief, Eurypylus, striking him on
the right thigh. So the battle went sorely against the Greeks.
Now Achilles was standing on the stern of his ship, looking at the
war, and he saw Nestor carrying Machaon in his chariot to the ships.
Then he called to Patroclus, and Patroclus, who was in the tent,
came forth; but it was an evil hour for him. Then said Achilles,—
“Now will the Greeks soon come, methinks, praying for help, for
their need is sore. But go and see who is this whom Nestor is taking
to the ships. His shoulders are the shoulders of Machaon, but I saw
not his face, so swift the horses passed me by.”
Then Patroclus ran. And as he stood in the tent door, old Nestor
saw him, and went and took him by the hand, and would have had
him sit down. But Patroclus would not, saying,—
“Stay me not. I came but to see who is this that thou hast
brought wounded from the battle. And now I see that it is Machaon.
Therefore I will return, for thou knowest what manner of man is
Achilles, that he is hasty and swift to blame.”
Then said Nestor, “But what cares Achilles for the Greeks? or
why does he ask who are wounded? But, O Patroclus, dost thou
mind the day when I and Ulysses came to the house of Peleus, and
how thy father Menætius was there, and how we feasted in the hall;
and when the feast was finished told our errand, for we were
gathering the heroes for the war against the sons of Troy? Right
willing were ye two to come, and many counsels did the old men
give you. Then to Achilles Peleus said that he should always be
foremost in the host, but to thee thy father Menætius spake,
‘Achilles is nobler born than thou, and stronger far; but thou art
older. Do thou therefore counsel him well, when there is need.’ But
this thou forgettest, Patroclus. Hear, then, what I say. It may be that
Achilles will not go forth to the battle. But let him send thee forth,
and the Myrmidons with thee, and let him put his arms upon thee,
so that the sons of Troy be affrighted, thinking that he is in the
battle, and we shall have breathing space.”
Then Patroclus turned to run to Achilles, but as he ran he met
Eurypylus, who spake to him,—
“Small hope is there now for the Greeks, seeing that all their
bravest chiefs lie wounded at the ships. But do thou help me, for
thou knowest all the secrets of healing, seeing that the wise Chiron
himself taught thee.”
Then Patroclus answered, “I am even now on my way to tell
these things to Achilles, but thee I may not leave in thy trouble.”
So he took him to his tent, and cut out the arrow from his thigh,
washing the wound with water, and putting on it a bitter healing
root, so that the pain was stayed and the blood stanched.
Now by this time the Trojans were close upon the trench. But
the horses stood on the brink, fearing to leap it, for it was broad and
deep, and the Greeks had put great stakes therein. Thus said
Polydamas,—
“Surely, Hector, this is madness that we strive to cross the trench
in our chariots, for it is broad and deep, and there are great stakes
therein. Look, too, at this: even if we should be able to cross it, how
will the matter stand? If indeed it be the pleasure of Zeus that the
Greeks should perish utterly,—it will be well. But if they turn upon us
and pursue us, driving us back from the ships, then shall we not be
able to return. Wherefore let us leave our chariots here upon the
brink, and go on foot against the wall.”
So they went in five companies, of whom Hector led that which
was bravest and largest, and with him were Polydamas and
Cebriones. And the next Paris commanded. And of the third Helenus
and Deïphobus were leaders, and with them was Asius, the son of
Hyrtacus, from Arisbê. And the fourth followed Æneas, the valiant
son of Anchises. But of the allies Sarpedon was the leader, and with
him were Glaucus and Asteropæus. And in each company they
joined shield to shield, and so went against the Greeks. Nor was
there one of them but hearkened to the counsel of Polydamas when
he bade them leave their chariots by the trench, save Asius only. But
Asius drove his chariot right up to that gate which was on the left
hand in the wall. Now the gates chanced to be open, for the warders
had opened them, if so any of the Greeks that fled might save
themselves within them. Now the warders were two mighty heroes
of the race of the Lapithæ, Polypœtes and Leonteus; and these,
when they saw Asius and his company coming, went without and
stood in front of the gates, just as two wild boars stand at bay
against a crowd of men and dogs. And all the while they that stood
on the wall threw heavy stones which fell, thick as the snow-flakes
fall in the winter, on the men of Troy, and loud rang the helmets and
the shields. And many fell wounded to the death, nor could Asius,
for all his fury, win his way into the walls. But where, at another of
the gates, Hector led the way, there appeared a strange marvel in
the skies, for an eagle was bearing in his claws a great snake, which
it had taken as a prey. But the snake fought fiercely for its life, and
writhed itself about, even till it bit the eagle on the breast.
Whereupon the eagle dropped it into the midst of the host, and fled
with a loud cry. Then Polydamas, the wise counsellor, came near to
Hector, and said,—
“Now it will be well that we should not follow these Greeks to
their ships. For I take that this marvel that we have seen is a sign to
us. For as this eagle had caught in his claws a snake, but held it not,
dropping it before it could bear it to her young, so shall it fare with
us. For we shall drive the Greeks to their ships, but shall not subdue
them, but shall return in disorder by the way that we came, leaving
full many of our comrades behind us.”
But Hector frowned and answered, “Nay, but this is ill counsel,
Polydamas. For if thou sayest this from thy heart, surely the gods
have changed thy wisdom into foolishness. Dost thou bid me forget
the command of Zeus the Thunderer, and take heed to birds, how
they fly? Little care I whether they go to the east or to the west, to
the right or to the left. Surely there is but one sign for a brave man,
that he is fighting for his fatherland. Wherefore take thou heed; for
if thou holdest back from the war, or holdest back any other, lo! I will
smite thee with my spear.”
Then he sprang forward, and the men of Troy followed him with
a shout. And Zeus sent down from Ida a great blast of wind which
bore the dust of the plain straight to the ships, troubling the hearts
of the Greeks. Then the Trojans sought to drag down the
battlements from the wall, and to wrench up the posts which had
been set to strengthen it. Nor did the Greeks give way, but they
joined shield to shield and fought for the wall. And foremost among
them were Ajax the Greater and Ajax the Less. Just as the snow falls
in mid-winter, when the winds are hushed, and the mountain-tops
are covered, and the plains and the dwellings of men and the very
shores of the sea, up to the waves’ edge, so thickly fell the stones
which the Greeks showered from the wall against the men of Troy,
and which these again threw upon the Greeks. But still Hector and
his men availed not to break through the gate. But at the last Zeus
stirred up the heart of his own son, Sarpedon. Holding his shield
before him he went, and he shook in either hand a spear. As goes a
lion, when hunger presses him sore, against a stall of oxen or a
sheepfold, and cares not though he find men and dogs keeping
watch against him, so Sarpedon went against the wall. And first he
spake to stout Glaucus, his comrade,—
“Tell me, Glaucus, why is it that men honor us at home with the
chief rooms at feasts, and with fat portions of flesh and with sweet
wine, and that we have a great domain of orchard and plough land
by the banks of Xanthus? Surely it is that we may fight in the front
rank. Then shall some one who may behold us say, ‘Of a truth these
are honorable men, these princes of Lycia, and not without good
right do they eat the fat and drink the sweet, for they fight ever in
the front.’ Now, indeed, if we might live for ever, nor know old age
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