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<p>I have had this happen half a dozen times over the years. I send
the standard email "here are the claims, please look at them and
tell me if we have named all of the inventors" and next thing you
know, I am told I am a co-inventor.</p>
<p>When this happens, I simply sign a declaration and asssignment,
record the assignment, and give it no further thought.</p>
<p>Yes I suppose one could concoct situations where (for example) a
malfeasant patent attorney could intentionally slip a "not" into
the assignment, or could intentionally do something or another
during prosecution that would somehow favor the attorney. To the
extent that one decides that such risks would need to be somehow
addressed, yes one cannot imagine any approach other than
transferring everything about the case (including the assignment
task) to separate counsel.</p>
<p>One imagines the client would get stuck paying lots of money to
new counsel for them to spend the time needed gain familiarity
with the file.</p>
<p>I guess I have sort of assumed that if I can be trusted not to
screw over the client in the handling of the file in general
(before I was identified as a co-inventor), I ought to be able to
be trusted not to screw over the client in the remaining tasks.
But you raise valid questions that I have never thought about.<br>
</p>
<div class="moz-cite-prefix">On 12/9/2024 1:03 PM, Patent Lawyer via
Patentpractice wrote:<br>
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<p class="MsoNormal">What issues / concerns are there with a
patent attorney being named an inventor on their client's
patent application?</p>
<p class="MsoNormal">Assume that the attorney will assign all
rights in the invention to the client/applicant, should the
attorney advise them to have someone else handle the
assignment? <br>
</p>
<p class="MsoNormal">Are there privilege issues? (In a
communication with the client, who are you? Attorney or
co-inventor?)</p>
<p class="MsoNormal">Does the patent attorney have to advise the
PTO? Is there a conflict of any sort?</p>
<p class="MsoNormal"><span> </span></p>
<p class="MsoNormal"><span> </span></p>
<p class="MsoNormal"> </p>
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