[Patentpractice] Patent lawyer as inventor on client's application?

[Carl Oppedahl]

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.

When this happens, I simply sign a declaration and asssignment, record 
the assignment, and give it no further thought.

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.

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.

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.

On 12/9/2024 1:03 PM, Patent Lawyer via Patentpractice wrote:
>
> What issues / concerns are there with a patent attorney being named an 
> inventor on their client's patent application?
>
> 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?
>
> Are there privilege issues? (In a communication with the client, who 
> are you? Attorney or co-inventor?)
>
> Does the patent attorney have to advise the PTO?  Is there a conflict 
> of any sort?
>
>
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