[Patentpractice] Patent lawyer as inventor on client's application?
David Boundy
PatentProcedure at gmail.com
Mon Dec 9 18:51:41 UTC 2024
My view is that you should not name yourself inventor without a Really Good
Reason. Here are the reasons that you should not name yourself as inventor:
● If you are merely the attorney, not the inventor, you are unlikely to
be called for deposition—attorneys generally don’t get deposed unless
there’s some smell of inequitable conduct in the air first.[1]
<#_ftn1> However,
if you are a named inventor, you *will* be deposed. And once you’re in the
hot seat in your role as inventor, the scope of questions that you can be
asked has little bound, including “fishing expedition” questions for
inequitable conduct that couldn’t be asked if you weren’t already there.[2]
<#_ftn2>
● When a statement of fact made solely as *attorney argument* is
erroneous without intent, it’s not inequitable conduct.[3] <#_ftn3> However,
if you are the inventor, the same argument could be an *inventor’s
statement*, and that statement might be evaluated for inequitable conduct
on a far different standard.
● As a person that is likely to become a witness, you are disqualified
from representing the client in any litigation. The disqualification may
extend to your firm.
While the Federal Circuit has not explicitly blessed the practice, it has
at least told district courts not to invalidate such patents under old
§ 102(f) (“A person shall be entitled to a patent unless … he did not
himself invent the subject matter sought to be patented.”), nor to correct
inventorship under § 256:[4] <#_ftn1>
… An attorney’s professional responsibility is to assist his or her client
in defining her invention to obtain, if possible, a valid patent with
maximum coverage. An attorney performing that role should not be a
competitor of the client, asserting his inventorship as a result of
representing his client. Thus, to assert that proper performance of the
attorney’s role is a ground for invalidating the patent constitutes a
failure to understand the proper role of the patent attorney.
------------------------------
------------------------------
<#_ftnref1> [1] *Ring Plus Inc v Cingular Wireless Corp.*, 614
F.3d 1354, ___, 6 USPQ2d 1022, ___ (Fed. Cir. 2010) (material misstatement
in Background was material to inequitable conduct, but did not establish
intent to deceive); Taltech Ltd v Esquel Ents Ltd., 604 F3d 1324, ___, 95
USPQ2d 1257, ___ (Fed. Cir. 2010) (inequitable conduct & atty fees in
undisclosed prior art, atty misstatement; intent inferred from circumstance
& lack evidence of good faith).
<#_ftnref2> [2] Exergen Corp v Wal-Mart Stores Inc., 575 F3d
1312, ___, 91 USPQ2d 1656, ___ (Fed. Cir. 2009) (FRCP 9(b) pleading of
inequitable conduct reqs specific who, what, when, where and how, including
facts implying intent).
<#_ftnref3> [3] *Intirtool Ltd v Texar Corp.*, 369 F3d 1289,
___, 70 USPQ2d 1780, ___ (Fed. Cir. 2004) (inequitable conduct of faulty
prosecution arguments); *Norian Corp v Stryker Corp.*, 363 F3d 1321, 70
USPQ2d 1508 (Fed. Cir. 2004) (inequitable conduct of faulty prosecution
arguments); *CFMT Inc v Yieldup Int’l Corp.*, 349 F3d 1333, ___, 68 USPQ2d
1940, ___ (Fed. Cir. 2003) (inequitable conduct of faulty prosecution
arguments); *Transonic Systems Inc v Non-Invasive Medical Technologies
Corp.*, 75 Fed.Appx. 765 (Fed. Cir. 2003) (unpublished) (inequitable
conduct of faulty prosecution arguments); *Gambro Lundia AB v Baxter
Healthcare Corp*, 110 F3d 1573, ___, 42 USPQ2d 1378, ___ (Fed. Cir. 1997).
------------------------------
<https://mail.google.com/mail/u/0/#_ftnref1> [4] *Solomon v.
Kimberly-Clark Corp.*, 216 F.3d 1372, 1382, 55 USPQ2d 1279, 1285 (Fed. Cir.
2000).
On Mon, Dec 9, 2024 at 1:40 PM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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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>
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>
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