[Patentpractice] Patent lawyer as inventor on client's application?
Richard Straussman
rstraussman at weitzmanip.com
Mon Dec 9 20:58:54 UTC 2024
I agree with Suzannah and follow a similar approach. However, I could
dream up some fringe cases where the patent attorney has particular
expertise similar to that of the inventors and the patent attorney
notices, for example, an enablement problem/issue that involves a
detailed discussion back and forth until a solution is arrived at, and
thereby results in the possibility of the patent attorney being a
co-inventor. In such a rare case, I saw it happen once in 30+ years
(not involving me but, a colleague), and Carl's approach was used to
address it.
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On 12/9/2024 3:40 PM, Suzannah K. Sundby via Patentpractice wrote:
>
> I’d also question whether the patent attorney is truly a “joint”
> inventor, i.e., worked in ‘collaboration’, etc.
>
> Imho, patent attorneys should never /write themselves in/ as an
> inventor.After all, it is our job to write what the inventors envision
> is their invention, not what we think the inventors want to invent.
>
> If a patent attorney has a question as to whether a particular
> embodiment/application/combination is contemplated by the inventors
> and should therefore be included as a claim, the patent attorney
> should ask as the inventors a /leading/ question, e.g., Do you
> envision that this could be … ?
>
> Sometimes they say something that’s a great idea or yes, that’s how it
> could be implemented…I then correct them and say it is what I
> understood from their own disclosure and/or I didn’t know whether it
> would work or not which is why I asked, etc.
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/>*|* Partner
>
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> suzannah at canadylortz.com <mailto:suzannah at canadylortz.com>
>
> www.canadylortz.com <http://www.canadylortz.com/>
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> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *David Boundy via Patentpractice
> *Sent:* Monday, December 9, 2024 1:52 PM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* David Boundy <PatentProcedure at gmail.com>
> *Subject:* Re: [Patentpractice] Patent lawyer as inventor on client's
> application?
>
> 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.
>
>
> ------------------------------------------------------------------------
> ------------------------------------------------------------------------
>
> ^[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).
>
> ^[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).
>
> ^[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).
>
> ------------------------------------------------------------------------
>
> ^[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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