[Patentpractice] Patent lawyer as inventor on client's application?
Richard Straussman
rstraussman at weitzmanip.com
Mon Dec 9 21:26:29 UTC 2024
To me, that is inherent in their system and is not part of the
conception - the inventor has established that it is computer
implemented and conception is complete, so if the patent attorney adds
stock paragraphs/drawing(s) generally describing and showing the basics
of a computer (e.g., processor9s), memory, program storage, I/O, etc.),
that is not invention or an inventive contribution.
*Richard Straussman**
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On 12/9/2024 4:17 PM, Dale Quisenberry wrote:
>
> What about situation where client has a computer-implemented invention
> and patent attorney provides a form figure that illustrates basics of
> a computer and some form language that explains what is shown in the
> figure?
>
> C. Dale Quisenberry
>
> Quisenberry Law PLLC
>
> 13910 Champion Forest Drive, Suite 203
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> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Richard Straussman via Patentpractice
> <patentpractice at oppedahl-lists.com>
> *Date: *Monday, 9 December 2024 at 3:02 pm
> *To: *patentpractice at oppedahl-lists.com
> <patentpractice at oppedahl-lists.com>
> *Cc: *Richard Straussman <rstraussman at weitzmanip.com>
> *Subject: *Re: [Patentpractice] Patent lawyer as inventor on client's
> application?
>
> 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.
>
> *Richard Straussman**
> **Senior Counsel**
> **Registered Patent Attorney**
> *Member NY, NJ & CT Bars
> *. . . . . . . . . . . . . .*
> *Weitzman Law Offices, LLC*
> *Intellectual Property Law*
> 425 Eagle Rock Avenue, Suite 401
> Roseland, NJ 07068
> *direct line*973.403.9943
> *main*973.403.9940
> *fax*973.403.9944
> *e-mail*rstraussman at weitzmanip.com
>
> *_http://www.weitzmanip.com_**_
> _*
>
>
> 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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> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com>
> <mailto: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>
> <mailto:patentpractice at oppedahl-lists.com>
> *Cc:* David Boundy <PatentProcedure at gmail.com>
> <mailto: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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