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

Tue Dec 10 04:17:05 UTC 2024

I agree that as outside counsel you should never name yourself as an
inventor for a patent you wrote.

But I've had more than one in-house counsel who contributed to the
invention when we were discussing it in committee.  I think that's not a
big issue, if in-house counsel becomes an inventor.

Judith

On Mon, Dec 9, 2024 at 12:40 PM Suzannah K. Sundby via Patentpractice <
patentpractice at oppedahl-lists.com> 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
>
> *canady + lortz** LLP* <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]
> <#m_-6441156188502376828__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]
> <#m_-6441156188502376828__ftn2>
>
> ●    When a statement of fact made solely as *attorney argument* is
> erroneous without intent, it’s not inequitable conduct.[3]
> <#m_-6441156188502376828__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] <#m_-6441156188502376828__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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