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

Tue Dec 10 11:22:56 UTC 2024

I disagree with Judith and Carl.  It's a MISTAKE, a
potentially-catastrophic mistake with no upside, for any lawyer to name
him/herself as an inventor, in-house or outside.  You're almost
guaranteeing a hole in the privilege, and potentially a subject matter
waiver.  Back in my litigator days, one of my little specialties was
depositions of attorneys.  If you have a witness that's a fact witness or
some issues, and the attorney for others, oh man what a tasty target rich
environment.  DON'T DO IT.

You'll find my name on some of my early patents, but not after I sat as
guest of honor or a couple depositions by Cravath, Kirkland & Ellis, and
similar firms, and realized how many of my defense counsel's objections
would not be possible if I had been a named inventor.

I disagree with David Hricik.   His paper
https://digitalcommons.law.mercer.edu/jour_mlr/vol55/iss2/4/ proceeds from
these two sentences:

On the one occasion the Federal Circuit did address this issue, ...  the
court stated that as a matter of law, practitioners can never be
inventors.
The Federal Circuit was wrong.

That's not the way it works.  When a panel majority of people with black
robes, presidential appointments, and Senate Confirmations say that it is
fine -- no error, no statutory violation, just fine -- to not name lawyer
as inventor, well, that's the law.

This is not a close call.  Just don't.

On Mon, Dec 9, 2024 at 11:19 PM Judith S via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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/>
>>
>> 1050 30th Street, NW
>>
>> Washington, DC 20007
>>
>> T: 202.486.8020
>>
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>>
>> suzannah at canadylortz.com
>>
>> 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_-8700340141342876121_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_-8700340141342876121_m_-6441156188502376828__ftn2>
>>
>> ●    When a statement of fact made solely as *attorney argument* is
>> erroneous without intent, it’s not inequitable conduct.[3]
>> <#m_-8700340141342876121_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_-8700340141342876121_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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