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

Tue Dec 10 11:37:32 UTC 2024

I agree with David (except I have yet to read Hricik’s paper, which I will when I have time, so I have no comment as to that).

I think many forget that in-house attorneys are duty bound to operate independently as if they are outside counsel, not employees of a company, in order to provide competent legal advice to the company/entity as their client.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Tuesday, December 10, 2024 6:23 AM
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?

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<mailto: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<mailto: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.

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Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
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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]  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]

●    When a statement of fact made solely as attorney argument is erroneous without intent, it’s not inequitable conduct.[3]  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]

… 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<mailto: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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