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

[Dan Feigelson]

I disagree with David H's characterization of *Solomon*.  The case in
question doesn't effectively say "that as a matter of law, practitioners
can never be inventors.", as David H. asserts.  Here's the relevant
paragraph, from near the end of *Solomon*:

"As for the suggestion that Solomon's attorney might be the true inventor,
we regard that argument as misguided. 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
inventorship as a result of representing his client. Cf. Patent and
Trademark Office, U.S. Dep't of Commerce, Manual of Patent Examining
Procedure app. R § 10.64 (7th ed. 1998) ("Avoiding acquisition of interest
in litigation or proceeding before the [Patent and Trademark] Office").
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 a patent attorney. Accordingly, we conclude that the district court
did not err in rejecting Kimberly-Clark's section 102(f) invalidity
defense. We therefore need not assess the remaining evidence presented by
Kimberly-Clark, or reach the parties' arguments relating to 35 U.S.C. § 256
<https://casetext.com/statute/united-states-code/title-35-patents/part-iii-patents-and-protection-of-patent-rights/chapter-25-amendment-and-correction-of-patents/section-256-correction-of-named-inventor>
."

*Solomon v. Kimberly-Clark Corp.*, 216 F.3d 1372, 1382 (Fed. Cir. 2000)
I don't read that as precluding a practitioner from being an inventor. In
Solomon, the accused infringer suggested that the inventor had not actually
conceived of the claimed invention (because of delta between what the
inventor said she had invented and what the spec and claims said), and that
therefore someone else must have conceived of the claimed invention and
that that someone might have been the patent attorney. All the court said
was, *We're not going to presume that a perceived or asserted discrepancy
between (a) what * *in deposition * *the inventor said she invented and (b)
what was described and claimed, is due to a contribution from the patent
attorney, because we don't presume it's the patent attorney's job to invent
and we presume that patent attorneys don't invent in the course of their
work*.

Several years ago I was asked to assist an Israeli patent practitioner who
had listed himself as an inventor (alongside the main inventors) on a PCT
application (and had assigned all his rights, at no extra charge, to the
applicant). The applicant had recently hired a new patent manager who
(unwisely) moved the still-pending PCT to a different firm, where one of
the partners then tried to get the original practitioner to confirm in
writing that he should be removed from the listing of inventors. Apart from
the new guy being wrong on the law and the facts, it was also in my view
unwise: once the original practitioner's name was on the published PCT as
an inventor, taking it off would only invite additional scrutiny down the
road. But it did give the new firm a chance to bill the applicant for
unnecessary work, and make the applicant's patent manager feel like he had
done something right by moving the file. I wrote about this case here
<https://www.iliplaw.com/americaisrael_patent_law/2019/01/another-example-of-how-to-fleece-clients-without-them-knowing-part-1.html>,
here
<https://www.iliplaw.com/americaisrael_patent_law/2019/01/another-example-of-how-to-fleece-clients-without-them-knowing-part-2.html>,
here
<https://www.iliplaw.com/americaisrael_patent_law/2019/01/another-example-of-how-to-fleece-clients-without-them-knowing-part-3.html>
and here
<https://www.iliplaw.com/americaisrael_patent_law/2019/01/addedum-to-another-example-of-how-to-fleece-clients-without-them-knowing-part-3.html>
.


On Tue, Dec 10, 2024 at 1:26 PM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

>
>
> 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.
>
>

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