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

Tue Dec 10 12:22:24 UTC 2024

I agree with Dan, to the extent that *Solomon* *doesn't* say an attorney
can never be an inventor.

But Solomon *does* say that the attorney never *has* to be named an
inventor.

My point: legally, it's optional to go either way.  It's just that one of
the two options is all downside no upside.

On Tue, Dec 10, 2024 at 7:16 AM Dan Feigelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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://gcfagjf.r.bh.d.sendibt3.com/tr/cl/BEhXxEdT6kPiaPsn7OGMWAbUwLhgvzAKvz4sSwr1BP4yrp8ZjnCktOm_5pg_jS6rOHbVFtoVMkl7Y-IiKmx8yua6qkHDqPRq6mqACgs_AjrJTaKLO84NB-hX6z1sA9FryNlQ5bLx2sjrkF9GuqwYPS5i1cCzIR22HJHUbLrV7LukqOLWcvjiX7y5CSGT81wGOqA8gUWZw1ofYDDMkdeZlbg1QlUwzOMIOfn54HYfWcCnHVlTkP5bl8m26R-w_FraABYPdH2QhStVF1iffAIcBoRULQi7ntf3FR3ztQZE9zwQd-cd7PX9m-2LzM7tAZwTvyTNvfuE9eKFBU75J7Ips3HQEXw0yKnBvPSSv3e1leo2B1kE6HcDHbec7QORN482ZA5Hb6vKASjp6fdUfBWopErFAThJoJ0gdYSmt-dux6RLkqUsyVlCcCwuzGwvMAQqtlRUMii0VSqk7nG13WHPty2vBR50qTB4zEiFOhV-WtL2NuT5VWphnaTw-8cTQx_F9JAnpppXLb4kO5nLCVI>
> ."
>
> *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://gcfagjf.r.bh.d.sendibt3.com/tr/cl/nYvYQ2MC_5A2nrbXGGhGeauvBJ8G2Z2LGvUWBsiXEE7T8QfX08zdgjSajX8_bfX-7Q1sw9eYztFEqu1CJKI5IReuezDr3pqkAlGqto4eI16-rp922F712OMC-fIMSr13-q0XTMTMf3STih1IfVqQrFpUrWVicktJXohM-fabO_VGujT-M2XjYzz5m8wYgWhxrdN8-FDUYmqIjieNHzucB1va5RIbb6D0-FCi25PhmHAoLorSc8eft6gjzYMUT1pLloZWTBr0nL7_qQClLIQ4QvLGNDcmnVQlId84dDiJhG7ccZMsyEhZgQQ2tRcgUi921RYsM6PQ3yg-nE8uPzOPpQI6ECuoLFbC0MBOYdUqikwJPfOr1nfniqPH0JxcW_4vuO7ae91F8FSPj9qD7J6pWv3whP8Tme3byAN65655GusDO6k>,
> here
> <https://gcfagjf.r.bh.d.sendibt3.com/tr/cl/uU1LX2t3h-vp032qvw2OunVjM-GSZyUTq3vSuA_8lOEilnD6xjT8A6B3WieTZdQaTw26SxgZ1Zh1nYul524jdzKoUld2qlN7uCOBweoENsiFvBHaGZG4ztHj8PeZaUhC30lPJVwaXbnkcEKQkMKJscZMUID5adMMMA7wZU31PRAoXrgvK1RppWY3lx3YG0nJnjeLdwXCMaJ9LfGCifJqRFmFc56nihrlRd6ZkOtPM0B6CIc5cutipjgztcVdZBJE4uUAzEobtUXoOvbfFKiVe3gUkLTUwTebT1inJv-mpvI9LzZuO9uUMpbO3MANrk15y4Hn0s4natB7DMCLeJuoh4PKduNn9KCxHumS5lPngstl16nIhMruwKLtZ_KN-XMJrybV90hQrFeCfA_YDqVrC6UD-_Z90Qgelo2M8FUsuO76SPo>,
> here
> <https://gcfagjf.r.bh.d.sendibt3.com/tr/cl/Wdjk7cLuoYo9vjb-50qFYZfwgIn-dng5wF6oGCKXI-bWQOm4eJlNAyKb4TFCLDv8jFWgq4aneidGJQ34eCz7d2puMNN44nyQ_K6OG9X7y078qPbdtgOSUOR9dO3RKdGpeylgFMsSBqlC2fE93GhOS2Fm6CwNK-XApU6HOoRd51mZyQF_qpG7RMK3rDTLuhkBf5ZNtpYXIqQGElhxA3MsmnXm3_f4t7Ir2ngl0Q52d3oiQP67whrKYuvb05wansxpbFv_imSkqaKvMeorJ1CBnWUxxtTKyNzjNgLyBOgmN7eDT3W08b73EBIRkHIhfIf0eqHcL1Oyye38EUaG6EBCVBGYO_NRCPl4k3KVz7bEj-YsL5kXSMNUjWGfgx079dNp_ILIMxglQhs5Vp-tSBCXZs2uAisIW4xat4AgLDcYus4JJXE>
> and here
> <https://gcfagjf.r.bh.d.sendibt3.com/tr/cl/BJmhPwsD07ZPeejBmf_rcg6sWkc1LKl8YZOu7RlW9cvQNEpQcvlGkJQtslDkcVuTBWXaceNfb4cjWXgNfjS6ceE3_elIgzklTA_k4BZAzFWlAI1ZMQld9vrwjmcPcMZVAqKupgojqv2cf_7SPmnTINhnRGvJgaxkNFtEiESuP6FoemseAL9Km2sTbdIKOWzW1HamDRxAmtvu7R38lfEVzSjbx9QlOIaJFx9kohjw22SFtoKF2hRhUO5ofAv7q057Rh90RZRY6a3f1rrRKYgB5iW_-youwpK9ZpA2o8whz_SFNEmz37Fv9IvoM9R_Q9EhU9rMO0Br8h_PdcT58f14KOze8ZeWqmzcJKRFtOM6_mupi3BWgoXg1A7MJkopbPEUwfBwX0x7syE5tMSI4Jq9okrATv2khzmHM7SSdcXz3CktFYtQfjd-DbNWDQFnsg>
> .
>
>
> 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/
>> <https://gcfagjf.r.bh.d.sendibt3.com/tr/cl/tA75NHEjd6V48xUNCgV9k_tlYdSDWDLyNi6CR8fEUgAmX8eIyr0oITUDuYitz6rwIYFWOvp4hQQ_TdgA-cTyvorOubC_Aqvg8lJxO6zp9lUc52bIzHYlBx8LhJri46sM29J98FhfIvrKN_3E_7g_qOSzK-s7SzeLbR_QH2bU2oj4mbQ3Xixf_6IO6ljomer2VsZF6iVp3KmlZ5UdzZl5DLzwUb-1EiecIpNmO6KeUmdzFmfWT8Yte9taff7hwFdKXCOJKlOfrPTWW3po-tWQSEgyrv42ghrbaUhWtjXWDagINGv0xX-CjX6zkCzTMtu31-U9-v-HlZZHuveKL5fw>
>> 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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