[Patentpractice] Patent lawyer as inventor on client's application?
Carl Oppedahl
carl at oppedahl.com
Tue Dec 10 13:50:51 UTC 2024
While we are on this topic. It was just a few weeks ago that many
members of this listserv piled on top of each other, urging to anyone
who would listen that if you had to make a mistake with your inventor
list, it absolutely was better to commit the sin of misjoinder than
nonjoinder. That if you are going to make a mistake with your inventor
list, there are a seemingly infinite number of risks and downsides and
traps for the unwary if your mistake were to be in the direction of
failing to include some otherwise possibly deserving name on your
inventor list. That a mistake the other way (perhaps including some
name on the inventor list that might arguably not belong there) was by
far the less risky, had virtually no downsides, and did not give rise to
traps for the unwary.
And yet now (I have not been keeping close score on this) it seems that
many of the same members of this listserv are urging that no matter how
deserving the attorney might be to get included on the inventor list,
the correct next step is nonjoinder.
On 12/10/2024 8:38 AM, Jeffrey Semprebon via Patentpractice wrote:
> Where I've had this issue arise has been where, while drafting the
> application, I've seen either a way to work around the narrower claims
> based on the inventor's disclosed embodiments or a way to accomplish
> the same functional limitation with a simpler structure than used by
> the inventors (or both).
>
> Suppose that the client likes whatever modification/alternative well
> enough to put it into a dependent claim, and then during examination
> it turns out that such limitation is needed to distinguish over prior
> art found by the examiner. In that case, does failing to name the
> practitioner as inventor invite any risk if the named inventors will
> have to truthfully state during depositions that the practitioner was
> the one who thought of that limitation?
>
> -Jeff
>
> Jeffrey E. Semprebon
> Registered Patent Agent (mechanical) looking for remote work
> jesemprebon at gmail.com
> 72 Myrtle Street
> Claremont, New Hampshire 03743
>
> On Tue, Dec 10, 2024 at 7:40 AM David Boundy via Patentpractice
> <patentpractice at oppedahl-lists.com> wrote:
>
> Let me stress that. As far as I know, there are no countervailing
> benefits to be had or risks avoided by naming the agent/attorney
> as inventor. It's 100% downside. Don't do it.
>
> Another experience, I was not directly involved in the case, but I
> was in-house counsel at eSpeed during appeal phase.
> https://scholar.google.com/scholar_case?case=11175138575348740529
> (then look at the D Delaware cases). The problem was that the
> lawyers (Fish & Neave) mixed up who was wearing which hat, between
> inventors, company management, and the lawyers. That metastasized
> into a comprehensive subject matter waiver. And because of that,
> a tiny little document was produced, and that turned into
> inequitable conduct, and losing the case. eSpeed had had a
> monopoly in its market. And then it didn't.
>
> It's REALLY important to understand role pigeonholes or
> information compartmentalization, and keep everybody in their
> pigeonholes.
>
> On Tue, Dec 10, 2024 at 6:22 AM David Boundy
> <PatentProcedure at gmail.com> wrote:
>
> 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
>
> F: 202.540.8020
>
> suzannah at canadylortz.com <mailto:suzannah at canadylortz.com>
>
> www.canadylortz.com <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_8179995266254743648_m_-4972033052347162407_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_8179995266254743648_m_-4972033052347162407_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_8179995266254743648_m_-4972033052347162407_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_8179995266254743648_m_-4972033052347162407_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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>
>
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