[Patentpractice] Patent lawyer as inventor on client's application?
David Boundy
PatentProcedure at gmail.com
Tue Dec 10 15:03:28 UTC 2024
Yes. Exactly and emphatically. Different facts and different case law
leads to different outcomes.
On Tue, Dec 10, 2024, 8:51 AM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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
>>>>>
>>>>> 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_-3273223265054125256_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_-3273223265054125256_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_-3273223265054125256_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_-3273223265054125256_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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>>>>> Patentpractice at oppedahl-lists.com
>>>>>
>>>>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>>>>
>>>>>
>>>>>
>>>>> --
>>>>>
>>>>>
>>>>> * [image: Cambridge Technology Law LLC]
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>>>>>
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>>>>>
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>>>>>
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>>
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