[Patentpractice] Patent lawyer as inventor on client's application?
Richard Straussman
rstraussman at weitzmanip.com
Tue Dec 10 17:40:05 UTC 2024
If the Inventor's answer after trying to get recognition in multiple
ways (and not surprisingly, given his background) answered, "Do you
envision that this could be … ?" would have been "Heck no. Never in a
million years!" Then, in my view, that should have been the end of it.
The attorney should not have contributed that entirely different
innovation. I agree that would be true inventing and well outside of
the attorney's role.
That is in sharp contrast to a circumstance where, for example, a part
is linearly moved by a mechanical actuator and the inventor (who knows
nothing about electronics) is asked whether a solenoid could be used in
place of the mechanical movement, but the attorney knows they are
interchangeable and it is a trivial, non-inventive, swap. Irrespective
of what the inventor says, I would include the solenoid, or state
something like, "while the linear actuator is shown as a mechanical
device, the important aspect is the linear movement, not the device used
to supply it, so it is to be appreciated that suitable electronic or
other devices that can provide the same linear movement can
alternatively be used."
*Richard Straussman**
* *Senior Counsel*
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On 12/10/2024 12:25 PM, Patent Lawyer via Patentpractice wrote:
>
> Thanks all for the responses and interesting discussion.
>
> First, I will follow David Boundy's guidance.
>
> But let me give a little more context in light of some other responses.
>
> In this case, the invention is purely 100% mechanical. It relates to
> an improvement of a device that has existed for over 100 years. The
> inventor's expertise and background are all mechanical. He has zero
> background in electrical or computer-related technology.
>
> The patent attorney has expertise and qualifications in electrical and
> computer-related technologies.
>
> During drafting, the patent attorney recognized that the 100% purely
> mechanical device could be combined with a particular type of
> electrical device. This combination is useful. But it was entirely
> out of the realm of the inventor's knowledge or technical background.
> The inventor would not have realized the problem, let alone
> contemplated the solution. In this case, the patent attorney's
> contribution was not "a particular embodiment/application/combination
> … contemplated by the inventors." The inventor's honest answer to "
> Do you envision that this could be … ?" would have been "Heck no.
> Never in a million years!"
>
> As to the question: "What's the potential advantage of naming the
> attorney as an inventor?"
>
> Well, what if ten years from now, the invention makes a bazillion
> dollars, and the attorney wants his share? Or maybe the patent
> attorney's heirs want his share?
>
> Or what if the inventor is in his 30s, and the patent attorney is 65
> years old, and the application can get special treatment in the USPTO?
>
> [I once took over the prosecution of an application that named two
> inventors, father and son. While the father had the right technical
> qualifications, I was sure he was named just to get the special "over
> 65" treatment in the USPTO.]
>
> Or what about all the arguments made here a few weeks ago about
> over-inclusion of inventors rather than under-inclusion? [Per Carl's
> recent email]
>
> But again, I will follow Boundy's advice.
>
> P.S. Last year, I had dinner with an ex and an old client. I'd worked
> with him in 1994-95, and got him 5 or 6 patents. His invention (at a
> small company) made the company a lot of money through patent
> enforcement and licensing. At one point in the dinner, he got very
> earnest and said he had something to get off his chest. Something he
> had felt bad about for almost 30 years. He said he always felt I
> should have been named an inventor. The breakthrough in the invention
> came from something I'd asked during one of our initial meetings. It
> gave him an insight that he'd not previously had, and it was the way
> the invention was implemented and claimed. Had I been named as an
> inventor, I would just have assigned the invention to the client
> anyway. Maybe it would have been nice to be named on those patents,
> but that is just about vanity. I told him it was no big deal and I
> still paid for dinner.
>
> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com>
> *Date: *Tuesday, December 10, 2024 at 10:05 AM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> *Cc: *David Boundy <PatentProcedure at gmail.com>
> *Subject: *Re: [Patentpractice] Patent lawyer as inventor on client's
> application?
>
> 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 <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_-3273223265054125256_m_81799952662547>
> 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_81799952662547>
>
> ● When a statement of fact made solely as
> /attorney argument/ is erroneous without
> intent, it’s not inequitable conduct.^[3]
> <#m_-3273223265054125256_m_81799952662547>
> 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_81799952662547>
>
> … 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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