[Patentpractice] Patent lawyer as inventor on client's application?
Richard Straussman
rstraussman at weitzmanip.com
Tue Dec 10 18:12:51 UTC 2024
The attorney can not file their own application at least because that
violates their ethical obligations involving a prohibition on using
client confidences.
To my mind, the entirely different innovation is up for grabs for
someone else who conceives of it - if anyone does - bearing in mind that
the inventor's application will be prior art to that when it publishes
as will the commercial product from the inventor, /e.g./, when in
public use or offered for sale/sold.
*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
*direct line* 973.403.9943
*main* 973.403.9940
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com
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On 12/10/2024 1:08 PM, Patent Lawyer wrote:
>
> Ok, if, “[t]he attorney should not have contributed that entirely
> different innovation,” can the attorney file their own patent
> application for that “entirely different innovation”?
>
> I know this is pushing the boundaries a bit, but I am sure this kind
> of thing has happened.
>
> From a public policy point of view, should the “entirely different
> innovation” just go away or become public domain? The client has the
> ability to commercialize the product, including the patent attorney’s
> contribution. The patent attorney does not.
>
> *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 12:41 PM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> *Cc: *Richard Straussman <rstraussman at weitzmanip.com>
> *Subject: *Re: [Patentpractice] Patent lawyer as inventor on client's
> application?
>
> 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**
> **Registered Patent Attorney**
> *Member NY, NJ & CT Bars
> *. . . . . . . . . . . . . .*
> *Weitzman Law Offices, LLC*
> *Intellectual Property Law*
> 425 Eagle Rock Avenue, Suite 401
> Roseland, NJ 07068
> *direct line*973.403.9943
> *main*973.403.9940
> *fax*973.403.9944
> *e-mail*rstraussman at weitzmanip.com
>
> *_http://www.weitzmanip.com_**_
> _*
>
>
> 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>
> <mailto:patentpractice-bounces at oppedahl-lists.com> on behalf of
> Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> <mailto:patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com>
> <mailto:patentpractice at oppedahl-lists.com>
> *Date: *Tuesday, December 10, 2024 at 10:05 AM
> *To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com>
> <mailto:patentpractice at oppedahl-lists.com>
> *Cc: *David Boundy <PatentProcedure at gmail.com>
> <mailto: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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