[Patentpractice] Patent lawyer as inventor on client's application?
Richard Straussman
rstraussman at weitzmanip.com
Tue Dec 10 18:42:29 UTC 2024
My issue is the attorney should not be putting on their "inventor" hat
at all. If they see an extension/improvement, they should put on their
"interrogator" hat and do their damnedest to get the inventor to
acknowledge that is part of their invention. I have done that and it
may have been easier to pull teeth, but eventually they come around. If
they won't and are adamant, then that is not their invention and that is
what you have been hired to protect - not the lawyer's invention based
upon their client's. Again, the difference is highlighted with my
example below. If the lawyer knows of a trivial or straightforward
substitution that is not really inventive (e.g., merely replacing a
mechanical part with the electrical equivalent or vice versa, or certain
software with its hardware circuit equivalent or vice versa) that is
O.K. and what the lawyer is hired to apply their technical skills to do.
I realize that there is an in-between grey zone where the delineation
between lawyer and inventor is not entirely clear - and different
lawyers will use different dividing lines therewithin, but I try my
damnedest to find a line that I can live withwithin that grey zone, and
can ethically defend while doing right by the client, and stay on what I
perceive to be the non-inventor side of that line.
*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
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Roseland, NJ 07068
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On 12/10/2024 1:22 PM, David Boundy wrote:
> I disagree with Richard. /Solomon/ doesn't come right out and say it,
> but it's there a millimeter below the surface -- the client hires the
> whole lawyer, not just part, not the lawyer with the technological
> brain hemisphere removed.
> https://scholar.google.com/scholar_case?case=3060703343000303777 If
> you as the technologically trained lawyer see an improvement, disclose
> it, and claim it. I would not name myself inventor, but others could
> take a different view.
>
> I think /Solomon/ says clearly that there's no obligation to name
> yourself as an inventor. What more do you (Mr Strassman) need?
>
> The problems with naming yourself inventor are --
> (a) it's almost certain to lead to a waiver of privilege
> (b) your likelihood of being deposed goes from very low, only if
> there's already a plausibel basis for inequitable conduct, to
> certain. And once you're in the hot seat, there are very few limits
> on what you can be asked.
>
> Weigh those two risks against -- what advantage?
>
>
> On Tue, Dec 10, 2024 at 12:40 PM Richard Straussman via Patentpractice
> <patentpractice at oppedahl-lists.com> wrote:
>
> 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_6487588021621560798_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_6487588021621560798_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_6487588021621560798_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_6487588021621560798_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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> **
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> Listed as one of the world's 300 leading intellectual property
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>
> Articles at http://ssrn.com/author=2936470
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> +1 646.472.9737 <tel:%2B1%206464729737>
>
> Cambridge Technology Law LLC
> 686 Massachusetts Avenue #201, Cambridge MA 02139
> http://www.CambridgeTechLaw.com <http://www.CambridgeTechLaw.com>
> http://www.linkedin.com/in/DavidBoundy
>
> mailing address
> PO Box 590638
> Newton MA 02459
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> This communication is a confidential attorney-client communication
> intended only for the person named above or an authorized
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