[Patentpractice] Patent lawyer as inventor on client's application?
Judith S
judith.a.s at gmail.com
Tue Dec 10 23:02:02 UTC 2024
That reminds me of the story of Scott C. Harris formerly of Fish and
Richardson, the least ethical patent attorney I've ever heard of.
https://www.techdirt.com/2007/10/19/patent-troll-attorney-licensed-patents-to-be-used-against-his-own-firms-clients/
It appears he's still licensed & runs a solo shop.
Judith
On Tue, Dec 10, 2024 at 10:12 AM Richard Straussman via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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
>
>
> *http://www.weitzmanip.com <http://www.weitzmanip.com/> *
>
>
>
> 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>
> <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice
> Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
> *Date: *Tuesday, December 10, 2024 at 12:41 PM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Cc: *Richard Straussman <rstraussman at weitzmanip.com>
> <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 <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>
> <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice
> Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
> *Date: *Tuesday, December 10, 2024 at 10:05 AM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Cc: *David Boundy <PatentProcedure at gmail.com> <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
>
> Confidentiality Notice: This message is being sent by or on behalf of a
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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_646227449012351987_m_-7330431047237845559_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_646227449012351987_m_-7330431047237845559_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_646227449012351987_m_-7330431047237845559_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_646227449012351987_m_-7330431047237845559_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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