Dicta about lawyers never being inventors on their clients’ applications

Dennis has blogged about the Stoneeagle Serv., Inc. v.  Gillman decision  more fully on the main page, but I wanted to drill down on the passage a bit, as I think it’s a little too simplistic (all due respect to my former boss, Chief Judge Rader!).  Here is the observation:

This court has stated that assistance in reducing an invention to practice generally does not contribute to inventorship. E.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460, 1465 (Fed. Cir. 1998). In this case, the most favorable inference from the record in favor of StoneEagle shows only that Gillman assisted in construc- tively reducing an invention to practice. See Solvay S.A. v. Honeywell Int’l, Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010). Those activities confer no more rights of inventor- ship than activities in furtherance of an actual reduction to practice. Otherwise, patent attorneys and patent agents would be co-inventors on nearly every patent. Of course, this proposition cannot be correct.

I agree that writing down an already-conceived invention does not make one an inventor, but I also know that sometimes patent agents and practitioners do far more than just that, sometimes in fact conceiving of patentable subject matter.  I wrote an article about whether and if so when a practitioner must name himself as an inventor (and if so, what he has to do) a while back, called “Save a Little Room for Me.”  If you want a copy email me at Mercer — I have it somewhere but couldn’t find it just now.

 

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “Dicta about lawyers never being inventors on their clients’ applications

    1. 2.1

      Judge Rader says that if the normal activities of an attorney constituted invention, then the attorney’s name would appear on “nearly every patent.”

      Judge Rader’s statement doesn’t preclude the possibility that an attorney might sometimes contribute to an invention, and is nothing at all like an assertion that the attorney’s name should never be on the patent. At most, you can infer that you wouldn’t generally expect to see the attorney’s name on the patent, which is quite different than “never.”

  1. 1

    It seems to me that what Judge Rader actually said is quite different than what your title suggests.

Comments are closed.