Naming Yourself as a Co-Inventor or Alone Patenting an Improvement on a Client’s Disclosure

This is an article I wrote several years ago, but I was asked today about its subject and so thought I'd throw it up here.

I think after this, the OED came out and disciplined a lawyer for this sort of thing.

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.

4 thoughts on “Naming Yourself as a Co-Inventor or Alone Patenting an Improvement on a Client’s Disclosure

  1. 4

    I agree with the last part, but think asking questions — “does it have to be a 90 degree thingy, or will anywhere between 60 and 120 degrees work?” — is better than the lawyer putting the subject matter in.

    The OED really doesn’t like lawyers naming themselves, regardless!

  2. 3

    How about the Fred Lane case from 2011? Patent agent names self as inventor and set up corporation to compete against client… and it cites cases from 2005 and 2006, where OED has disciplined people for these sorts of things.

  3. 2

    An interesting article.

    I would say that could have been named an inventor in many of the applications I wrote. However, determining who qualifies the “inventor” is a fairly subjective process. As such, I have always erred on the side of not being an inventor (while I err on the side of inclusion for other inventors).

    I would NEVER claim inventorship after the fact, and without my testimony it would be almost impossible for someone to argue that I was an inventor (i.e., in an attempt to invalidate the patent). Had I been named an inventor, I would have assigned my rights away anyway. As such … ‘no harm, no foul.’

    IMHO — a good patent attorney should almost be an inventor. Many times, an inventor is just looking at the problem in front of him/her without thinking about how their solution to the problem could be used elsewhere. Other times, they have identified a problem and not explored the other potential solutions to that problem (with the identification of the problem being the key breakthrough).

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