Naming Yourself as an Inventor

Following up to comments and requests below…  I wrote an article about this a while ago, which you can find here (save a little room).  In addition, the case law and analysis is also updated and dealt with in our book on prosecution ethics).  Finally, then-Director Moatz’s paper is here (MoatzPTO Day), where he talks about it.  There is at least one subsequent disciplinary case, too, that I recall, but couldn’t find.

Here are two OED cases related to this issue:

 

http://e-foia.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0697_DIS_2012-02-08

http://e-foia.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0065_DIS_2004-10-20

 

And some more:

 

In re Watkins, (Dir. U.S. Pat. & Trademark Off. Proc. No. D06-04 June 18, 2008); Va. State B. v. Lynt, in the Circuit Court for the City of Alexandria, Va. (Chancery No. CH04001593, Sept. 15, 2004), related proceeding, In re Lynt (Dir. U.S. Pat. & Trademark Off. Proc. No. D05-05 undated).

22 thoughts on “Naming Yourself as an Inventor

  1. 3

    The camera invention is interesting. The idea for the invention came from the work for a client, but the invention appears to be independent and distinct and presumably patentable.

    Now, if the attorney waited until his client’s patent application was published, he could file a new application directed to the camera and name himself as sole inventor. I see nothing wrong with that … does anyone disagree?

    The problem is what is his duty until the client’s application is published? I think that if he can describe the camera invention without disclosing any of the secret material from the client’s application, he might do that.

    A factor here is that 102(f) is repealed. The knowledge of the client’s invention is irrelevant to the patentability of the camera invention. Such is not prior art to the attorney until published.

    The obligation to the client I thinks ends when the other embodiments are patentability distinct such that claims to them would be subject to a restriction and where the named inventor invented none of the that subject matter. But if the embodiments are obvious variations of the disclosed subject matter, the attorney has invented nothing. He should not name himself an inventor — but what if that subject matter ends up being the sole novelty? I have had fellow attorneys tell me that the only novelty in a patent owned by a client was matter they contributed.

    1. 3.1

      Ned: A good data point on how common this issue is.
      In your example, waiting until the client’s application is published still uses the clients confidential information to inform a filing decision to the benefit of the attorney, and the detriment of the client. His duty until the clients application is published is to avoid using his confidential knowledge for his own benefit.
      I agree that at some point, the invention of the attorney, though spurred on by the client, is so remote that the attorney might have no obligations to the client, it will be more common that, even though a restriction might be appropriate, the attorney invention is so closely tied to the clients invention, and would not have arisen but for the attorney-client relationship.
      Even contributors of elements seen as obvious variants are inventors. If it shows up in the claims as a distinguishing element, the contributor is likely an inventor.

      1. 3.1.1

        DC, if one contributes obvious variations, one is not an inventor. There is a Supreme Court case exactly on point.

        It is just on filing, one really does not, at times, know what is inventive and what is not. One identifies all possible inventors. At the end of the day, it will be the rare case where any identified inventor is deleted from the named inventors when their contribution is found in the prior art.

        1. 3.1.1.1

          Obvious variant vis-a-vis the prior art, or obvious variant vis-a-vis the other claims you drafted?

          Also, in response to your comment “I have had fellow attorneys tell me that the only novelty in a patent owned by a client was matter they contributed.” I have hear that as well. What will they say when they are deposed and asked who contributed what?

      2. 3.1.2

        inform a filing decision to the benefit of the attorney

        Items benefiting an attorney is a somewhat hackneyed view of the ethics involved.

        The notion of “not arisen but for” seems a bit harsh, seeing as no other co-inventors are faced with that criteria. And talking here of pure invention/inventor identification, step one is clear that a distinct invention has arisen, right? If indeed this can be legally classified as distinct, then what legal driver is there to say “not distinct enough?”

      3. 3.1.3

        DC, compare these two cases:

        1. Agawam Co. v. Jordan, 74 U.S. 583, 19 L. Ed. 177 (1869) – a key improvement made by an employee was not sufficient to make him a co-inventor.

        2. Collar Co. v. Van Dusen, 90 U.S. 530, 23 L. Ed. 128 (1875). A person who found a piece of material and did not know how to make it, but asked others to figure out how to make it, is non an inventor of the material for use as a collar. (Just how the repeal of 102(f) might impact this case is not known, because with the repeal, it seems immaterial that the material was “found.”)

          1. 3.1.3.1.1

            Ownership begins with inventorship, correct? (See Stanford v. Roche)

            The only way ownership comes about apart from inventorship is through a legal mechanism from the inventor to others.

            It would be looking at that legal mechanism that lawyers have the opportunity to gauge any obligatory assignments in light of fiduciary duties.

            1. 3.1.3.1.1.2

              The one word answer is not persuasive. If you feel that ownership can begin anywhere else than with inventorship, I suggest that you provide some minimal level of information, fact situation, or argument to back that up.

          2. 3.1.3.1.2

            David, I would agree if the retention of ownership of the separate invention by the patent attorney would even potentially place the attorney into an adverse position with respect to the client.

            But I think the Supreme Court has made clear that obvious variations are not inventions, and the ordinary skill of the patent attorney in drafting patent applications includes coming up with obvious variations so as to better protect the inventive concept. It would be be arrogant in the extreme in my opinion for the attorney to declare himself an inventor of an obvious variation and put himself on the patent is a coinventor.

            1. 3.1.3.1.2.1

              I can’t imagine the complexities and conflicts that could arise if the lawyer has to ask himself if his is an obvious variation. What if a restriction requirement is made and the parts the lawyer contributed to go one way, the client-only stuff the other? I hate this issue because (a) practice ignores the law (that is, lots of lawyers do in fact invent stuff in that most lawyers would name a person who contributed in the way they had as inventors); but (b) the law can’t apply to lawyers quite in that way!

              ;-)

            2. 3.1.3.1.2.2

              I can’t imagine the complexities and conflicts that could arise… I hate this issue…

              LOL – we are paid to imagine. Is that ‘hate’ or ‘love?’

        1. 3.1.3.2

          Ned: If Goulding and Winslow of Agawam walked into your office today, and gave you the exact same facts as reported in Agawam, and you drafted Goulding’s claim 4, I think you would be compelled to name Winslow as an inventor.
          Agawam cannot be squared with Ethicon v. US Surgical, 135 F.3d 1456. Given Ethicon, and the assumption that the Winslow’s drum might provide an additional basis for patentability, I see no justification for omitting Winslow as an inventor.
          Though there is “no explicit LOWER limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor” there may be a quite discernable threshold above which a person is certainly an inventor. I propose, as a working hypothesis, that this threshold is when I decide that a contribution can be argued as a basis for patentability (for example, I put that contribution into a dependent claim that might be patentable even if the parent claim(s) is not).

          1. 3.1.3.2.1

            DC, You might be right that if the feature claimed was contributed by another, he should be named. But if the claims generically cover a number of embodiments, not so.

            One of the things that I have seen done in cases of multiple contributors is to document on filing who contributed what, so that inventors can reliably be lopped off if the subject matter they contributed is no longer being claimed.

            We also see here that if a patent attorney contributed something particular, that he or she should document what they added so as to prevent claiming this added material.

            1. 3.1.3.2.1.1

              Those are all good approaches, especially avoiding explicitly reciting the contribution of an interloper with uncertain obligations to assign. As for attorney contributions, I wonder what happens when the attorney contribution becomes the preferred embodiment (I have seen it happen).

    2. 3.2

      If an idea is triggered by the disclosure of a client, I do think you have an ethical problem if the attorney files a patent naming only himself as the inventor. Part of the patent reps’ duties as an attorney/agent are to represent the best interest of the client. Setting yourself up as a competing inventor does not do that.

      Or as Prof. Hrick’s article notes: An attorney claiming the subject matter of an invention as against his client must prove that “his conception of the invention was in no way the result of confidential knowledge derived from his client.” quoting Baumgardner v. Hudson, 277 F. 552, 554.

      I don’t think you can make that statement if the invention was triggered by the client’s disclosure.

  2. 2

    In your article, you suggest a preemptive assignment, in the engagement letter, to eliminate issued arising under 35 USC 103(c). Have you ever seen an engagement letter that does that? Under the old versions of 35 USC 102 and 103, what conflict arises? Given the changes in 35 USC 102 and 103, do you still think it is necessary?

    Currently I think Dolak provides a good solution, which can also be improved. It is adequate to raise the issue in the rare case when attorney generalization or development of alternative embodiments rises to the level of invention, and address it by giving the client the option to include it or ignore it, providing an assignment immediately, disclaiming any right to additional compensation immediately, and adding it to the spec (and claiming it at the appropriate point in prosecution, which may be never or may be in a divisional). In that instance, I see no significant conflict.

    1. 2.1

      I’d have to spend time thinking about the first paragraph. With respect to Lisa’s suggestion, I’d worry the inventor might say “exclude it” but then later sue the lawyer for not claiming it. (The informed consent to not claim it would be tricky.)

      The practical solution to me remains simple: ask questions to avoid conceiving of inventions. “Could you use a rubber band instead of a spring?” “Why, yes.” “Okay, I’ll claim that for you.”

      1. 2.1.1

        Your practical solution it my preferred solution: Quiz the inventors until you tease out the invention you are thinking about. However, I try to avoid suggesting anything specific. I might ask: Do you really need a spring there? Maybe he’ll say rubber band, but maybe he’ll say peanut butter.
        I kid you not, I have had very successful inventors respond like this: Of course not, you dope-I am paying you to deal with those issues!
        For your exact example, I take the position that such generalization and variation does not rise to the level of invention: It’s my job to avoid getting tied down, to the extent that I can add enough variation within my time and budget constraints. But going with your example, assuming that the rubber band might provide an additional basis for patentability, and provide a decent work-around to the original conception, you have to add it and deal with the inventorship issues. If you had to actually suggest the rubber band, and the inventor acceded, wouldn’t you be the inventor? If you conceived of it, and then teased the same idea from the inventor, is he still the “original” inventor? (By the way, if you actually asked your question, doesn’t that mean you have not avoided conception?)

        1. 2.1.1.1

          It is a fine dance! I think if you ASK “can you use a rubber band” you’ve not conceived, if he says “yes,” but I think you’re right that if he says “no it must be a spring” and you claim “spring or rubber band” you’re an inventor (or something generic that covers both).

          This sort of thing comes up in a few areas. For example, I can’t talk to a person who is represented by counsel in a matter, but my client can. But (most authorities at least) preclude me from scripting for him what to say. But, I can say, “What do you think you should ask?” or “How will you respond if he asks you…?”

          BUT in the end if you read the whole Save a Little Room for Me article, it’s not going to be often that this is an issue…. I hope.

  3. 1

    The “not directly” qualifier in the Lynt case bothers me.

    Did not the applicant sign an oath on the application as filed – which included the camera details? Should not the applicant – at that time – spoken up?

    In the Lane case, paragraph 11 is somewhat baffling. Paragraphs 15, 18 and 20 mention “intention” – is that a mitigating factor?

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