Inventorship and Claim Scope Decisions

< ?xml:namespace prefix ="" w />By Ronald A. Krasnow.

Do you fully use an inventorship determination for the benefit of your company or client?  Do you decide on claim scope in view of inventorship?

Consider the Federal Circuit’s decision in Lucent v. Gateway, Dell & Microsoft (decided Sept. 25, 2008 – Fed. Cir. 2007-1546, -1580).  While this case undoubtedly demonstrates that patent legislation should not be outcome driven, it contained an interesting proposed use of inventorship determinations.  In Lucent, the Court decided that claims 1 and 3 were solely owned by Lucent (because they were invented by Lucent’s employees), but that claims 2 and 4 was jointly owned by Lucent and a joint development partner under a joint development agreement.  The Court reasoned that Lucent, who was in control of prosecution, could have split up the claims into separate patents so that it solely owned the invention claimed in claims 1 and 3. (The Court unfortunately did not deal with the reality facing an attorney trying to balance patentable subject matter with inventorship and obviousness under 35 UCS 103(c).)

The Court’s reasoning, created in hindsight, raises a number of practical issues.

The first is, really, how do you make an inventorship decision in view of a joint development agreement?  For example, do you draft the patent application as broadly as the prior art will allow?  Or do you draft the claims only as broad as your company’s inventors contributions?  Can you realistically split up the claims along inventorship lines and still get past Section 103 on parallel applications?

Once the inventorship decision has been made, have you made full use of that decision to the benefit of your company or client.  Most patent attorneys focus on making sure that the patent application names the correct inventors or complying with the laws of the countries where the inventors reside.  But, the Lucent decision suggests that enforcement should also be considered at the time inventorship and claim scope decisions are made.

One other consideration is drafting the joint development agreement. The Lucent decision suggests that large companies with negotiating power might require joint development partners to not license others inside the field of joint research and development program.

On the policy side, the Federal Circuit’s reasoning logically leads to other considerations:

  1. If you draft broader claims, should there be an equitable remedy available so that the added inventor (read as joint development partner) does not gain a windfall by access to the broader claims, when it is only the narrow and more subservient claims to which it contributed? 
  2. Should reissue be afforded to allow case to be divided, to shelter the contribution of the dominant technology owner?
  3. Does the party prosecuting the patent applications have any “duty” to an omitted inventor?  For example, if claims to which the omitted inventor contributed are cancelled, or are disclaimed during post-issuance proceedings, does the omitted inventor have any claim for “waste”?

Note: Mr. Krasnow’s new book Intellectual Property Culture (Oxford University Press) was just released [Link]

7 thoughts on “Inventorship and Claim Scope Decisions

  1. 7

    We too have interpleader here in the States. Although I do not recall ever seeing it used in the situation you described. At the federal level, interpleader jurisdiction is provided by 28 USC 1335: link to

  2. 6

    Metoo, too right. If you had already drafted and filed an app, you might have found yourself receiving contradictory instructions from two law firms, telling you how to prosecute the app. Then, as the Paris Convention year draws to a close, things get really interesting, as each law firm tells you it will hold you entirely responsible, if you do what the other lawyer orders. There is just such a case, in England. It involved something called an “interpleader” petition, from the unfortunate patent attorney. Lovely word, interpleader, don’t you think?.

  3. 5

    Every situation is different. However, in the case of individuals who are joint inventors, it can be extremely dicey for an attorney to try and represent both of them. Quite often the best solution is for the two of them to establish a separate entity (e.g., an LLC) which will own the invention and any patents which may issue. The patent attorney may then represent the LLC during patent prosecution. This also allows any issues between the inventors to be taken care of at the very early stages when they are determining their respective rights and obligations with respect to the LLC (or other entity created).

    My very first clients after law school were two individuals who had jointly (so they said initially) invented something that actually appeared to have great promise (and, as I recall, a customer ready to buy lots of them). I had a great mentor who immediately informed me of the pitfalls of trying to represent two individual inventors and offered the suggestion that they set up a separate entity. I advised the two individuals accordingly, and also suggested that they each obtain their own counsel for that process. A couple of weeks later I received a call from a local attorney representing one of the inventors, and was informed that his client really was the sole inventor – he asked me to prepare a patent application accordingly. About an hour later (not kidding), I received a call from another local attorney representing the other inventor. The second attorney told me that his client really was the sole inventor, and asked if I could prepare a patent application.

    And that’s how I lost my first two clients (and, perhaps, kept myself out of trouble).

    FWIW, what I am suggesting is certainly not the only solution. For example, it is possible to jointly represent co-inventors – but, you need a rock solid waiver coupled with a full disclosure of the potential problems and, preferably, a very explicit agreement among the co-inventors as to decision-making, joint ownership, etc. In some ways, you end up in just about the same place as if the co-inventors had simply created an LLC (or similar entity) to own the patent.

  4. 4

    I think there is a “typo” in the discussion of the case: “In Lucent, the Court decided that claims 1 and 3 were solely owned by Lucent (because they were invented by Lucent’s employees), but that claims 2 and 4 was jointly owned by Lucent and a joint development partner under a joint development agreement.”

    The CAFC did NOT decide that claims 1 and 3 were solely “owned” by Lucent. Rather, the CAFC decided that claims 1 and 3 were solely invented by Lucent employees, and that claims 2 and 4 were jointly developed (per the terms of the JDA). The JDA also dictated that any jointly developed work was to be jointly owned. Therefore, since claims 2 and 4 were commingled with claims 1 and 3, the entire patent was jointly owned and Lucent lacked standing to bring an infringement suit without the joint owner as a party.

  5. 3

    N.b. the above is NOT legal advice, and even if it were, would be applicable only under the common law of an imaginary jurisdiction called Dudasia.

  6. 2

    3) … Since a lawyer is charged with representing each owner fully …

    Please review canons 4-7 of the PTO Rules for Professional Conduct. I don’t think we’re allowed to accept multiple parties as a single client. That is, we have to select _one_ of the inventors (or, more often, the assignee) as our single client to whom we owe the duties of loyalty, zealous representation, etc. Otherwise, as you indicate, insoluble conflicts are likely. For this reason, it’s important that _all_ of the inventors and the assignee know _who_ our client is. (Otherwise, the parties who think we represent them would probably have a valid action for malpractice when they finally realized that we were not representing them). Best practice may be to provide all parties a copy of the engagement letter formalizing the representation of the single party who is the client.

  7. 1

    some thoughts on the other considerations:

    1) um, no – the point about controlling the prosecution reinforces the idea that the attorney already has sufficient power to control what is claimed in the invention. Like it or not, one invention is ‘split’ equally amongst its owners and fractional splitting will only lead to more headaches
    2)what exactly is the ‘error’ proposed to be corrected by the suggested division? An interesting line of thought might be along the lines of improperly claiming more or less of what you have a right to claim. I just don’t see this thought stretching to cover a split for different inventors as the overall content is not purported to be changing.
    3) It might depend on the reason for claim cancellation. Since a lawyer is charged with representing each owner fully, if he cancels claims solely for one party or another (for example, in order to simply shelter the dominant technology owner) without providing a divisional application or sufficient representation of the other party, I would think that indeed a cause for malpractice might arise.

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