Comments on: Inventive patent attorneys

By: Duncan

Duncan — Wed, 09 Jul 2008 13:41:25 +0000

Mike – thanks very much, and welcome.
This all makes a lot of sense. An interesting aspect is the attorney owning an interest in the client’s invention. Presumably this would / could be readily dealt with by a change in retainer agreements so that all relevant IP (perhaps best limited to patentable IP) is automatically transferred to the client? Shouldn’t this be standard anyway – and doesn’t it deal with a lot of the other issues as well?

By: Mike Kondoudis

Mike Kondoudis — Wed, 09 Jul 2008 13:34:54 +0000

I agree with your characterization of Solomon v. Kimberly-Clark Corp. It is not impossible to invalidate a patent based on this ground, but is difficult (as it should be).
In my opinion, assisting an inventor in preparing an application should not rise to the level of inventorship. To find otherwise would lead to absurd results including: attorneys having interests in their clients patents (always an ethical nightmare); automatic allegations of invalidity in every Answer (based on incorrect inventorship); automatic allegations of inequitable conduct (resulting from erroneous declarations); and an impediment to the free flow of information between the inventor and his/her attorney.

By: Duncan

Duncan — Fri, 04 Jul 2008 12:12:47 +0000

Great, thanks Jackie

By: Jackie Hutter

Jackie Hutter — Fri, 04 Jul 2008 12:09:14 +0000

That’s the case, Duncan. And, your characterization is correct. The context from which my law firm partners received this case was that our good patent drafting efforts were just that, and we didn’t need to inject ourselves into inventorship. Of course, in the US, patent litigators bring up all sorts of arguments, some winnable and some not. What is sure is that issues like this will continue to keep US lawyers up at night worrying about malpractice liability, which is one of the main reasons I let others do the drafting these days! Off to Patently-O as you suggest.