Patent Ethics: Is it Ethical for the Patent Attorney to list themselves as an inventor?

The hallmark of a sleazy patent attorney is one who lists themselves as an “inventor” on patents that they write for a client.

There is the “legal” definition of an inventor, and there is the realistic, practical definition.

The legal definition of a co-inventor is anyone who contributes at least one limitation to one claim on a patent application. But there are other considerations to consider.

In a discussion with an inventor or group of inventors, a patent attorney’s job is to extract the invention from the inventor. Often, this involves quite a bit of back and forth. A good patent attorney will help the inventor look at their invention from several different angles. This helps the patent attorney make sure they understand the invention, but often, this will help the inventor expand their definition of the invention.

A good patent attorney will work with the inventor to expand the scope of the invention. Sometimes the invention is expanded to include a version that had not been considered, and sometimes the invention may be re-cast into a different form entirely. By asking questions (and even making suggestions), the patent attorney can help the inventor understand (and express) the nuances of the invention so that the patent attorney can do a good job of writing claims, then documenting those claims in the specification.

In some cases, a patent attorney may “fill in the gaps” of the technology, and even may include lots of material that did not come from the inventor’s mouth. That does not make them an inventor. It makes them a good patent attorney.

Just because an outside counsel patent attorney suggests an ‘improvement’ to an invention does not make the patent attorney an inventor.

Patent attorneys should always help the inventor expand their invention. By asking probing questions, suggesting possible solutions, and forcing the inventor to rethink their invention, a good patent attorney provides much more value than the ‘scrivener’ who just writes down what the inventor says.

But listing yourself as an inventor when you are the patent attorney? NEVER.

Not only are you stealing their invention (by claiming to be an ‘inventor’ and therefore taking an ownership stake), you are diminishing your inventor’s contribution. You are also creating a conflict of interest that limits your ability to keep working for that client, and you are violating 37 CFR 11.108.

To be clear: any patent attorney who names themselves as an inventor on a client’s patent application is doing an unmistakable disservice to their client.

When an outside counsel patent attorney lists themselves as an inventor it is theft, pure and simple.

Inventorship comes with ownership. Any time two or more inventors are listed as inventors, each of them own an undivided interest in the patent.

When working for a client, by naming themselves as an ‘inventor’, a patent attorney takes ownership of a patent application. The patent attorney knowingly, willingly, and intentionally created a situation where the patent attorney has an undivided interest in an asset they were hired to protect.

There is no clearer way of violating a client’s trust than to grab an unauthorized ownership interest in one of the most important assets a client may have.

In this scenario, I am assuming that there is not an agreement between the patent attorney and the client for the patent attorney to provide engineering/invention services in addition to being a patent attorney. (That creates a whole other set of conflicts of interests.)

An attorney must protect the client’s confidences. Once exposed to the client’s secrets in the form of the invention, the attorney MUST protect that confidence. By adding themselves as an inventor, they effectively steal an ownership share from the client, which is unethical.

A patent attorney knows how to be legally classified as an inventor – and makes an intentional and deliberate choice to list themselves as an inventor.

Any outside counsel patent attorney who lists themselves as an inventor makes a deliberate and conscious choice to do so.

Every patent attorney knows the legal definition of an inventor. Any patent attorney who works with their client and suggests an improvement to the client’s intellectual property knows exactly what they are doing. They are assisting their clients in expanding the definition of their invention.

The “strict” legal definition of an inventor is someone who contributes one limitation to one claim. Sleazy patent attorneys often hang their hat on this thin definition – and use it to justify stealing from their clients.

The patent attorney who lists themselves as an inventor intentionally and deliberately adds ‘their’ limitation to the claim set. The patent attorney probably could – but chose not to – skip ‘their’ limitation and thereby not ‘need’ to add ‘their’ limitation.

In other words, the patent attorney who lists themselves as inventors has control over what goes in the patent application and the claims, and their choice of adding themselves is always deliberate and intentional.

Listing yourself as an inventor creates a conflict of interest in violation of 37 CFR 11.108.

US law is very clear: an invention is owned by the inventor. When a patent attorney lists themselves as an inventor, that attorney acquires an ownership interest in the patent.

At the very second that a patent attorney lists themselves as an inventor on a client’s patent, they have ownership of the client’s asset, and that ownership is flatly adverse to the client.

Rule 11.108 states:

• (a) A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:
  • (1) The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;
  • (2) The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and
  • (3) The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner’s role in the transaction, including whether the practitioner is representing the client in the transaction.

If an inventor-patent attorney gives informed consent in writing that they will assume an undivided ownership of a client’s patent beforehand – and the client has the opportunity to seek advice of independent counsel – maybe listing the patent attorney as an inventor passes scrutiny under Rule 11.108.

But that is not everything that needs to be considered.

An assignment does not make the problem go away.

There is an ongoing conflict of interest when a patent attorney is listed as a co-inventor, even if the attorney assigns their rights to the client.

A simple conflict of interest arises when the patent attorney amends the claims of the patent during prosecution. At that time, the patent attorney must re-assess the inventorship of multiple co-inventors to determine who should be added/removed as inventors.

The conflict of interest exists when the patent attorney has to decide what is the best thing for the client or the best thing for the patent attorney. Because listing themselves as an inventor is almost always an ego-driven action on the part of the attorney, the attorney will likely keep their so-called contribution in the claims so that they keep their name on the patent.

Is this trivial? Maybe. But the conflict gets worse – much worse – if the patent is ever litigated.

Inventorship problems in litigation.

One of the easiest ways to invalidate a patent is through inventorship issues, especially situations where fraud or deceptive intent is present.

Inventorship is one of the biggest accomplishments in someone’s life. At their funeral, a eulogy will include the number of patents someone has. For engineers, being listed as an inventor is an achievement of a lifetime.

As an inventor myself in large/small corporations and as a patent attorney, I have seen very bad behavior by ‘inventors’ in corporations. Most corporations give bonuses to inventors, as well as brass plaques or other mementos of the accomplishments.

Being named as an inventor is a very, very big deal to a lot of people.

One of the biggest sources of frustration for inventors is having to share inventorship with undeserving colleagues (or unscrupulous patent attorneys).

An inventor who comes up with the core idea often feels like – and deserves – to get the credit. There are many, many stories of inventors who have a meeting talking about something new and other people want to be included as inventors.

Inventors are a weird bunch, and they have been known to hold grudges – forever.

During the course of litigation, an attorney calls an inventor who has since left the company. If that inventor still harbors a grudge against someone also listed as an inventor, the attorney just needs to get that inventor to start badmouthing another inventor. If it sounds like an inventor was included and it was fraudulent, the patent can easily be invalidated.

I guarantee that when a patent attorney adds their name to a patent, the real inventors are furious. The inventors probably do not say anything at the time, but they will harbor a resentment. Years later when the patent is litigated, it is very easy for the real inventor to be resentful of their patent attorney taking some of ‘their’ credit – and produce a tirade of accusations about the dishonest patent attorney who put their name on ‘their’ patent.

An attorney’s assignment probably fails for want of consideration – or they are padding the bill without authorization.

Every assignment of a patent to a patent owner must have some kind of consideration. Normally, employees sign a Proprietary Information and Inventions Agreement when they are hired. In exchange for their salary or other payment, the employee assigns their rights of their inventions to the company.

Unless the attorney’s engagement letter specifically states that the attorney will sign over the rights to the attorney’s inventions to the client, there is no legal obligation (and no consideration) if the attorney chooses to freely assign their invention to their client.

In most cases, when an attorney lists themselves as an inventor, they probably do not make a big show of it in the heat of discussion with the inventor. It happens after the fact, when the attorney is drafting the claims for the patent application.

If the attorney adds their name as an inventor, the attorney has ownership in the invention. 35 USC 262:

In the absence of any agreement to the contrary, . . each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, . . . without the consent of and without accounting to the other owners.

If there is no PIIA signed by an employee, a company cannot force the employee to sign an assignment without giving the employee some ‘consideration’ (typically some amount of money, maybe $50 or $500). The employee might already be receiving a salary, but because there is no written assignment signed ahead of time, the employee must be given additional consideration – money – when they sign their assignment.

In the same way, a patent attorney is hired to write a patent application, not to invent. If the patent attorney signs over their ‘invention’ to the client, the patent attorney must be given additional money as consideration.

In this light, the patent attorney’s listing as an ‘inventor’ results in invalidating the assignment for lack of consideration. Or it might just be a way for the patent attorney to pad the bill if they do insist on getting paid for their ‘invention.’

Does the attorney have the obligation to assign their ‘invention’ to their client?

Attorney engagement letters do not obligate an attorney to assign their ‘inventions’ to their clients. The reason for this is simple: the attorney might take on a different client in the same field several years later, and they cannot ‘invent’ for that client when they have a previous agreement to assign to their previous client.

More importantly, does the attorney have an obligation to assign their invention to their law firm?

An attorney in a firm has an obligation to their partners and the firm as a whole. However, when a sleazy patent attorney lists themselves as an inventor on a client’s patent application, that attorney has the personal ownership of the patent, not the firm. This violates the attorney’s obligation to their law firm.

Most patent law firms are generally ethical and would never even consider that their attorneys would be taking ownership interests in their client’s patents. However, when that does happen, the “inventor” attorney must fulfill their obligation to the firm. I have never heard of a patent law firm having an agreement that transfers the attorney’s new ownership in the patent to the rest of the firm.

However, the attorney’s first obligation is to their law firm, not their client. An invention created by an attorney while working at a law firm is arguably owned by the law firm.

The question is: does the law firm have an obligation to assign to the client? And are there documents in place that allows that assignment to happen?

An attorney who ‘invents’ has an ongoing duty to comply with disclosure – which can create a conflict of interest.

Even if the attorney changes firms or starts working with a competitor to their client, the attorney must comply with the ongoing disclosure requirements of 37 CFR 1.56.

Normally, a patent attorney’s duty to disclose stops when the attorney no longer represents a client. However, if the patent attorney named themselves as an ‘inventor’, this duty does not go away.

Take a situation where an attorney works for a startup company and ‘invents’ one limitation of one claim. The attorney is acting in two distinct modes: one as an attorney and one as an inventor.

The attorney’s obligation to disclose information material to patentability essentially stops when the attorney no longer represents the client. However, the person’s duty – as an inventor – does not stop.

In our hypothetical, let’s say the startup company fails and declares bankruptcy. The patents and patent applications are transferred to a receiver, who sells the patents to a patent troll with their own attorneys.

Our ‘inventor’/patent attorney seeks out new clients in a similar field and begins working for them. As an attorney, our patent attorney learns of new information that may be material to the patentability of their previous client’s patent application – one where the attorney is listed as an inventor.

The current client is anxious to keep the information quiet because they want the ammunition to invalidate the previous startup’s patents when the patent trolls assert their patents.

What does the attorney do? There is a clear, unmistakable conflict of interest.

The attorney must disclose the information to the USPTO under 37 CFR 1.56 or risk committing malpractice and losing their license.

At the same time, the attorney must withhold the information as attorney/client privileged information, as it is critical for invalidating the patent troll’s patents. Any disclosure will be committing malpractice and losing their license.