Save a Little Room for Me: the Necessity of Naming as Inventors Practitioners Who Conceive of Claimed Subject Matter - David Hricik, Alexandra Geczi, and Zachary Thomas

• Publication year: 2004

Save a Little Room For Me: The Necessity of Naming as Inventors Practitioners Who Conceive of Claimed Subject Matterby David Hricik^*

Alexandra Geczi^** and Zachary Thomas^***

I. Introduction

This Article addresses ethical and malpractice issues arising from the fact that attorneys who prosecute patents almost inevitably add to the inventor's original disclosure to the attorney. In the course of drafting a patent application—a process in which the attorney describes, necessarily in his own words, what the client has invented—the attorney will, at minimum, contribute ideas, thoughts, and means of expression that the client had not used. The application is not a verbatim transcript of an interview with the client; it is the creation of the patent lawyer.

Merely describing what the inventor has conceived of does not an inventor make.¹ In the course of the typical prosecution, an attorney's participation in drafting the patent application will not necessitate that the attorney be named as an inventor.² But what if the practitioner conceives of patentable subject matter that the client had not? For example, suppose a person invents a disposable pantiliner and describes her invention to a practitioner. However, in the course of prosecuting the application, the attorney conceives of subject matter which the client did not.³ Do the patent laws require naming the attorney as an inventor, along with the client? If so, then what of the fact that naming the attorney as an inventor presumptively gives the attorney equal ownership of the client's patent—and thus creates an ostensible ethical issue between lawyer and client?

Our discussions with patent practitioners prove that whether a prosecuting attorney should be named as an inventor is of great concern to them, and they have devised various ways to avoid the risks they perceive to exist.⁴ Yet, the Federal Circuit and academicians have addressed this issue only once, and no formal ethics opinion addresses the ethical issues created by this common concern.⁵ On the one occasion the Federal Circuit did address this issue, almost without analysis the court stated that as a matter of law, practitioners can never be inventors.⁶

The Federal Circuit was wrong. Though correctly recognizing that a lawyer who is named along with a client as an inventor has a conflict with his client, the Federal Circuit incorrectly concluded that the consequence is that, as a matter of law, attorneys cannot be inventors. Title 35 of the United States Code ("Patent Act" or "Act") defines who must be named as an inventor⁷ and also provides that a patent is invalid if the person named on an application as the inventor did not invent the claimed subject matter himself.⁸ The Patent Office cannot by the promulgation of a rule of ethics create an exception to a federal statute. Consequently, the fact that naming an attorney as an inventor creates an ethical conflict between attorney and client does not excuse listing the attorney as an inventor, nor does it permit the client to derive claimed subject matter from the attorney in violation of the Patent Act. The Federal Circuit wrongly concluded otherwise in Solomon v. Kimberly-Clark Corp."⁹

However, under established law governing inventorship and derivation, seldom during typical patent prosecutions will an attorney actually engage in conduct that qualifies him as an inventor. There are exceptions, however.¹⁰ For that reason this Article concludes by discussing policies and procedures for attorneys to follow to reduce the likelihood of engaging in conduct that would require them to be named as inventors and to obviate the pertinent ethical issues if that circumstance arises.

II. The Relevant Law

The issues discussed in this section arise at the intersection of at least four different substantive areas of law. This Article first analyzes the substantive patent law of inventorship, derivation, and unenforceability as it pertains to those two issues. It then discusses the ownership and other rights which inure to persons named on patents as inventors. Finally, this section discusses the ethical regulations that apply to attorneys when they prosecute patents. After laying that groundwork, this section examines Solomon v. Kimberly-Clark Corp.¹¹

A. Section 116 of the Patent Act

The patent laws have long required that every "inventor," but only "inventors," be listed on an application.¹² A person who conceives of patentable subject matter—that is, useful, new, and nonobvious subject matter—which is claimed as a patent must be included on the applica-tion.¹³

The requirements of section 116 can be violated in two ways: Excluding a person who is an "inventor," or naming as an "inventor" a person who is not one.¹⁴ A person must be joined as an inventor even if he has assigned all of his ownership interest in the patent to a third party, and a person who is not an inventor cannot be named on a patent even if all ownership interest has been assigned to him.¹⁵

The requirement that every inventor, and only inventors, be named on an application seems odd, particularly given the fact that the requirement applies even when ownership has been fully assigned. However, requiring that every inventor be named, even those who will have no ownership interest in (and thus no rights respecting) the resulting patent, ensures that the quid pro quo underlying the patent system is fulfilled. That is, under the U.S. system, every person who discloses how to make and use a new, useful, and nonobvious invention is entitled, in exchange, to receive a property right from the government, which allows that person to exclude others from practicing that invention for a limited period of time.¹⁶ Every person who is an inventor must disclose all information material to patentability to the Patent Office.¹⁷ Thus, even inventors who have assigned their property rights to others must be named in an application to ensure that the "consideration" the government receives in exchange for the grant of the patent is complete.

This section next discusses the definition of "inventor" and why excluding an inventor is treated more harshly than incorrectly naming as an inventor a person who does not qualify as one. This body of case law arises under sections 116 and 256 of Title 35 of the United States Code¹⁸ and also arises in connection with interference proceedings.¹⁹ Understanding when a person is an inventor, and why it is better in close questions to join a person as an inventor rather than to leave him off, is important to understanding the issues an attorney must confront when considering whether he must name himself as an inventor.

Generally, a person is the inventor of the subject matter of a claimed invention if he conceives of it.²⁰ Conception is often referred to as the

"touchstone of inventorship."²¹ When one person is involved, the issues are fairly simple. A person who conceives of a new recipe for cookies is the sole inventor of that claimed recipe. Only when the named inventor prosecutes the application in his own name²² is there no possibility of joint inventorship arising.

When more than one person is involved in the conception of an invention, the issue of whether one or both persons is an inventor, and if so, of what subject matter, becomes more complex. Particularly in collaborative work environments in high technology arenas, having several persons involved in the development of the subject matter of a particular patent is common.²³

The patent laws were recently amended to accommodate the modern inter-enterprise method of research and development. Until 1984 to be an inventor a person "had to jointly conceive and contribute substantially the same to each element of the invention claimed . . . ."²⁴ This was known as the "all claims" rule.²⁵ The "all claims" rule was widely criticized for leading to inequitable results.²⁶

In response the law was amended in 1984 specifically to relax the requirements for inventorship.²⁷ Section 116 as so amended now provides in part:

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.²⁸

While the "all claims" rule was eliminated by this amendment, "[f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting."²⁹

The operation of revised section 116 is easy to illustrate. Under section 116, as amended, if one person conceives of a cookie recipe and a second person later recognizes that adding wombat meat will enhance the flavor, then both persons are joint inventors if that invention is claimed in a single patent.³⁰

Because patents may contain more than one claim,³¹ one claim could cover the original cookie recipe, and a second claim (most likely a dependent claim)³² could cover the recipe with wombat meat. Under those circumstances, the first person would be the sole inventor of the claim covering the original recipe, and both people would be co-inventors of the claim covering the original recipe with wombat meat. However, as a result of the 1984 amendment of section 116, both inventors could be named on one patent with both claims so long as there was some collaboration between them. In contrast, under the "all claims" rule, a patent with both claims would have been invalid because each named inventor did not contribute equally to all claims.

However, some measure of collaboration is still required under the amended rule.³³ As a consequence, two people who have...