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[dayzman]

Hi

It seems that if an inventor hires an attorney to prepare and file a patent, the inventor would need to provide a rather detailed description of the invention before entering a contract. Is it typical or part of the attorney's professional conduct for him/her to advice the client if he/she thinks the invention might not be patentable, e.g., it might fail the obviousness criteria? What if the attorney is given a list of related prior art?

Thanks

[bleedingpen]

Hi

It seems that if an inventor hires an attorney to prepare and file a patent, the inventor would need to provide a rather detailed description of the invention before entering a contract. Is it typical or part of the attorney's professional conduct for him/her to advice the client if he/she thinks the invention might not be patentable, e.g., it might fail the obviousness criteria? What if the attorney is given a list of related prior art?

Thanks

As a general rule, when we have "inventors" (people not tied to a larger company) ask about a patent application, we provide an off-the-cuff patentability opinion based on their disclosure.  If the client wants a more in-depth opinion, we have to send that out to a searcher and charge for it.

[Yak]

I can only speak for where I work, but when we receive an invention disclosure from an independent inventor the process basically has 3 phases.
Phase 1 - The initial invention disclosure is reviewed by senior staff to determine whether the invention meets a minimal level of novelty or feasibility.  For instance, if the inventor wants to patent a perpetual motion machine (not enabled) or a Velcro strap with no clear novel features (not novel); then we tell inventor that our recommendation is not to move forward.  If the invention passes the initial review we offer Phase 2 and if we need more disclosure than was given initially we request it.
Phase 2 - We conduct a prior art search based upon the invention disclosure and provide a professional opinion of patentability. This opinion goes into whether we feel the invention may be deemed obvious or non-novel based upon the prior art we discovered.  If the opinion is positive we offer Phase 3.  If the opinion is not positive then the inventor can decide whether they want to re-imagine or redesign the invention away from the prior art found or move forward knowing the risks of an obvious rejection.
Phase 3 - We prepare, file, and prosecute the invention based upon the inventor's disclosure.  We offer additional assistance in reducing the invention to practice as well. 

[BobRoberts]

Hi Dayzman,

"It seems that if an inventor hires an attorney to prepare and file a patent, the inventor would need to provide a rather detailed description of the invention before entering a contract. Is it typical or part of the attorney's professional conduct for him/her to advice the client if he/she thinks the invention might not be patentable, e.g., it might fail the obviousness criteria? What if the attorney is given a list of related prior art?"

Was it part of the Engagement Agreement that a patentability opinion be provided?  Was a patentability opinion offered (for a fee) and turned-down?  How long was the prior art list- 3 pieces of art, or 100?  And was it part of the engagement that the list be reviewed in detail?  How have you determined that the invention is obvious?-  Remember that hindsight is always 20/20.

Whether something is patentable is not always a "black-and-white" determination, and often falls in a grey area, especially regarding obviousness.  So with this in mind, almost all inventions might not be patentable.  A patent attorney has a duty not to file an application that is believed to be unpatentable.  If the invention falls into the "grey area" of patentability, and still filed the application, then I wouldn't think that the attorney violated any duty.  That being said, when a client provides  prior art to me (or if I know of some prior art) that to me substantially affects patentability,  and even if no patentability opinion is requested, I still would mention generally that questions about patentability could exist and if it is desired to proceed with the application I will, otherwise I can provide a patentability opinion or cease work on the case.  Required from a professional standpoint, probably not, but I do so anyways. 

Good luck.

[JimIvey]

Just to tease out a subtlety, please note that "opinion" means something significant and weighty in the law.  Accordingly, providing an "opinion" is usually a large and expensive task and generally won't be done without the client asking for it.

However, if I happen to know of prior art that anticipates the invention, I say so.  The inventor will be required to sign a declaration that the inventor believes the invention to be novel (though not in those words) and the declaration is signed under penalty of perjury.  I won't allow a client to perjure themselves.  If they want to do that, they'll have to work with someone else.

Regards.