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[TaiwanIP]

Here is an interesting quote from the link provided below:

As a default rule, a patent attorney or agent is neither an inventor nor an owner. While
drafting a patent application and/or maintaining a patent through the United States Patent &
Trademark Office requires intimate knowledge and understanding of the invention at hand, it
does not rise to the level of an inventive contribution. In Solomon v. Kimberly-Clark Corp., an
alleged infringer attempted to invalidate a patent under 35 U.S.C. 102(f) for incorrect
inventorship, claiming the patent attorney was the true inventor. The Federal Circuit ostensibly
concluded that, as a matter of law, a patent attorney can never be an inventor in a patent he is
prosecuting.4 This is because a patent attorney’s role is to help his client define its invention to
obtain maximum patent coverage, a role that should not force the patent attorney to compete with
the client or force it to assert inventorship as a result of representing the client.5 As for patent
ownership, a patent attorney may receive a reasonable contingent interest in the patent as
payment for his services.6 Absent such an agreement, however, the patent attorney has no
ownership interest in the patent.

http://www.hollandhart.com/articles/InventorshipWhatHappens.pdf
The underlying reasons for the basic principle that “a patent attorney can never be an inventor in a patent he is prosecuting” seem very reasonable to me. But can we take this one step further and interpret this also to mean that, as patent attorneys and agents, we have free reign as far as adding as many alternative embodiments, etc. as we like, since doing so would be viewed as helping our “client define its invention to obtain maximum patent coverage”? Surely there must be limits but I am not aware of any rules, court rulings, etc. that address this issue other than Solomon v. Kimberly-Clark Corp. mentioned above. 

[bleedingpen]

I am not sure that the CAFC held as a matter of law that a patent attorney cannot be an inventor in a patent that he is prosecuting. 

That sounds stupid while I re-read what was just written. 

[LivingItUp]

Of course a patent attorney can be an inventor in an application he is prosecuting. 

What you quoted is saying that a patent attorney does not earn inventorship, just because they prosecute an application on behalf of another person -- the inventor.

[JimIvey]

While I don't have authority in front of me, I believe that one's role as attorney does not disqualify one from being an inventor.

First, we're smart people and can invent our own things and file pro se if we like.

Second, I've been involved in startups in which my role was dual -- attorney and engineer.  I've been named on several application (though, I don't know if any have been published).

Third, even when limited to the role of attorney (agent), it's entirely plausible to contribute something inventive to an application.  In trying to come up with work-arounds that you'd want to cover in a patent application, it's not uncommon to think of an embodiment the inventor(s) didn't think of.  I've had at least one client say, "Yeah, that's a viable work-around.  In fact, you should claim it."  

So, you claim a specific variation that you thought of and the "inventor(s)" didn't.  Do you name yourself as an inventor?  I say you have no choice but to name yourself.  And, you should explain to the client exactly what you're doing and why and offer to assign your rights in the application for no extra cost.  I say "no extra cost" instead of "free" because consideration is required.  I consider the continued goodwill in the business relationship to be adequate consideration.

In my experience years ago, further investigation found that one of the other inventors (named, but not directly involved with my drafting of the application) had already thought of that embodiment and so I was duly removed from the application.  And, I was very relieved.

Regards.

P.S.  While it wasn't immediately clear to me from the quote in the OP, I think LivingItUp got it right.

[Oh, Crud]

Of course a patent attorney can be an inventor in an application he is prosecuting. 

What you quoted is saying that a patent attorney does not earn inventorship, just because they prosecute an application on behalf of another person -- the inventor.

I have read that case (long time ago) and the website quoted does not do a good job of describing it.  What happened was the inventor had a mere sketch of an idea and the patent attorney did a really great job of fleshing it out and enabling it, added a bunch of embodiments, etc.  It was not crazy to suggest maybe the patent attorney should have been an inventor.  But it was (IMHO) not a good defense in any event, because don't you need some sort of willfulness to invalidate based on a missing inventor?  I.e., even if he was found to be an inventor, it's fixable, and I don't recall they had any smoking guns relating to intent.

To agree with everyone else's comments here, what the case does NOT say is "patent attorney can not be an inventor".

What the case does say is that the patent attorney may be held to a somewhat different standard than, say, people working together to reduce the invention.  So that mere filling in of blanks and helping enable does not make him or her an inventor. 

I knew a guy at F&R who routinely listed himself as an inventor for one of his corporate client's apps.  He really was a subject matter expert in that field, and often contributed entire novel claims sets as he was drafting one of their apps (one way to ensure a restriction requirement, IMHO).  But he kind of devolved into claiming inventorship on picayune dependent claims stuff, so I tossed Solomon at him.  After reflection, he went back to only adding himself as an inventor where he came up with the "big ones".  To me, that seems a reasonable standard.

[OMG IP]

I know for a fact a patent attorney can be an inventor.  My first patent was granted last year, and I've been a patent attorney since 2009. woot.

[TaiwanIP]

What the case does say is that the patent attorney may be held to a somewhat different standard than, say, people working together to reduce the invention.  So that mere filling in of blanks and helping enable does not make him or her an inventor. 

I knew a guy at F&R who routinely listed himself as an inventor for one of his corporate client's apps.  He really was a subject matter expert in that field, and often contributed entire novel claims sets as he was drafting one of their apps (one way to ensure a restriction requirement, IMHO).  But he kind of devolved into claiming inventorship on picayune dependent claims stuff, so I tossed Solomon at him.  After reflection, he went back to only adding himself as an inventor where he came up with the "big ones".  To me, that seems a reasonable standard.

I'll be going from an in-house position back to a law firm. I really doubt that our clients here in Taiwan would want for me to list myself as an inventor. So that's where my original question comes into the picture:

But can we take this one step further and interpret this also to mean that, as patent attorneys and agents, we have free reign as far as adding as many alternative embodiments, etc. as we like, since doing so would be viewed as helping our “client define its invention to obtain maximum patent coverage”? Surely there must be limits but I am not aware of any rules, court rulings, etc. that address this issue other than Solomon v. Kimberly-Clark Corp. mentioned above. 

Going back to your example, I tend to agree with friend's approach. But then I wonder how big the "big ones" have to be (before you list yourself as an inventor)? Since the clients here would not want me to be listed as an inventor, I would have to back off just before I reach that level. I guess my next step is to actually read the case. This was a very good discussion.

[JimIvey]

I'll be going from an in-house position back to a law firm. I really doubt that our clients here in Taiwan would want for me to list myself as an inventor.

Well, in US law, what your client wants to list as inventorship doesn't matter.  What matters is what is claimed.

In that one anecdote I gave above, the thing that required me to be listed as an inventor was that the client wanted me to include claims to the particular embodiment that I added and the client said he hadn't thought of it before.  You must name all inventors whose contributions are claimed.

If the client didn't want me to be named as an inventor, we could have simply not added claims to my hair-brained embodiment.  But they can't have it both ways.

Regards.

[George White]

To preempt any concern of a conflict of interest, my engagement agreement has a section called "possible conceptual contributions". It says by that if I (under the standard definition of inventor) am an inventor in relation to one or more claims I hearby assign any and all rights that flow from that to my client.

--George

[JimIvey]

To preempt any concern of a conflict of interest, my engagement agreement has a section called "possible conceptual contributions". It says by that if I (under the standard definition of inventor) am an inventor in relation to one or more claims I hearby assign any and all rights that flow from that to my client.

I was kinda thinking about adding something like that to my agreement after reading this discussion. 

I think I'd make mine an obligation to assign, so that I'd still execute assignments for recordation.  In addition, I'd try to tie the mutual rights and obligations of the agreement letter into consideration for the obligation to assign.

It's still an odd thing to put in the agreement, though.  Some unsophisticated clients are paranoid about stealing of their idea(s).  Even a hint that I might be an inventor could spook people.  I'd word the whole thing kinda carefully.  E.g., "In the unlikely event...."

Regards.

[TaiwanIP]

I'll be going from an in-house position back to a law firm. I really doubt that our clients here in Taiwan would want for me to list myself as an inventor.

Well, in US law, what your client wants to list as inventorship doesn't matter.  What matters is what is claimed.

In the beginning stages at the law firm, I'll be reviewing cases ready for filing in the US prepared by others. This will mean that the corresponding Taiwanese applications have already been prepared and filed. So this inventorship issue will not come up during such a process (since adding additional embodiments will not be possible at that stage). However, I hope to one day be a part of or head a team that prepares the first draft of applications in English. After everything is settled, it's my idea for the specifications to be translated into Chinese for filing first in Taiwan. If I'm heading the team, I'll be pushing for adding as many alternative embodiments as possible. Having worked in-house for a while so close to all the inventors, I know what incredible results you can get by prodding the engineers for more information. But I'm sure there will be instances where we'll be adding our own embodiments. Since I am aware what US law says regarding inventorship and also that Taiwanese clients won't be too pleased about having to name our engineers as inventors, I guess my idea after this discussion will be to instruct the team to back off before reaching the level of having to be named as inventors.

[JimIvey]

Since I am aware what US law says regarding inventorship and also that Taiwanese clients won't be too pleased about having to name our engineers as inventors, I guess my idea after this discussion will be to instruct the team to back off before reaching the level of having to be named as inventors.

You can describe all the embodiments you want.  Just don't claim any of the embodiments that were thought of by patent attorneys/agents in trying to capture possible work-arounds.

If the client insists that you claim those embodiments, then you have a problem.

Regards.

[bleedingpen]

Since I am aware what US law says regarding inventorship and also that Taiwanese clients won't be too pleased about having to name our engineers as inventors, I guess my idea after this discussion will be to instruct the team to back off before reaching the level of having to be named as inventors.

You can describe all the embodiments you want.  Just don't claim any of the embodiments that were thought of by patent attorneys/agents in trying to capture possible work-arounds.

If the client insists that you claim those embodiments, then you have a problem.

Regards.

Which brings up an example of unintended consequences.

You invent a widget comprising A and B.  Attorney, thinking he is doing the client a favor, comes up with multiple embodiments for B: B1, B2, and B3. 

But to get inventorship correct so that the attorney is not an inventor, attorney drafts claims directed to A and B.  B1, B2, and B3 are disclosed in the specification as alternatives to B, but not claimed (otherwise, the attorney is an inventor).

Accused infringer then comes along and practices A and B1.  Patentee thinks, oh I have them we can argue doctrine of equivalents.  Nope, you have a disclosed but unclaimed problem and the doctrine of equivalents does not apply.  Attorney, again thinking he is doing the patentee a favor, has in actuality really screwed the patentee.

Sometimes its best just to write the patent on what the inventor gives you and not to stray too far.  I tend to think the applications that go ad nausea about alternate embodiments are in actuality attorneys either acting out the situation I described above, or trying to justify their fees for application drafting. 

[JimIvey]

You invent a widget comprising A and B.  Attorney, thinking he is doing the client a favor, comes up with multiple embodiments for B: B1, B2, and B3. 

But to get inventorship correct so that the attorney is not an inventor, attorney drafts claims directed to A and B.  B1, B2, and B3 are disclosed in the specification as alternatives to B, but not claimed (otherwise, the attorney is an inventor).

Well, hopefully the attorney can craft a claim that reads on B, B1, B2, and B3 -- some generic, umbrella term/phrase.

Sometimes its best just to write the patent on what the inventor gives you and not to stray too far.  I tend to think the applications that go ad nausea about alternate embodiments are in actuality attorneys either acting out the situation I described above, or trying to justify their fees for application drafting. 

Well, I wouldn't recommend approach.  If the attorney knows that B1, B2, and B3 are feasible alternatives to B and fails to cover them in the claims, two things have happened. 

First, the attorney has taken money to prepare something that the attorney knows has no hope of having any value in the market place since viable alternatives are available to the client's competitors.  I have more of a problem with that than charging for the hours needed to provide an application that has a chance of providing value to the client.

Second, if a competitor does introduce a non-infringing product using B1 and the attorney should have known, or worse, actually knew, that B1 was a viable alternative to B, the attorney might have some substantial malpractice liability.

The only proper solution I see is to raise all the issues with the client and let them choose the course of action that suits them best.

Regards.

[bleedingpen]

Well, hopefully the attorney can craft a claim that reads on B, B1, B2, and B3 -- some generic, umbrella term/phrase.

That's what the attorney should do.  And if they do that, then they avoid the problems that I bring up.  But what's the point in adding B1, B2, and B3 to the specification if those are attorney embodiments and you can claim B in a broad manner that encompasses all of B, B1, B2, and B3? 

I could make a very illustrative example of the problems this creates if it weren't for that pesky Festo case.

Well, I wouldn't recommend approach.  If the attorney knows that B1, B2, and B3 are feasible alternatives to B and fails to cover them in the claims, two things have happened. 

Jim, that's a claiming issue and not a matter of writing the spec. 

But let's consider some examples for which I probably don't know the answer to and am just feeling a bit argumentative today:

A tool comprising:

a lever having first and second ends;
a dohicky on the first end of the lever; and
a grip portion defined on a second end of the lever.

The client invented a pair of sharp edges that join together to cut an article to be worked on.  That's what the attorney calls the dohicky.  But the attorney realizes that the dohicky could also be a pair of cup-shaped members that join together to form a scoop.  The client really doesn't care because the scoop embodiment isn't in the client's business plans.  So one day the client (now patentee) files suit against an accused infringer.  The accused infringer argues for claim construction of dohicky to include both the cutter embodiment and the scoop embodiment.  And so as to not complicate things, let's assume that there is essentially no prosecution history.  The patentee can't really defend this claim construction because, after all, both embodiments are written in the specification as dohickys.  Now the patentee has an inventorship problem.  Is it invalidating of the patent? Probably not, there is no intent to deceive.  But I think this academic example does illustrate one of the problems of attorney-introduced embodiments. 

Now let's consider another example.  Attorney adds scoop embodiment, patent application gets filed, three years later the USPTO rejects.  Attorney has left for the carribean and cannot be reached.  Attorney B picks up the case, says let's amend to include the scoop embodiment.  Client, ignorant or forgetful of either the facts or the law, agrees to the amendment.  Again, now we have an inventorship problem.

Finally, let's consider the example where an attorney (heaven forbid) uses MPF language or functional language so broad that MPF treatment is appropriate.  In this case, if the attorney has introduced alternate embodiments to any of the claim elements that are subject to MPF treatment, then I would argue that by rule the attorney has to be listed as an inventor.