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[TaiwanIP]

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.

Yes, yes, of course. That's an important distinction and you're right. I should have been more careful in my post. This is something that I'll have to think about but my initial reaction is that this might make things messy keeping track of things during prosecution. 

[JimIvey]

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? 

The point is meeting the written description requirement for a claim that reads on more than just B alone and to avoid possible non-infringement under the reverse doctrine of equivalents and to support a claim construction that reads on more than just B.

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. 

I don't see an inventorship problem.  The inventor came up with the dohicky at the end of the levers.  The attorney only came up with substitutes for the specific embodiment envisioned by the inventor.  It's only when you claim the substitutes imagineered by the attorney that you have an inventorship problem.

And, for what it's worth, scoops and slicers are tough to group together in a class of dohickies, unless the class is of things that can be at the end of scissor-like levers and are otherwise unrelated.

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. 

Is there a deceptive intent requirement in 102(f)?  I didn't think there was.

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.

The failing there is to properly list inventorship at the start.  The problem is no different than a co-inventor who similarly disappears without being named.

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. 

True.  Everything discussed in this topic would apply.  The attorney should spot the issue and discuss it with her client.

Regards.

[smgsmc]

What about the common case in which the practitioner strives to provide the broadest coverage?  For example, inventor has thought only of a square.  In analyzing the invention, practitioner realizes that a square is too limiting, that the broadest claim is to a "regular polygon".  Inventor says, "I never thought about that, but come to think about it, you're right."   Or invention relates to RF transmission, and practitioner says, "You know, this would also work for acoustic and optical transmission; the claims should cover those two modes as well."

[bleedingpen]

What about the common case in which the practitioner strives to provide the broadest coverage?  For example, inventor has thought only of a square.  In analyzing the invention, practitioner realizes that a square is too limiting, that the broadest claim is to a "regular polygon".  Inventor says, "I never thought about that, but come to think about it, you're right."   Or invention relates to RF transmission, and practitioner says, "You know, this would also work for acoustic and optical transmission; the claims should cover those two modes as well."

Well there is also a requirement that anything "inventive" be more than just routine add ons.  Don't have the MPEP or case quote in front of me, but that could certainly add to the discussion. 

As far as your broadest claim discussion, I think that is fair game.  What I don't like is adding additional embodiments to the spec through attorney add on.

The way that I deal with all of this is, when I see an opportunity for fleshing out additional details, I highlight the section of the app and return it to the inventor with instructions for them to consider alternate embodiments. 

[JimIvey]

What about the common case in which the practitioner strives to provide the broadest coverage?  For example, inventor has thought only of a square.  In analyzing the invention, practitioner realizes that a square is too limiting, that the broadest claim is to a "regular polygon".  Inventor says, "I never thought about that, but come to think about it, you're right."   

Well, since a square is a regular polygon, reciting a regular polygon does not recite anything not contributed by the original inventor.

Of course, such a claim can run afoul of the written description requirement if you don't teach at least one non-square, regular polygon.  I don't see an inventorship problem until at least one claim would not be infringed by the inventor's conceived embodiments.

Of course, in the real world, this is much more easily managed, particularly if you have easy access to the inventor (not always the case).  You see the invention and you begin to wonder if other regular polygons would work.  So, you ask.

The inventor might answer, "Hmmm, now that I think of it, yes, regular polygons up to about an octagon would work, maybe more.  Maybe even a few irregular polygons.  Let me think about that and get back to you."  That's really adding value -- can even get protection beyond just regular polygons and can more readily meet the written description requirement.

On the other hand, if the inventor replies, "No.  Absolutely not.  It must be a square."  If you don't see why, you should ask.  You might find that other elements can be broadened or you might learn about the technology.  Either way, the dialog will lead to a better patent application.

And you might end up claiming exactly what the inventor shows you and no more if the inventor says the invention uses a square and nothing else can substitute.  But I don't believe you just do that in all cases without trying to tease out broader coverage.

Regards.

[smgsmc]

Well, since a square is a regular polygon, reciting a regular polygon does not recite anything not contributed by the original inventor.

Of course, such a claim can run afoul of the written description requirement if you don't teach at least one non-square, regular polygon.  I don't see an inventorship problem until at least one claim would not be infringed by the inventor's conceived embodiments.

Of course, in the real world, this is much more easily managed, particularly if you have easy access to the inventor (not always the case).  You see the invention and you begin to wonder if other regular polygons would work.  So, you ask.
The inventor might answer, "Hmmm, now that I think of it, yes, regular polygons up to about an octagon would work, maybe more.  Maybe even a few irregular polygons.  Let me think about that and get back to you."  That's really adding value -- can even get protection beyond just regular polygons and can more readily meet the written description requirement.

On the other hand, if the inventor replies, "No.  Absolutely not.  It must be a square."  If you don't see why, you should ask.  You might find that other elements can be broadened or you might learn about the technology.  Either way, the dialog will lead to a better patent application.

And you might end up claiming exactly what the inventor shows you and no more if the inventor says the invention uses a square and nothing else can substitute.  But I don't believe you just do that in all cases without trying to tease out broader coverage.

Regards.

You've lost me here.  Description, figures, and initial claims supplied by inventor only mentioned square.  Inventor readily admitted that he considered only square and nothing else.  So doesn't "regular polygon" cover embodiments (equilateral triangles, regular hexagons ...) not conceived of by the inventor?  As you mentioned, the description would need to be augmented with non-square embodiments to support a broader claim to "regular polygon".  Don't these then constitute embodiments added by the attorney/agent (which is of concern to bleedingpen)?

[JimIvey]

Did the inventor invent an apparatus that uses a regular polygon?  Yes, unequivocally yes.  No inventorship problem.

By using "comprising", a claim that was limited to a square would also read on variations that include things beyond the recited elements.  Do we need to name all of the people who thought of those, albeit after filing?

You don't have to name everyone who thinks of variation covered a claim as an inventor.  You only have to name people whose contribution is reflected in claim language.  The claim refers to a regular polygon.  The regular polygon was initially disclosed by the inventor, as a square.  It's as simple as that.  The fact that the attorney authors the claim as reciting "regular polygon" rather than "square" does not change the fact that the inventor originally presented a regular polygon to the attorney. 

Honestly, if an inventor comes to me with an idea for a device that uses a USB port and I recite "a peripheral data port", do you really think I'm obligated to list myself as an inventor unless the client explicitly tells me it doesn't have to be a USB port?  Really?

Regards.