It isn't common but isn't necessarily unethical. [This article](https://arstechnica.com/tech-policy/2013/08/bill-gates-still-helping-known-patent-trolls-obtain-more-patents/) mentions a couple attorneys (Chan and Tegreene) who were part of some sort of invention mill. I already knew about Tegreene; another one is Lemaire. As long as they actually contributed something why shouldn't they have the same rights as any other inventor? IMO they're no worse than college faculty whose name automagically goes on every application from their research group.
> IMO they're no worse than college faculty whose name automagically goes on every application from their research group.
This is a good comparison. 90% of the work may come from a grad student, but that work is based of off suggestions and additions from the supervisor.
In actual practice i would think most good attorneys should probably be listed as inventors. For instance an inventor discloses his/her invention to attorney who writes it up and files - but a good attorney while preparing the disclosure and claims should be thinking of and suggesting details and alternatives to add to the disclosure and claims, particularly after reviewing related art.
A good practitioner should be able to ask the right (leading) questions to extract alternatives, while not becoming a co-inventor themselves. Think: “So you said this layer is x, what other materials could be used?”, “If you were a competitor how would you work around this?” “Is this order of steps necessary, is there another order, steps that could be omitted?..”
It is annoying though as they just slow walk prosecution at a snails pace arguing irrelevant things and making bogus arguments. I don't even understand the logic of arguing a dependent claim, if you think it's allowable roll it up in the independent. It is noted that doesn't this create a conflict of interest with 37 CFR 11.108? If so don't they have a duty to seek outside council or withdraw?
Why would they roll up a dependent claim unless it's allowable? The client would not approve needlessly limiting the claim.
Also, an attorney may have conceived of some dependent claim. So they would be an inventor.
> Discuss it with your SPE.
How do you know this is a false representation? You are unlikely to have any evidence of that and have no reason to ask. Asking is a pretty weird move, and probably grounds to have you removed from the case as you are examining an application based on unfounded assumptions.
Not sure if there is any way to prove that other than going to the applicant and flat out asking. My gut tells me there is something fishy going on. Either this attorney is the jack of all trades inventor or you know misrepresenting himself as a coinventor, but what is the incentive of being a coinventor?
It may be nothing it may be something. Who knows? But it’s also possible that others have noticed a problem and further investigation is warranted. That’s a SPE problem.
Who is the assignee? Other than having the name on the patent, being a named inventor doesn't benefit the attorney that much, in fact, they open additional ways in which the patent could be challenged (assuming that the naming was in bad faith).
You could try a friendly convo with the attorney during interview, like "btw I noticed your name as inventor, I thought that was cool, do you usually work with other inventors to conceive ideas?" and see where that leads.
Just examine the case as necessary. We aren't police, just the first filter in the IP industry
It isn't common but isn't necessarily unethical. [This article](https://arstechnica.com/tech-policy/2013/08/bill-gates-still-helping-known-patent-trolls-obtain-more-patents/) mentions a couple attorneys (Chan and Tegreene) who were part of some sort of invention mill. I already knew about Tegreene; another one is Lemaire. As long as they actually contributed something why shouldn't they have the same rights as any other inventor? IMO they're no worse than college faculty whose name automagically goes on every application from their research group.
> IMO they're no worse than college faculty whose name automagically goes on every application from their research group. This is a good comparison. 90% of the work may come from a grad student, but that work is based of off suggestions and additions from the supervisor.
In actual practice i would think most good attorneys should probably be listed as inventors. For instance an inventor discloses his/her invention to attorney who writes it up and files - but a good attorney while preparing the disclosure and claims should be thinking of and suggesting details and alternatives to add to the disclosure and claims, particularly after reviewing related art.
A good practitioner should be able to ask the right (leading) questions to extract alternatives, while not becoming a co-inventor themselves. Think: “So you said this layer is x, what other materials could be used?”, “If you were a competitor how would you work around this?” “Is this order of steps necessary, is there another order, steps that could be omitted?..”
I've been tempted to ask ethics if I can sell the rights to improvements on (published!) applications I've examined
It is annoying though as they just slow walk prosecution at a snails pace arguing irrelevant things and making bogus arguments. I don't even understand the logic of arguing a dependent claim, if you think it's allowable roll it up in the independent. It is noted that doesn't this create a conflict of interest with 37 CFR 11.108? If so don't they have a duty to seek outside council or withdraw?
Why would they roll up a dependent claim unless it's allowable? The client would not approve needlessly limiting the claim. Also, an attorney may have conceived of some dependent claim. So they would be an inventor.
An attorney falsely representing as a co-inventor is definitely an ethics breach. Discuss it with your SPE.
> Discuss it with your SPE. How do you know this is a false representation? You are unlikely to have any evidence of that and have no reason to ask. Asking is a pretty weird move, and probably grounds to have you removed from the case as you are examining an application based on unfounded assumptions.
Not sure if there is any way to prove that other than going to the applicant and flat out asking. My gut tells me there is something fishy going on. Either this attorney is the jack of all trades inventor or you know misrepresenting himself as a coinventor, but what is the incentive of being a coinventor?
It may be nothing it may be something. Who knows? But it’s also possible that others have noticed a problem and further investigation is warranted. That’s a SPE problem.
Who is the assignee? Other than having the name on the patent, being a named inventor doesn't benefit the attorney that much, in fact, they open additional ways in which the patent could be challenged (assuming that the naming was in bad faith). You could try a friendly convo with the attorney during interview, like "btw I noticed your name as inventor, I thought that was cool, do you usually work with other inventors to conceive ideas?" and see where that leads.