Can Patent Attorneys Ever be Named as Co-Inventors of the Claims they Draft?

Last week, we received a very thought provoking comment from a lawyer working at a renowned patent law firm in France (who wishes to remain anonymous). In the comment he throws light on the prevalent practice of patent attorneys often having to draft patent applications based on only a single slide or drawing provided by their clients and yet not being cited as co-inventors in those applications. He argues that that this practice is not only unfair but also against the law which requires every person who has contributed to the inventive concept to be listed as an inventor, failing which the application or the patent, if granted, would be considered invalid.

We would like to thank the commenter for raising this important issue that needs some deliberation. I reproduce his comment in full and look forward to receiving comments from our readers.

“I’d like to break a taboo. A patent taboo.

Patent laws state that anyone contributing to claims defining an invention shall be cited as inventors (“true inventor” in the USA). If a true inventor is not cited, the patent application can be considered invalid (“inventorship”).

Some clients willing to file a patent application sometimes (often in fact) provide patent attorneys with a single slide or drawing. That is with very few words (way less than an abstract of 150 words).

In turn, patent attorneys are expected to produce a 20 pages document (10 pages is a bare minimum and the standard is 20 pages).

In fact they do, because they are paid for this task. And because providing adverse evidence that the true inventor has not been cited is very hard to obtain (a patent attorney cannot speak-up, he would loose both his client and his job).

Yet this practice is against the law. Drafting the patent application from a minimalist idea, patent attorneys have to do way more than filling the gaps of the seed idea. They have to invent, literally. These patent attorneys are never ever cited as inventors in patent applications. The number of virtually invalid patents is enormous, as this practice is highly generalized and tolerated.

I can’t count the number of dependent claims and pages of my patent applications that have nothing to do with the few words I was provided with. Same for all of my colleagues. Many of these patent applications have been granted.

This is not fair. This is not even legal, in the first place.

When are we going to change this hypocrisy ? If applicable, it would be fair and legal to cite as an inventor the patent attorney who has drafted the application, along the initial one.”

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9 thoughts on “Can Patent Attorneys Ever be Named as Co-Inventors of the Claims they Draft?”

  1. I beg to differ from Pankhuri’s perspective. Although the Patent laws states that anyone contributing to claims defining an invention shall be cited as inventors, the essence is that an “inventor” is the one who has been involved in the initial idea of the “invention” or rather the “inventive step” and/or its its elements/techniques. An Attorney who drafts 20 pages from the one page abstract is just an “author”, not an inventor. The attorney has not conceptualized the “inventive step”, he is just adding written layers to the invention to make a specification. In fact the practice of making a specification on a single page write-up and inventing “literally” is questionable, because it casts doubts about the reduction to practice and enablement of the invention. Only if an Attorney has given technical suggestions, which on working have contributed to the inventive step can he/she be called an inventor.

    1. Pankhuri Agarwal

      Hi Anuradha, thank you for your comment. Just wanted to clarify that the post does not contain my views on the issue. I have merely reproduced the anonymous comment that we received.

  2. This article makes no sense. Please refer to the meaning and context of words “inventor” and “attorney” from standard references read it along with the words inventive ingenuity” and “fiduciary relationship”

  3. The intent behind this suggestion of crediting drafter of the patent with inventor-ship is genuine . It draws from the concern for the shadow work which goes into transforming a ‘brain wave + elbow oil ‘ matter into something which shall survive the competition’s onslaught over next 20 years. Unfortunately it is not feasible to work this suggestion under present patent laws across the globe.
    This situation can be compared to the editorial efforts which go into transforming a crude manuscript into a publishable matter as a book. The efforts of such editors harbored by reputed publishers involve much more than stylistic changes. Most of the times , the interaction with a conscientious editor helps the author reflect all facets of his ‘expression’ into a much metamorphosed piece of writing. Names of such Editors do appear on the book but they are never considered as Authors.
    That’s the nature of the beast !

  4. In most cases, the patent attorney is expressing what is inherent to the context and concept explained by the inventor succinctly. The patent attorney does not qualify as an inventor for elaborating on such details.

    However, in theory, there is always the possibility the practitioner suggests some variation not contemplated by the inventors, and such suggestions get claimed. The patent attorney would need to be named as the inventor, or else the patent is subject to attacks based on incorrect inventors, etc.

    If there is that claim of inventorship by patent attorney somehow, there is also the risk of conflicting rights with claims of joint ownership, however limited that risk might be under the applicable laws. A safe practice for law firms would be to have automatic transfer of any rights (that potentially accrue to the patent attorney) to the client.

  5. I agree with Anuradha in this case. As it is drafting a specification is a skill for which a Patent Attorney is being paid. To ask for name in the invention which a Patent attorney has drafted is actually being very unfair with the inventors who have put all their knowledge and skills into inventing something new.

  6. I bet most patent attorneys do contribute to the invention in some way. They spend so much time looking at prior art and thinking about how to word it just right that improvements are inevitable. Especially when brainstorming dependent claims. Maybe not in every patent, but most.

    This is a great question, sans the part about fairness. It really wouldn’t be fair for a company to have to share their IP with the attorney hired to protect it.

  7. err.. which part/provisuon of the EPC or Patents Act in India or the US lawactually ‘defines’ an inventor?
    A bit of a storm in a teacup isnt it?

  8. I agree substantially with the anonymous attorney. Patent practitioners, the good ones, often have to “add to” the disclosure given them by their clients (many of which are very narrowly focused on the specific design and field of use they invented) to make the application worth anything. In some cases, the practitioner, based on what the client gives him, with the original patent application conceptualizes an improvement in design, function or expanded field of use that in itself ends up being allowed in a claim written by the practitioner. He may come up with an idea he thought the client disclosed but later found that there was a misunderstanding and that was not the case. Through the course of office actions, he narrows his idea to get around prior art. He came up with the idea, he reduced it to practice in the specification/claims.
    Ergo, the practitioner invented…and should be listed as a co-inventor if any version of his idea not included in the original client disclosure is being allowed.
    Perhaps best to explain to the client upfront, that if anyone invents anything allowed by the Examiner in a claim, they must be listed at some point. An inventor could decline to be named in the published patent later in the prosecution process, if the client makes it an issue and offers additional compensation, in my opinion.

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