Ron Slusky: Five Prescriptions for Effective Analyzing an Invention and then Claiming It

I asked Ron Slusky to share some insight from his new book on patent prosecution and claim drafting. The book is titled Invention Analysis and Claiming: A Patent Lawyer’s Guide (American Bar Association 2007). [Currently $51 on Amazon] Information about the book, including extensive excerpts, can be found at www.claim-drafting.com. 

The following are Slusky’s “five prescriptions for effectively analyzing an invention and then claiming it.”

1. Identify the inventive concept by beginning from the problem that the inventor set out to solve and then asking how, broadly and functionally, the inventor solved that problem

The popular alternative approach of drafting a claim of some indeterminate breadth directed to the embodiment(s) and then whittling that claim down will surely result in a broader claim to the embodiment(s) than what one started with. But that approach may still miss the broad invention because if words defining the inventive concept are not present in the original claim—e.g., a new and non-obvious functional interrelationship—such words are unlikely to somehow magically appear during the broadening process.

2. Begin by drafting a problem-solution statement rather than a claim

As just noted, drafting claims should not be the primary vehicle for discovering the invention. The structural formalisms of claim drafting, while perhaps familiar and facilitating, can all too easily mislead us into thinking we have discovered the inventive forest when we have actually only identified some of its trees.

Begin, instead, by drafting a problem-solution statement and use that as the basis for drafting the patent application’s broadest claims A problem-solution statement is a single sentence stating as broadly as possible, but without reading on the prior art, a) the problem the invention solves, and b) the inventor’s solution to that problem. Here, for example, is a problem-solution statement for a seminal invention of rocket pioneer Robert Goddard:

The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.

This leads directly to the following claim appearing in Goddard’s U.S. patent 1,103,503 issued July 14, 1914:

A rocket apparatus having, in combination, a combustion chamber, a casing containing a supply of combustible material, and means for successively feeding portions of said material to said combustion chamber.

3. Dream Up Alternatives, Including Some Farfetched Ones

A powerful tool for analyzing an inventor’s embodiment to extract the inventive essence is to dream up some alternatives to the inventor’s embodiment(s), including some alternatives that are farfetched. These are embodiments that, while outlandish or “wacky,” would nonetheless solve the problem to at least some extent. The more farfetched the better. The point is not to claim, or even to disclose, these embodiments in the patent application. The point is that even a farfetched embodiment can solve the problem without involving some of the implementational details required by practical embodiments. Thus dreaming up farfetched embodiments is a way of isolating the essence of the invention from its illustrative implementational details. Thus, for example, envisioning that a touch-tone telephone might have miniature trained parrots to whistle the various tones might be the key to realizing that the idea of using tones to signal from a caller’s premises to the telephone network was not limited to the use of oscillators and physical push buttons, neither of which are used in, for example, web-based telephony systems like SkypeTM.

4. Endeavor to discover “What’s Really Going On”

One way of gaining insight into the breadth of an invention is to ask oneself What’s Really Going On? or—more completely—What's Really Going On to Solve the Problem? The word "really" in this question emphasizes a search for the fundamental problem and the fundamental solution. What is going on really? The exhortation to discover What's Really Going On? invites us to exercise our technological curiosity; to dig down and discover what the invention is accomplishing at its essence; to understand what is going on at the 50,000-foot level; to see the invention in terms of fundamental causes and ultimate effects, without all the stuff in between. Thus answering What’s Really Going On? means figuring out—and ultimately claiming—what it is that solves the problem in at least a rudimentary way—not what solves the problem in the most elegant, efficient or commercially attractive way. Indeed, competitors may sacrifice a measure of elegance, efficiency or even commercial attractiveness in their products if it means being able to get into the market or avoid paying a patent royalty. Or they may devise their own elegant, efficient or commercially attractive implementations. Try to identify what is common among all of the embodiments, including some “farfetched” embodiments that the inventor and attorney may be able to collaboratively dream up, as described above. Identifying that which is common to all of those embodiments provides a good start to answering the question “What’s Really Going On?”

5. Envision the “Opposing Team”—the potential infringer and his patent attorney

When analyzing an invention and drafting claims based on the analysis, do not focus solely on what the inventor has done. Focus, rather, on what some competitor may do that takes advantage of what the inventor has done while avoiding the claims. The Opposing Team will be poring over the claims after the patent issues, looking for limitations that their product does not meet, or for some way to redesign the product to that end. Thus as each word, phrase and structural element appears on the computer screen, the claim drafter should imagine himself to be the Opposing Team and try to think of a way around that limitation, just like the real-life Opposing Team will do. In short, the patent attorney endeavoring to further his client’s interests is aided in that task by taking on the mindset of a competitor’s attorney endeavoring to further his client’s interests.

Buy the Book at Amazon or from the ABA.

Comments

[GideonPope]

GPs five steps used by most patent practitioners . . .

1. Read disclosure, attempt to ferret out something resembling an invention.
2. Try to envision a claim that passes the laugh test.
3. Interview the "inventor" and attempt to keep a straight face as he describes the "invention".
4. Describe the "invention" long enough to satisfy everybody that there has been a proper write up.
5. Bill like a sunnuvab1tch.

[SV]

Slusky's book is the best I've seen for training newbies, and it's useful for experienced attorneys/agents as well. I can't recommend it highly enough.

[patentboy]

I can't wait to see what e6k has to say about this.

[Richard]

Wow. Why don't we just list the patent prosecutor as a co-inventor on every patent? So much for the "fire of invention" from the sainted "individual inventor." I, for one, can't wait to put this book in front of a jury and show them how weak the claims of so-called inventors to have invented anything.

[Bob]

Draft the problem - solution first? Interesting approach, but don't put it in the spec. - you kill yourself (or the people trying to defend the patent) in litigation. Pre-KSR, probably not an issue, but now with "obvious to try" being an OK standard to prove something obvious, not recommended.

"One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims." KSR

"Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR

"The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR

"The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was "obvious to try." Id., at 289 (internal quotation marks omitted). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable [**724] solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR

[Lowly]

Richard,

I don't get why you think the attorneys are inventors. I get a disclosure, distill it down to its inventive essence, perform a decent search to look for 102 references, then write it up. Do I sometimes come up with an embodiment the inventor didn't write on his disclosure? Sure. But the inventor came up with the inventive concept. I'm just making sure I get him the broadest protection possible for that concept and in doing so I may flesh out his ideas with little details that don't actually contribute to the inventive concept itself.

Example: Inventor has invented a helicoptor -- a machine that achieves flight by displacing air using a series of rotors. Inventor's embodiment uses a gas combustion engine to turn the rotors. I ask him if it might also work with a turbine engine. I'm not an inventor; I didn't invent the idea of flying by displacing air using a series of rotors.

At least that's how I look at it. I fully expect to be lambasted by E6k..

[pds]

I disagree that putting a "problem statement" in the specification is necessarily a bad idea. However, how the "problem" is described should be carefully thought out.

The identification of a problem and the solving of it is an indicia of non-obviousness. This means that the inventor must be the one that identified the problem. As such, the specification should make this clear that the problem being solved was one discovered by the application and not a "need or problem known in the field of endeavor at the time of invention."

However, there are some known problems that are OK to put into the specification. Long-felt need is another indicia of non-obviousness. If you've got a problem that has been present for years/decades, then such a problem statement may be OK. My guess, however, is that inventions that solve these types of problems are more revolutionary than evolutionary, and as such, may be easier to patent.

[Babel Boy]

Lowly

I agree with your approach of going back to the inventor and saying "Does this work, too?" But if he says "yes," I have him write it down. I make a record that it's his idea. I'm just asking dumb questions.

If you contribute any subject matter that ends up in a claim, you're a co-inventor, baby. And you'd better be on the front page of the patent or it's dog stuff. I agree with Richard and I disagree with Ron. I'm not the inventor. I take what the inventor gives me and I write an application. If the inventor has missed an embodiment -- that's the inventor's problem. I do my best to explain to him why HE has to go through the kind of process Ron is describing in the book. And I may go back to him and ask "will-this-work" type of questions, but I will not build his embodiments or contribute any subject matter that ends up in his claims. To do so is malpractice. I have seen that litigation up close and it is not pretty.

Also, look at that Goddard claim used as a sterling example of how to do it right:

"means for successively feeding portions of said material".

"Successively" is a claimed limitation? Brother . . . now we'll hear from Looney about how 1914 was the leading edge of the "patent bubble." Why would one put that word in there?

[Bob]

PDS - agree with your thoughts, and all those argument are true but why put them in the spec. (other than possibly for int'l purposes, e.g., Japan maybe)? You don't have to "prove" that you solved any problem in the spec. You also don't have to prove long felt need, commercial success, unexpected results, etc. in the spec.

We are running into this right now in defending patents. The other side is contsantly using "problems" identified in the spec. and utilizing known solutions in the literature to try and prove it was obvious to try the claimed invention of the patent. The BPAI is also following suit, even in the biotech area (see, Ex Parte Kubin, 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007).

Just my view.

[e6k]

"I get a disclosure, distill it down to its inventive essence, perform a decent search to look for 102 references, then write it up. Do I sometimes come up with an embodiment the inventor didn't write on his disclosure? Sure. But the inventor came up with the inventive concept. I'm just making sure I get him the broadest protection possible for that concept and in doing so I may flesh out his ideas with little details that don't actually contribute to the inventive concept itself."

See, this is yet another problem with your actions. He submits an invention, which he points out to you particularly. 20000 things in the disclosure he hands you don't matter, but they're going in deps anyway. Then, you'll add in some details about how to make parts x y z that are well known, or might only be well known to you and a few others in the field, and put THEM in the deps. Of course, you won't submit any references that show where you gleaned your previous knowledge about making x y z. And you submit them as something the applicant regards as his invention, when really he didn't even think it up.

Example: I'm not an inventor; I didn't invent the idea of flying by displacing air using a series of rotors.

But you did invent the idea of flying by displacing air using a turbine. And when claim 1 directed to "A machine that achieves flight by displacing air using a series of rotors OR a turbine engine" gets shot down over art showing the rotor embodiment, what comes next? You drop rotors and go ahead with turbine. Then you get shot down and abandon, but either way what you did was malicious to the patent system, is dishonest, and unethical. I bet you're not so cocksure of your position that you'd meet me and Jon Doll for coffee tomorrow so you can spell out to him what you're doing are you? How about Dudas? I know when he eats, you like Potbellies? He's a nice guy, no really.

Just wait until you see what Dudas has to say in his next interview after he's talked to Lowly here.

"I agree with your approach of going back to the inventor and saying "Does this work, too?" But if he says "yes," I have him write it down. I make a record that it's his idea. I'm just asking dumb questions. "

Can you think of a way for you to be more dishonest? I'm having a hard time, help me out.

"If you contribute any subject matter that ends up in a claim, you're a co-inventor, baby. "

The voice of reason? Yet ignored in your previous statement?

"To do so is malpractice. "

You're gd mfing right it is. Come on Lowly, I'm buying.

Oh, and this book, what a load of it. At first I was reading it thinking, preach it brother! But then he gets into how, specifically, to commit malpractice, and possibly attempt to defraud the office.

Could someone tell me how step 3 IS NOT INVENTING? "Dream Up Alternatives, Including Some Farfetched Ones" may as well be the definition of the process of inventing, except make the farfetched part optional.

[semiotics again]

--Could someone tell me how step 3 IS NOT INVENTING? "Dream Up Alternatives, Including Some Farfetched Ones" may as well be the definition of the process of inventing--

The invention is the idea, not the means of carrying out the idea. A really simple example. An applicant wants to claim two pieces of wood connected together. He uses a nail in the model he brings me. I ask him, would a screw work instead of the nail? He says yes. I ask him, how about a staple? He says yes. I ask him, how about a piece of duct tape? He says yes.

I don't see any "invention" in my suggestions. Just because he came to me after he made one model instead of three, you're going to ding him? I'm giving him legal advice as to what he should consider his invention, possible equivalents, what words should be used to describe his invention. I'm certainly not inventing.

[e6k]

"not the means of carrying out the idea." is not a wholly separate idea? Ridiculous.

In your example, what happens when the office finds a nail holding two peices of wood together? You just merrily skip your way on down to claiming a screw. Ridiculous. No mother fing wonder the system is in a shambles with 8000 examiners working and more still needed.

"I don't see any "invention" in my suggestions."

Then why do you see any invention in his suggestion? That is all his disclosure is, a suggestion of how two piece of wood could be put together in a certain way. I mean, I assume the prior art had pieces of wood, what's inventive about putting two together in a certain way? What's inventive about putting the two together with a nail? Assuming that those things had never been done before, what makes those more specific suggestions about what to do with wood more special than your more specific suggestion about different ways of doing it? N O T H I N G. We routinely get applications that are nothing more than, "use a screw instead of a nail" or the equivalent in high tech. ROUTINELY. They account for a huge share of the applications pending.

[GP]

EK6=DC=MM

[teacup]

"use a screw instead of a nail"

Screws rotate and nails translate. Completely different concepts. Like duh. I always include at least a dozen dependent claims like this "wherein the ratio of screws to nails is selected from a group consisting of 1:1, 2:1, 1:2, 400.5:1, 0:0, X:Y, and any other ratio or combination of ratios."

On topic: that book looks great.

[patentboy]

When Edison reduced the incandescent light bulb to practice, he ran current through a carbonized cotton filament. Was he entitled to a patent that would be infringed by the later development of the tungsten filament which was more durable? According to e6k's line of thinking, he would not.

Am I misconstruing you e6k?

[pds]

"We are running into this right now in defending patents. The other side is contsantly using "problems" identified in the spec. and utilizing known solutions in the literature to try and prove it was obvious to try the claimed invention of the patent. The BPAI is also following suit, even in the biotech area (see, Ex Parte Kubin, 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007)."

I understand your point, but explaining why a particular invention was created (i.e., to solve a problem) may help get the application allowed. Of course, you need to make sure that the problem being solved is NOT characterized as a known problem.

The tension between prosecution and litigation .... one needs to say enough to get the patent but not so much as to give opposing counsel some ammunition to invalidate.

[pds]

"Could someone tell me how step 3 IS NOT INVENTING? "Dream Up Alternatives, Including Some Farfetched Ones" may as well be the definition of the process of inventing, except make the farfetched part optional."

Read the law on inventorship ... fair warning, it is very, very messy ... much more messier than claim construction or obviousness.

Of course, as an examiner, you don't really care about inventorship, because you take for granted that whatever is on the declaration is right. However, inventorship issues play out a lot in court.

[lolcat]

"As just noted, drafting claims should not be the primary vehicle for discovering the invention."

Quote of the year

[left coast]

You might want to take a look at the closest prior art, determine the differences and focus at least some claims on those differences.

[Budge]

There is a big problem with step 3. The attorney becomes an inventor. One element of real bad advice ruins the other four.

[e6k]

"Am I misconstruing you e6k?"

Yes, all I'm trying to say is that if you want to make a broad claim like "a fastening means" to describe the nail the inventor came up with then that's fine. But finding what the inventor came up with, a nail, suffices. He shouldn't be getting a patent on using screws in their stead if his generic claim is invalidated because prior art reads on it.

In your example, if edison comes in and claims "A lightbulb comprising a filament that produces x illumination" (Iirc the inventive part about edison's contribution was the illumination factor) and the claim is valid then he should get a patent, and it would cover all filaments that produce that illumination, including tungsten. However, if he comes in and says "A lightbulb comprising a filament that produces x illumination" and his attorney suggests to him that tungsten might work and then Edison claims "a lightbulb comprising a filament that produces x illumination wherein the filament is tungsten" then he did not invent it. Then if, when he goes to the PO and makes both claims and the first claim is struck down but the tungsten version remains, then he has a patent on something he himself did not invent.

If his attorney asks him, might there be other filaments? And HE says, why yes, using a tungsten would work, or a staple etc. Then you can claim tungsten. But if you're coming in and telling him "Does this idea of mine spur you to believe you've invented more than you had?" then that's wrong.

It all boils down to what scope of claims turns out to be allowable and whether THE APPLICANT invented something that made a contribution to the field. If his idea turns out to be bunk, but the attorney's idea isn't, then the attorney made a contribution, not the applicant.

The only argument you have is that you're an employee of the applicant so any work you do goes to him. But that's a piss arse poor argument in a field where we're supposed to be rewarding people for what THEY invent.

[Query]

PDS writes "Of course, you need to make sure that the problem being solved is NOT characterized as a known problem."

Query -- if it is a known problem, then is that prior art information which needs to be cited to the PTO?

[Query -- another]

Budge writes "the attorney becomes an inventor."

Query -- what do you do then? what is the downside?

[Lazarus Long]

pds, you are right when you said
"Read the law on inventorship ... fair warning, it is very, very messy ... much more messier than claim construction or obviousness.

Of course, as an examiner, you don't really care about inventorship, because you take for granted that whatever is on the declaration is right. However, inventorship issues play out a lot in court."

Years ago, I had this exact (or at least close) situation with a case. The lawyer apparently did like you all suggest (making suggestions for alternatives). Apparently, it turned out that he wound up adding sufficient amount to the spec & claims that he wound up having to be added as a co-inventor. He had to file a change of inventorship, disclaim the stuff he added, explain why he did didn't violate the canons, etc. (This was not something I required; they came in with it all on their own during prosecution.) From what I heard informally, it became a real problem for that lawyer.

pds, you also said
"The tension between prosecution and litigation .... one needs to say enough to get the patent but not so much as to give opposing counsel some ammunition to invalidate."
You are right here, too. What needs to be done is make the prosecution record either totally, or substantially, non-admissible during litigation. This would solve a lot of problems of all different types. Of course, if it going in the spec., changing this won't help much. It will help in the response phase, though, where these things can be then brought out.

Now, as to the idea of the lawyer questioning the inventor, it seems to me (my opinion here) that if the lawyer asks open-ended questions (e.g., for the helicopter example, "Are there any other types of engines that could be used?") it would be OK as anything added is the inventor's idea.

But, if they ask close-ended or "leading" questions (e.g., same example, "Can you use a turbine engine?") then they are actually contributing the overall invention. That contribution may or may not be obvious (different question), but I do not see how you can argue that by asking the leading question the lawyer is not ultimately contributing to the overall disclosed & claimed invention.

thanks,

LL

[Query -- another]

LL

And so what happens, what do you do and what are the downsides if a patent attorney makes a contribution to the overall invention?

Does it matter whether it is an obvious contribution or a non-obvious contribution?

Of course, if the patent attorney is listed as a co-inventor he must assign his rights to his client.

[SF]

"Does it matter whether it is an obvious contribution or a non-obvious contribution?"

In general, yes because recommending routine, obvious alternatives that one of ordinary skill would recommend does not make one a joint inventor. (There's a case that says as much with respect to balloon material, I believe.)

[patentboy]

So e6k, back to my Edison hypothetical:
All Edison knew to work was carbonized cotton. He went to his patent lawyer and the lawyer drafted this claim:
An illumination source comprising two electrodes and a conductor spanning the two electrodes of an incandescent material?

Is Mr. Edison supposed to be allowed that claim?

[pds]

"Of course, if the patent attorney is listed as a co-inventor he must assign his rights to his client."

Not really ... however, it does make for good client relations.

However, most of these questions are likely to be moot. Given how long it takes to obtain a patent and the litigation process, it'll be 5-10 years (at least) before the question ever gets asked of the attorney, "did you invent A and B of claim X?" By that time, the attorney will honestly be able to say "I don't recall ever suggesting A & B to the inventor. Thus, the inventor must have invented A & B."

Also, I very much doubt that the inventor will state "I didn't invent A & B, it was invented by my patent attorney."

Good luck to any litigator trying to invalidate a patent on this basis. I'm not saying it cannot be done, but if it is done, then the litigator is either a very good litigator or the other side was just plain dumb.

[e6k]

"Is Mr. Edison supposed to be allowed that claim?"

Unless the prior art shows one. Now lets say the attorney says "Claim 2. The illumination source of claim 1 further comprising the conductor being tungsten."

What then? What if the prior art shows claim 1 and not 2? The Attorney is the only one who made a contribution, the inventor made none (at least in those claims).

"just plain dumb."

Or honest. Good thing "no" lawyers are honest and they'll all break the rules routinely in their day to day practice.

[Richard]

pds:

Well, if any litigator was going to try to invalidate a patent on this basis, he or she would be well advised to use this book.

[Leopold Bloom]

As usual, pds brings a bit of reason to the discussion.

It's time for Max to pipe in and point out (correctly) that Europe isn't so hung up on inventorship in these situations. Since in the vast majority of cases the invention is assigned to a company, and since the attorney is essentially an agent of that company, there's no valid public policy that I can think of that is served by splitting hairs over inventorship. (Enriching litigators is not a valid public policy.)

[Sister Ray]

Apart from the fact that it's amazing that Max hasn't showed up yet here, given all the talk of problems and solutions, just wanted to ask:

Is there something Dennis isn't telling us? -

http://www.bassplayer.com/article/robert-plantalison-krauss/mar-08/34327

(and btw, e6k's recently expressed views on an appropriate response to terrorism on another thread rules out any possibility of giving any credence at all to anything he has to say about any subject under the sun known to man)

[Richard]

Leo:

"Enriching litigators is not a valid public policy."

Well, it is in my house! At least my wife tells me so. :)

[Query -- another]

PDS writes :"Of course, if the patent attorney is listed as a co-inventor he must assign his rights to his client." Not really ... however, it does make for good client relations."

I would think that there would be ethical issues too, PDS.

[Babel Boy]

Part I

It's a great discussion, but some of the arguments are a bit off. As usual, 6k is close, but not close enough for the cigar.

Doesn't matter whether the attorney's question to the inventor is open or closed-ended. The only thing that matters is whether the inventor indicates that he's already been there. If I say, "Does X work, too?" and he say's "Sure" then I am not justified in concluding anything except that he had a handle on X before I asked. I am certainly not justified in concluding that I should be on the patent because I asked the question. 6K is totally scrambled on this point. No cigar, no Kewpie doll.

If the inventor's response to my question is "I dunno." Then I tell him to think it over and get back to me -- in writing. I am certainly not going to eliminate a client's right to subject matter merely by trying to understand the boundaries of his concept.

What you are missing is basic Section 101. An idea is not patentable. If I suggest an idea, I have not provided the client with anything that is patentable. If he comes back to me with claimable subject matter, that subject matter is his. That's why I have him make a record of it.

You have to connect inventorship to the claims, not to the idea.

[patentboy]

OK, e6k, you concede that Edison is allowed this claim, barring prior art,

An illumination source comprising two electrodes and a conductor spanning the two electrodes of an incandescent material?

but he would not be allowed the narrower claim of the conductor being tungsten if it was the attorney who suggested Tungsten.

Does not the claim you say he is allowed to make cover the use of tungsten?

How about if the attorney says in the spec that Tungsten would make a suitable conductor, but never adds a claim expressly stating Tungsten? Is Mr. Edison still allowed the claim to an incandescent material?

[Budge]

Part of being a patent attorney in a disclosure meeting is to exercise restraint, not to blurt out every fantastic variation to the inventor's idea that you can think of. You need the inventor to tell you what he thought of. If you think of something and he doesn't, you can flush it out a little with questions, to see if he thought of what you are thinking. I personally draw the line at things that I think the inventor thought of, which might be pushing it, since sometimes that comes at drafting time. But there is no way in an attorney should inspire a claim.

Downside-are you going to tell the client you own half the patent, but are willing to assign it? If not, what will you do in litigation when the client loses its case for lack of standing?

[Babel Boy]

If I ask Edison, "Tom, what about tungsten?" That is nothing but a mere, unpatentable idea.

But if I say, "Tom, check it out, Dude, a filament made of tungsten would burn a lot hotter and longer than carbon." That's probably concrete enough to be claimable, and unless Tom tells me "I've already thought of that." then (if not for attorney-client privilege) I've just made myself a named inventor.

That's why a smart practitioner asks short, dim-witted questions and advises the client about the rules on inventorship so he understands why he's being asked odd or obvious questions.

As to pds' comment:
Also, I very much doubt that the inventor will state "I didn't invent A & B, it was invented by my patent attorney."

I mostly agree. Nothing I say to the client and nothing he says to me in my office is available to any examiner, judge, or discovery request. If the client understands inventorship, he is not likely to say "My lawyer told me that." So if some joik of an examiner (no names mentioned) wants to get holier than thou about inventorship "dishonesty," tough. Privilege trumps.

OTOH, the client might spill his guts (and force you to spill yours) if he turns on you. He's lost the infringement fight for other reasons and he comes after you for malpractice to reimburse him his fees on the grounds that the patent was invalid de novo because of an inventorship issue. At that point, all bets are off. Again, get the client's disclosure in writing, even if it's a prompted disclosure. Rule #1: CYAs.

[left coast]

I thought that a number of years ago there was a Federal Circuit case which dealt with similar facts where a patent attorney had contributed to the invention but was not listed as a co-inventor on the declaration.

Ring a bell, anyone???

[e6k]

"appropriate response"

Appropriate, and effective are two separate things sister. Or at least it should. Your gov. is here to do the effective one in a matter of security, to this there are few men who will dissent, and the few who do are also know as pansies.

"Does not the claim you say he is allowed to make cover the use of tungsten?"

The problem is, nobody knows if he is allowed that claim until examination takes place, and only claims particularly pointing out and distinctly claiming the subject matter the applicant regards as his invention are to be included. So long as the applicant doesn't regard the attorney's work as his own (which unless he is insane he will not) then the attorney's work should never make it into the claims, nor likely even the spec.

"How about if the attorney says in the spec that Tungsten would make a suitable conductor, but never adds a claim expressly stating Tungsten? Is Mr. Edison still allowed the claim to an incandescent material?"

Why would we discuss it? The issue would seem to never arise. If he is throwing in his two cents but not trying to take it out of the public domain then nobody cares and the issue is moot, especially since the attorney seems to be merely speculating. It would seem he is still allowed to claim the subject matter he invented, although, there could be problems under 112 1st since the invention has not been described consisely (there is extra matter present), nor has it arguably been set forth clearly since what the attorney invented might be blended in.

"I would think that there would be ethical issues too, PDS."

You haven't been paying attention, or are new here. PDS has no ethics, not one ethical bone in his body. By all accounts they were all removed (surgically I think) in law school.

"If I say, "Does X work, too?" and he say's "Sure" then I am not justified in concluding anything except that he had a handle on X before I asked."

Funny thing is, you are justified in concluding anything EXCEPT that he had a handle on X before you asked. But, even looking past your unintentionally mistaken sentence, no, you are not justified in concluding that he had a handle on X before you asked. If you asked "have you tried X yet?" and he says yes, or no, then you might be able to get away with it. But the leading question that says "would X work too?" is you suggesting that it might, and in the cases that you do it, it is probably you suggesting that it does necessarily work. It is when you suggest the invention that is you inventing it. You are the one who came up with the idea, you are the one with the unrestrained creative mind. Not the applicant. If he wants to say "a metal" and you want to say "silver, gold, copper" then "a metal" it should be. Likewise if he says "silver" and you think "gold, copper etc also" then it should be silver until HE says gold copper etc.

"I am certainly not going to eliminate a client's right to subject matter merely by trying to understand the boundaries of his concept."

Your asking him questions about the boundaries of the subject matter is not needed. Let him set it out. Just because you feel obligated to get everything out of him doesn't mean you can disregard your obligation as a merely a representative for him by displaying what he knows rather than what you and him know. Yet one more practice that is no doubt invaluable to obtaining the bs patent "rights" we dole out today that should be eliminated.

"well my patent attorney is better than yours and he knows more basics of the art so we get to claim more than you do, nah nah nah" Ridiculous.

[pds]

"Or honest. Good thing "no" lawyers are honest and they'll all break the rules routinely in their day to day practice."

Tell me again about those interferences that you, yourself, let slide or knew of that weren't declared ... and that is only the tip of the iceberg when it comes to what you've admitted.

"I would think that there would be ethical issues too, PDS."
Nothing unethical about being an inventor. It is just plain sloppy and a PITA. As I noted earlier, inventorship law is so squishy that any attorney should be able to have a reaonable argument that they weren't the inventor.

Best to leave it at that .....

[Lionel Hutz]

I don't understand this thread. Every practitioner knows we are coninventors half the time. The inventor has usually solved a problem and not necessarily thought of alternative embodiments or uses. As Babel Boy stated, if you want to cleanly avoid being a coinventor, then turn your suggestions into questions - "What about this, what about that..."

There is usually little risk of inventorship disputes, because most inventors have no problem taking credit.

[pds]

"OTOH, the client might spill his guts (and force you to spill yours) if he turns on you. He's lost the infringement fight for other reasons and he comes after you for malpractice to reimburse him his fees on the grounds that the patent was invalid de novo because of an inventorship issue. At that point, all bets are off. Again, get the client's disclosure in writing, even if it's a prompted disclosure. Rule #1: CYAs."

If the inventor turns, I point to the declaration, made under penalty of law, that he/she was the inventor and the inventor to rebut that piece of evidence. It then becomes a he-said/she-said contest but the declaration supports me.

[pds]

"You haven't been paying attention, or are new here. PDS has no ethics, not one ethical bone in his body. By all accounts they were all removed (surgically I think) in law school."

I would be hurt if it was by someone who actually understood ethics ... but alas, ethics is another one of those topics in which 6K is woefully deficient.

[RW]

I have read this book and recommend it. One may not always agree with the Slusky approach, but the book is worthwhile.

The comments above that suggest Slusky is advocating that attorneys become inventors are a little unfair. I agree that this is a risk, but I don't think that is what he suggesting. Slusky's suggestion to dream up farfetched alternatives is from his chapter on broadening the problem-solution statement. He has not reached the point in the book where he discuses independent claims, let alone dependent claims. His uses his "whistling parrot" example to see that the "solution" does not require an oscillator. From the insight provided by this exercise, he strikes "using oscillators" from the initial problem-solution statement. Slusky explains that his whistling parrot alternative "is not of practical interest, of course . . . however, conjuring up that farfetched embodiment led us to a problem-solution statement encompassing realistic embodiments that were probably unimagined, if not unimaginable, when the push-button telephone was conceived. For example, there are now ways of generating tones without oscillators . . . Thus, a patent claim based on the second problem-solution statement would have had longer staying power . . . In this particular case, the patent would have expired long before non-oscillator-based tone generation came to market . . . however, one never knows how quickly today's implementation imperative will become the old way of doing things."

Striking unnecessary limitations from a claim or, if you use the problem-solution statement approach, striking unnecessary limitations from the solution part of that statement, wouldn't appear to be all that controversial.

[e6k]

"Tell me again about those interferences that you, yourself, let slide or knew of that weren't declared ... and that is only the tip of the iceberg when it comes to what you've admitted."

Well, no 1. the case I have isn't going to be an interference because I'm going to bury it and erect a little tombstone, and I'd be happy to bury the suspect case as well (remember it ain't an interference until the interference people judge it to be so ;) ) but I can't cherry pick. I already have art that shows 99.9% of the entire thing (I fine toothed it) in one embodiment and the last bit will cause it to a. not be an interference or b. be found obvious. Thas how tis done boys. As to the other people, what am I supposed to do? Go making allegations against fellow examiners? Wtf kind of place do you think this place is?
Oh I forgot, this is pds talking, not JD or someone else that worked here.

Besides, all other sins I will have accumulated as an examiner will be overshadowed by the few allowances I let out the door. God help me. It gets easier to live with once PTA training wears off.

Keep in mind PDS, nobody is saying that you would likely get the ol' slap on the wrist, but they are saying you should be getting it.

"I don't understand this thread. Every practitioner knows we are coninventors half the time."

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLZ

I laughed. Out loud.

[Richard]

Lionel:

The technical problem is the patent being invalidated for improper inventorship.

The real problem is the inventor and his counsel looking like fools and losing credibiliy for playing games like this.

[Lionel Hutz]

Richard,

It's not playing games. It's reality. It's the job of the patent attorney. Technically, we may suggest something but it's still the inventor's invention.

[Lionel Hutz]

Any attorney who just takes what the inventor gives him is a terrible patent attorney and should get out of the business. Half the times the inventors do not even know what the invention is. It's when you discover that, that you can determine the scope.

Invalidation is very unlikely as the inventor will still consider himself/herself/itself the inventor.

[e6k]

"Technically, we may suggest something but it's still the inventor's invention. "

Who dreamt this jewel up and told you about it? Citations Anon, I demand them! Deliver!

"It's not playing games. It's reality. It's the job of the patent attorney."

Even funnier, I won't demand citations for this one because it's just your opinion. There's barely an intellectual game more lively of a sport than deeming leading questions to be inventing or not to be inventing.

[Richard]

Lionel:

I'm sure you play by the rules, but, good Lord, what's in that book looks really strange to non-prosecutors

[e6k]

"It's not playing games. It's reality. It's the job of the patent attorney."

Wiat, wait, now I get it, it's not "only" playing games, because we're playing game IRL and designating it someones job! I got it now ;)

[e6k]

"Any attorney who just takes what the inventor gives him is a terrible patent attorney and should get out of the business."

And thus, by making attorneys do all the inventing the modern day patent system was born. Maybe all we really need is to get back to the basics. Claim what THE INVENTOR (NOT YOU, ATTORNEY) regards as his invention.

Frankly, I had been wondering who would come up with the inventions I see being patented. Now that I know it's the attorneys (funded by applicants) it makes a lot more sense.

[lolcat]

to take a inventor's "invention" and propose possible alternative embodiments or modifications if anything would present the idea that the alternatives or derivations thereof would have been obvious to one having ordinary skill in the art at the time of the invention, no? (absent adequate testing and/or implementation of course)

[curious]

lolcat

why are alternative embodiments or modifications (which are suggested by another person) per se obvious as you appear to be saying?

[lolcat]

while not per se obvious, If a non practicing entity were able to present alternate embodiments or modifications after a cursory review of a patent applications (again, absent adequate testing and/or implementation), under the applicable statues the non practicing entity would be required to be either named as co-inventor or the suggestions presented would be seen a wholly within the skill of one of ordinary skill in the art, should the alternative embodiments or modifications be claimed.

[curious]

lolcat

Obviousness is decided by whether an alternative embodiment/modification is made by a "non practicing entity" or is made after "a cursory review"?

I am not aware of these tests. Please point me to specific case law. Thank you.

[SF]

A person's suggestion (whether by an inventor's patent attorney or by an inventor's coworker) that is eventually recited in a claim may make the person a joint inventor. Those of you who think the analysis is somehow different for attorneys, please explain.

[lolcat]

@curious

Your statement is wholly out of context. When speaking of cursory reviews, I would present the views of the Supreme Court in KSR v. Teleflex (see for example the obvious to try provisions). While I understand that the test for inventorship is not reliant upon reduction to practice, I find it hard to believe that modifications to the "invention" which are presented after the invention and only to provide further patent protection (or lack of protection in the current context) by others different than the original inventorship can be seen as within the realm of the alleged inventorship. Is an attorney/agent who presents a differing implementation which is absent implementation or testing not presenting an implementation which would be obvious to try to one of ordinary skill in the art?

[Lionel Hutz]

e6k,

Spoken like a beaurocrat.

[Lionel Hutz]

lolcat,

In many cases, I ask the inventor(s) about alternatives that he shoots down as unworkable or already known. When I suggested asking the inventor about alternatives, that was also partially because I want reassurance that they are reasonable alternatives.

For some aspects of some inventions, alternatives to what the inventor suggested are obvious. Those I simply put in the application as obvious alternatives. Occasionally, the inventor will correct me as something I thought was an easy alternative is not.

[Lionel Hutz]

SF,

If the person making the suggestion is not sure whether it will work and the applicant is, then they are not a joint inventor.

I thought I was simply pointing out a truism that every patent attorney recognized. At least half of all currently issued patents would need to be corrected to include the attorney as a coinventor if the mere suggestion of a claimed alternative or broader claims were filed than were suggested by the initial description.

As I said earlier, many inventors don't even recognize what their invention is until sitting down with the attorney.

[Richard]

"{M]any inventors don't even recognize what their invention is until sitting down with the attorney."
Scary. But not surprising. That's why there are so many crappy patents. And so many lawsuits. Maybe patents should be reserved for "inventors" who actually know what they invented before they meet with their attorney. In fact, how do these clueless guys even realize they invented anything at all?

[Wasn't me]

A good attorney sits down with the inventor, making sure that the inventor has fully and correctly described the forest. What are the properties of a tree in this forest? Are there other trees you're thinking of that belong in this forest? According to your comments, it looks like a tree with X properties belongs in the forest, is that true?

It is the job of the attorney to fully vet the ideas of the inventor and make sure the best applications of those ideas are presented. The attorney should never "invent" and no one will or should ever know if the conversation strays into gray water areas where it's hard to say who thought of what. It is beneficial to the system that the inventor's idea is fully vetted before being presented to the public, and so the system is intentionally set up to ignore the gray water. The quid pro quo of the patent system is fully in place even if some attorney-inventor collaboration makes it into the final issued claims.

The public policy choices all weigh toward never visiting that attorney-inventor communication. That conversation will never, ever be on the available record, and is the definition of attorney-client privileged communication (both in fact and intent). And you, e6k, (and the e6ks of DA offices, etc) are the reason why.

[Richard]

Wasn't me:

Why should the "inventor" have a 20 year monopoly on some idea which is the "collaboration" of the inventor and his attorney? Why should he be able to exclude the public from practicing what is in the "gray water?" Why should this "collaboration"be hidden behind the privilege? I think prosecutors who "suggest" inventions to their clients should examine the real damage they are doing to the trust the public has the the patent system. Again, no wonder we have too many patent lawsuits -- we have way way too many patents.

[curious]

Mr./Ms. lolcat

Nearly all inventions are modifications of and improvements to prior inventions. Very few are truly pioneer inventions. Are you stating that there is a new test of obviousness, that if the invention is conceived quickly (after only a cursory review) that is not a patentable invention? I.e., that a "flash of genius" is not a patentable invention?

I also do not understand your "differing implementation" sentence. Do you mean that an invention which has not been reduced to practice is not a patentable invention?

Also and further to other comments above, I think that many experienced and talented draftsman (who prepare the patent application drawings) are also co-inventors.

[MaxDrei]

I'm disappointed that I'm travelling, so can't participate. But, clearly, for me this book is a "must read". Having skimmed the above, I suspect that it would support my position, expressed over and over, that if there's any Augean stable to be mucked out, and the Congressmen have no stomach for it, then it's the judges' job to do it. The courts make the "Rules" that the prosecuters and litigators faithfully follow. For many outside the USA, looking in, some of those more venerable judge-made Rules are bonkers. The Slusky book might help a "Back to Basics" mindset to develop, in the quest for solid reforms to US patent law. I suspect that Slusky merely sets out the (except for the USA) universal "truths" of patent drafting, and I can't wait to get my hands on a copy.

[WTF]

With no offense meant to women, many of you are like a bunch of bickering old ninnies...no wonder the public dislikes attorneys

[GP]

This thread perfectly demonstrates the ridiculous self-importance with which patent attorneys view themselves.

Lionel wrote:

"I don't understand this thread. Every practitioner knows we are coninventors half the time."

Come on Lionel! Don't be such a Rube!

There're two things here . . .

1. What we actually do.
and
2. How we describe it.

Just like the Saudis saying the market is well supplied. Just like Bush saying that we're in Iraq to spread Democracy. Just like Imus saying he was defending black men. Just like the parent of the hyperactive little sack-o
crud describes his kid as "precocious".

See the first post of this thread.

Of the 3-6 thousand patent applications/patents I have read and seen in my life, about a dozen to a hundred are actual inventions. The rest are simply, IMO, obvious tweaks on known concepts.

But it doesn't sound good? Eh?

Like saying - we're in Iraq to make sure we can force production of oil and divert it to the United States at below market prices when the situation starts to get desperate.

Doesn't sound good, right? Sounds like we're bullies and thieves, and it would take a very unusual thieving bully to have such vocal self-awareness.

Likewise, most patent practitioners really would not like to have to admit that their job is actually writing up pages of silliness to submit to the head office of silliness, to argue silly things, and, hopefully, to have a silly patent issued on a bit of silliness that approximates an actual invention less than our Congresspeople approximate actual leaders.

It's a game, and anybody who's not delusional knows it's a game.

Now admitting it's a game and that you're just an unimportant roll player in that game? That's a ten step process.

Or maybe I'm wrong and Microsoft really did have 1,600 actual inventions last year.

[pds]

"Scary. But not surprising. That's why there are so many crappy patents. And so many lawsuits. Maybe patents should be reserved for "inventors" who actually know what they invented before they meet with their attorney. In fact, how do these clueless guys even realize they invented anything at all?"

It is too early to tell, but Richard is angling to be included in the pantheon of all-time useless posters such as MM, MM2 (aka Mad Max), and 6K.

Based upon your comments already, I doubt you are either a seasoned patent prosecutor or a patent litigator.

Inventors know their technology. However, they don't know the law. This is why many of them don't understand the extent of what they invented untl they've talked to an attorney. Such a simple concept that seems to elude you.

******

"Why should the "inventor" have a 20 year monopoly on some idea which is the "collaboration" of the inventor and his attorney? Why should he be able to exclude the public from practicing what is in the "gray water?" Why should this "collaboration"be hidden behind the privilege? I think prosecutors who "suggest" inventions to their clients should examine the real damage they are doing to the trust the public has the the patent system. Again, no wonder we have too many patent lawsuits -- we have way way too many patents."

Actually, this comment just shows your true colors ... just another anti-patent, technology-communist who thinks that technology should be distributed for free.

Your railing on this "collaboration" evidences your ignorance to the simple solution .... the patent attorney could be named a co-inventor, assign his rights to the inventor, and the source of your whining will be extinguished.

[Leopold Bloom]

"Why should the 'inventor' have a 20 year monopoly on some idea which is the "collaboration" of the inventor and his attorney?"

Why not? There's nothing wrong with collaboration itself - the law permits recognizes joint invention. Further, the attorney is an agent for the inventor and/or the assignee - for all intents and purposes the attorney is the same person as the inventor. Any suggestion that the attorney acquires an interest in the patent is wrong, whether or not his name is on the patent, and whether or not he/she signs an assignment.

All this bickering is formalism. Again, what is the public policy behind invalidating a patent over inventorship issues, when there is absolutely no dispute over who owns the final results of the "collaboration"?

[Just an ordinary inventor(TM)]

Dear Leo,

Right on. Allow me to add that ideas, art, music, discoveries, inventions and creations of all kinds are our most precious commodity and evidence of the Miracle of our lives in this Magical, Mystical place we call the Universe.

[pds]

"Now admitting it's a game and that you're just an unimportant roll player in that game? That's a ten step process."

The minimum salary for an NBA player this past season was $427,163. I imagine a lot of 11th and 12th players on the bench got paid this much. Then again, there are a lot of players that were making millions and millions sitting on the bench (i.e., "unimportant roll player").

Now correct me if I'm wrong, the NBA is a game? Correct?

Hmmm ... the pay isn't too bad to be a unimportant roll player in nothing but a game.

Can we think of more games ....
Marketing? Definitely a game.
Money mangers? Definitely a game.
Acting? The game of charades.
Architect? The game of who will pay me money to make a building more expensive to build than it has to be.
Anybody in a corporation? The game of pretending to do working and be productive while spending as much time surfing the internet as possible.
I could go on, but this is getting boring.

Life is one big game .... so what is your point?

[Patent_Medicine]

When I flesh out embodiments and ranges with inventors, they've nearly always thought of them already, and had simply dismissed them ahead of time as insufficient, inefficient, costly, unavailable, dangerous, commercially undesirable, etc. An inventor always zeros in on his personal best mode, and then dismisses all alternatives as somehow inferior. Without a brief explanation of patent law first, the question "But could someone do that with Y?" usually elicits answers like:

"Well, yes, but the yield is too low."
"Compound Y isn't commercially available."
"Yes, but Y is a controlled substance."
"Yes, but Y would damage the machine."
"Yes, but the product would smell bad."
"Yes, but we'd have to charge too much for the product."
And my personal favorite: "Well, I suppose so, but why on earth would anyone want to do it that way? That's just silly."

We almost never invent anything. It's that they've already mentally run through our "silly" questions, and have dismissed the alternatives for various reasons that have no bearing on patent law. We're simply reversing the R&D process, and fleshing the practical aspects back out beyond what ended up being chosen as the best mode.

[Richard]

pds:

Just for the record, I'm a patent litigator. Otherwise, I wouldn't care.

[jj]

When an inventor comes to me, and before the inventor discloses anything to me, I inform the inventor that he has likely developed a preferred example of the invention. I then inform the inventor that it may be quite likely that he could describe his development in great detail and in abstract, essential summary using generic words. Then I inform the inventor of the value of using generic words over detailed specific words; for example instead of saying "dog", say "4 legged warm bodied animal", or "warm-bodied animal" or just plain old "animal". I make sure the inventor understand the idea of using abstract language to describe the development in general generic terms initially, and then to describe the development by using specific language. Then I tell the inventor an example: thing A coupled with thing B is the generic for a shaft being rotatably mounted with a base, etc.
Generally, I tell the inventor that it important for him to understand this requirement in order for the inventor to describe his development in a general way, and then to give specific examples on how the general way may be implemented.
I never suggest embodiments to the inventor; I inform the inventor that he is responsible for identifying and describing all of the embodiments.
I tell the inventor that I am a patent agent, not an inventor/developer.
I teach the inventor the concepts so that the inventor may better serve his interests. I don't do his job for him, but I teach him.
If you feed a man fish, he eats today; if you teach him to fish, he can feed himself for a lifetime.
I inform the inventor it is in his best interests to provide as many examples (reads embodiments) of his general concept; the more the better. And I teach the ivnentor that his examples should not describe existing knowledge that is available to the public.
As an agent, I inform the inventor that he is like a woman that has given birth to a specific child, and that he thinks his child is the best child; I tell the inventor that his child is a very nice child, and that there are likely more children that the inventor can provide and that the inventor should, in his best interest, ponder what those children may look like, and to come back to me with the description of his best child and his alternative children. I use analogies that help the inventor to help himself/herself. I educate the inventor.
I am an agent; I am not an inventor.
If the inventor asks me to develop additional "children" related to his best child, I inform the inventor that I would have to be listed as a co inventor, and that I usually do not become involved in that activity for insurance purposes.
I find that inventors understand the situation once they learn the concepts; once they do, they are very cooperative in making sure their developments are protected. Inventors know how to look out for themselves once they become informed and educated.
I am an agent; I educate the inventor on what information he needs to provide to me as an agent. I am not an inventor.

[Just Visiting]

Invention is based on conception. Reduction to practice activities is not inventorship. The lines between the conception and reduction to practice can be blurry to non-existent. I'd recommend a perusal of sections 2138.04 and 2138.05 of the MPEP as an introduction to the topic.

Attorneys should make every attempt to keep their activities on the reduction to practice side of things and to make sure their work inures to the benefit of the inventor.

[New at this]

There are a couple of points that seem to be missing from this discussion that are important to consider.

1. Most inventors are not very good with words. So any disclosure they provide will 99.9% of the time be deficient in many respects regarding the invention. It's not their job to describe the invention - it's the patent attorney's job. One of the main aspects that makes a good patent attorney is that they are gifted with words. Describing and claiming a "thing" with the written word is a lot harder than most realize. So part of the job of the patent attorney is to interview (or interrogate) the inventor to figure out what the inventor did not put in the disclosure that was nonetheless something the inventor had already considered.

2. Many inventors keep information from their patent attorney. Weird, but true. Many inventors I have met are very proprietary about their information, so will only put the basic idea in their disclosure. Then the patent attorney has to once again interrogate the inventor asking "What about this, would this work, how about that,...etc." in order to discern the alternative embodiments, and even the inventor's best mode, etc.

It's the patent attorney's job to put into words all of the things floating around in the inventor's head about the invention, that likely did not make it into the written disclosure.

[teacup]

Everyone who's annoyed with point 3 ought to read it again. The point is-->

"...dreaming up farfetched embodiments is a way of isolating the essence of the invention from its illustrative implementational details."

You are not becoming a co-inventor, you are understanding how to properly claim the invention.

[GideonPope]

PDS wrote - "Life is one big game .... so what is your point?"

My point is that the guys in the NBA know it's a game.

Based on this thread, most patent practitioners don't.

PDS wrote- "The minimum salary for an NBA player this past season was $427,163"

Is that right?

Darn, nice to know that my education makes me worth more than a least a few guys whose greatest contribution to the world is bouncing a ball.

[SF]

Lionel Hutz wrote, "If the person making the suggestion is not sure whether it will work and the applicant is, then they are not a joint inventor."

Not always. Inventors don't have to know that something works. For instance, if they are not one of ordinary skill in the art, but one of ordinary skill in the art would know how to make and use the invention and would recognize that it would work, then they are inventors.

Lionel Hutz wrote, "At least half of all currently issued patents would need to be corrected to include the attorney as a coinventor if the mere suggestion of a claimed alternative or broader claims were filed than were suggested by the initial description."

Hence the word "may" in my statement. If you conceive an alternative feature to what the inventor conceived, you may be a joint inventor. But your status as an attorney is irrelevant. Either you're a joint inventor or you're not.

Determining how to broaden a claim (changing a term or omitting an element from a claim) will not make you an inventor. But if you come up with an embodiment that renders a previously essential element unnecessary, you may be an inventor. And adding a new or alternative feature that doesn't read on the inventor's initial idea may make you an inventor. Attorneys don't have a blank check to add anything without concern as to whether they are a joint inventor. They are probably free to suggest obvious variants, though. That said, it's better to solicit (without suggesting) the obvious variants. Attorneys are paid to distill and claim the inventive concepts, not to conceive alternative inventive concepts.

[pds]

"Based on this thread, most patent practitioners don't."

Really????

If most patent-practitioners thought of obtaining a patent was akin to some life-and-death struggle, they would be asserting their rights as co-inventors ... because danm it, they should rewarded for their innovations.

On the contrary, most patent practitioners, at least in this thread, just think that making sure that the inventor realizes the full extent of his/her invention is just part of the process.

Sure we could be named as inventors on many applications, and sure we don't have any obligation (unless it has been contractually spelled out in the engagement letter) to assign the invention to the inventor. However, as professionals (remember, professionals play in the NFL, NBA, MLB, NCAA ... OK, the last was just a joke) in our field, we simply let the inventor take the credit for all the aspects (unless, of course, we are playing by 6K's rules in which there is only a single "invention") of the invention even though we may have employed our skills/experience as to both the law and inventing to both expand and refine the concept of the invention.

In the end, if done properly, the patent practitioner should develop a set of claims that covers all aspects (from broad to narrow) of the invention regardless of what the inventor's initial thoughts were. Unlike 6K, who thinks that there is one and only one unchangeable invention, the rest of us realize that the concept of the "invention" changes as more information (e.g., the prior art) is considered and more questions are asked.

[Babel Boy]

jj wrote:

"If you feed a man fish, he eats today; if you teach him to fish, he can feed himself for a lifetime."

Sorry, jj, we're going to have to enter a 102 anticipation rejection on that one. The original Taoist aphorism was:

Catch a man a fish and he eats for a day; teach a man to fish and he spends every weekend sitting around with his buddies in a bass boat drinking beer.

[pds]

"Just for the record, I'm a patent litigator. Otherwise, I wouldn't care."

I wouldn't have pegged you for one because I don't know a patent litigator would would of seriously written "I, for one, can't wait to put this book in front of a jury and show them how weak the claims of so-called inventors to have invented anything."

My guess is that you are fairly new, maybe have been staffed on a couple litigations, and perhaps have only defended against a suit of patent infringement. Otherwise, you would have a more balanced view on the topic.

[Lionel Hutz]

Richard,

You apparently have not worked the prosecution end. You're characterization of inventors is inapt.

Many inventors of very creative devices do not know what the "invention" is.

For example, many times an inventor will create Device A, which does action B. The inventor many times will Know that he has never seen or heard of Device A and that Device is a significant improvement over all prior devices and methods for performing action B.

A good attorney will ask questions to isolate the core inventive concept. The majority of the elements of Device A will be known. Through questioning the attorney discovers which new element or which combination of elements is new and responsible for the increased performance.

This process includes suggestions by the attorney of alternative embodiments to find out whether those embodiments are just as useful.

Inventors know they have something new, or at least something they have never seen before. They have not always analyzed it compared to the prior art of which they are aware to determine what makes it novel.

[Lionel Hutz]

Richard,

What damage is being done? Please describe an example where someone is harmed because the attorney is not listed.

[Lionel Hutz]

Patent_Medicine wrote "We almost never invent anything. It's that they've already mentally run through our "silly" questions, and have dismissed the alternatives for various reasons that have no bearing on patent law."

This is mostly semantics, but I agree with PM. In many cases, when I bring up alternatives with the inventors they have at least briefly considered many of them, but often have dismissed them for a variety of reasons.

In some respects, I may have spoken glibly initially.

[anonymous]

"Sure we could be named as inventors on many applications, and sure we don't have any obligation (unless it has been contractually spelled out in the engagement letter) to assign the invention to the inventor."

I think the courts would easily find a fiduciary duty to assign, but that's just a hunch.

[Wasn't me]

Richard,
What is the harm to the public if we never take a close look at the gray water? (and I mean harm to the public, not to your client trying to invalidate a patent in a litigation)

Your suggestion that the inventor does not deserve the patent in that case is a very European notion that patents reward inventors for their efforts. However, in the U.S., the patent system is a quid pro quo - we allow a monopoly to get the disclosure. Interestingly in Europe, where the moral rights view is prevalent, they explicitly don't care who invented the thing.

When you take a public policy view, you will understand why both systems dump the gray water out without looking at it.

I do not advocate invention by attorney - that is not a good idea for all of the reasons listed throughout this thread.

However, it would be extremely inefficient to force attorneys to evaluate every action under a cross-examination type environment (e.g. should questions be "open" or "closed") just to get around to writing a decent patent that provides reasonable protection around the main idea.

If we start checking the gray water, I can see hiring a third party law firm to have an attorney sit there and object to leading questions, etc., during the inventor interview. "Objection: that embodiment is hearsay not falling within an exception." At the end, they could even write an opinion letter that the patent does not have any patent attorney invented material. Gray water checking could turn into a patent attorney fee-for-all.

[Lionel Hutz]

SF wrote "That said, it's better to solicit (without suggesting) the obvious variants. Attorneys are paid to distill and claim the inventive concepts, not to conceive alternative inventive concepts."

That's why I stated that any ideas the attorney has should be asked in the form of a question and as someone else said should be as simple-minded as possible.

[e6k]

"You are not becoming a co-inventor, you are understanding how to properly claim the invention."

Tell you what teacup, if you don't put the farfetched in the spec/claims then I agree. But guess what the guys above are doing?

"essential element"

SF everyone knows there are no essential elements in patents these days. If there were, then everyone would specify that for me so I could 112 2nd it later for not having been put in the claims.

"Attorneys are paid to distill and claim the inventive concepts, not to conceive alternative inventive concepts."

Hear hear.

"whose greatest contribution to the world is bouncing a ball."

GP their contribution is keeping masses entertained. Just like movie stars etc.

"Then the patent attorney has to once again interrogate the inventor asking"

He doesn't have to ask sht. If the inventor doesn't want to give up the best mode then the application has no best mode and is sunk. Bye bye, maybe next time they'll feel like disclosing a complete invention. I pity you guys that are working with these applicants that border on the retarded and have at least never even glimpsed the patent laws. Once again, patent attorneys assisting the demise of the system by assuring that they're the applicant rather than letting the applicant be the applicant and them represent what the applicant wants to apply for.

"2138.04 and 2138.05 of the MPEP as an introduction to the topic."

Thanks

""Well, yes, but the yield is too low."
"Compound Y isn't commercially available."
"Yes, but Y is a controlled substance."
"Yes, but Y would damage the machine."
"Yes, but the product would smell bad."
"Yes, but we'd have to charge too much for the product."
And my personal favorite: "Well, I suppose so, but why on earth would anyone want to do it that way? That's just silly."

We almost never invent anything. It's that they've already mentally run through our "silly" questions, and have dismissed the alternatives for various reasons that have no bearing on patent law. We're simply reversing the R&D process, and fleshing the practical aspects back out beyond what ended up being chosen as the best mode."

That's amazing. I somehow felt that was probably moreso the reason many times. So it turns out that the inventor himself doesn't regard any of that as his invention, but you force it into the application anyway for the sake of getting broad coverage. GG 112, you're not needed here.

"Why not? There's nothing wrong with collaboration itself - the law permits recognizes joint invention. Further, the attorney is an agent for the inventor and/or the assignee - for all intents and purposes the attorney is the same person as the inventor. Any suggestion that the attorney acquires an interest in the patent is wrong, whether or not his name is on the patent, and whether or not he/she signs an assignment.

All this bickering is formalism. Again, what is the public policy behind invalidating a patent over inventorship issues, when there is absolutely no dispute over who owns the final results of the "collaboration"?"

Yes, they're the same person, in fact, when they piss, they do so into the same urinal at the same time.

The public policy behind it is SIMPLE. The public doesn't want people submitting applications for things THEY DID NOT INVENT. In fact, this happens to be codified in the first little portion of 101. In fact, not only does the public not want applications submitted, but they outright reject such applications.

"I am an agent; I educate the inventor on what information he needs to provide to me as an agent. I am not an inventor."

One man stands tall amongst the many. If only he could persuade the rest of you the patent system might turn itself around right fast.

"

"{M]any inventors don't even recognize what their invention is until sitting down with the attorney."
Scary. But not surprising. That's why there are so many crappy patents. And so many lawsuits. Maybe patents should be reserved for "inventors" who actually know what they invented before they meet with their attorney. In fact, how do these clueless guys even realize they invented anything at all"

Richard for PTO director!

"Your railing on this "collaboration" evidences your ignorance to the simple solution .... the patent attorney could be named a co-inventor, assign his rights to the inventor, and the source of your whining will be extinguished."

As always pds misses the blatant. If such a "fix" were implemented the congress would immediately smack attorneys down. They, unlike you, recognize the blatant folly, and indeed malice, of having attorneys be the inventors.

[e6k]

I should add pds: and that's why you, nor any of the attorneys on here advocating such a stance will be happy to have lunch with me and a higher up of the PTO, congressman, or ethics officer of the bar (does such a beast exist?) so that you can explain your position. LL just got done telling us about what happens IRL if you're found to be doing this sort of thing.

[SF]

"SF everyone knows there are no essential elements in patents these days. If there were, then everyone would specify that for me so I could 112 2nd it later for not having been put in the claims."

But there are certainly essential components in the real world. I tried starting my Honda without a fuel pump and, guess what, it didn't work. That doesn't mean a fuel pump has be recited in every patent claim to a car. But if an attorney conceived an alternative that rendered a fuel pump non-essential, it certainly would be an invention. Thus, there's a difference between recognizing something is not essential for a claim (not an invention), as opposed to conceiving an alternative that renders a real-world essential component unneccesary.

[pds]

"The public policy behind it is SIMPLE. The public doesn't want people submitting applications for things THEY DID NOT INVENT. In fact, this happens to be codified in the first little portion of 101. In fact, not only does the public not want applications submitted, but they outright reject such applications."

Grow up, will you? If the attorney is named co-inventor, is that enough to make you crawl back into your hole?

"Richard for PTO director!"
Richard ... remember, you are known for the company you keep.

"They, unlike you, recognize the blatant folly, and indeed malice, of having attorneys be the inventors"
Ever heard of co-inventorship? You do work at the USPTO do you? Or perhaps it is that you only work for the DMV and aspire to be a greater drain on society? Wow .... you must have started drinking early today.

[pds]

"I should add pds: and that's why you, nor any of the attorneys on here advocating such a stance will be happy to have lunch with me and a higher up of the PTO, congressman, or ethics officer of the bar (does such a beast exist?) so that you can explain your position. LL just got done telling us about what happens IRL if you're found to be doing this sort of thing."

Doing what thing? My job? Helping an inventor understand the invention? Doing what patent attorneys (and probably even some examiners) have done the last century or so?

I would be happy to sit down with you and anybody with some power at the USPTO or Congress ... it would be a pleasure to show just how incompetent some of the new examiners are at the USPTO. Examiners not only pretending to be judges but flaunting the law at the same time. Of course, I could get into the whole ignorance of the law aspect as well as the whole I don't care how much money the applicant has to spend to get a patent because the applicant is just a big money pit attitude.

Don't you ever wonder why so many examiners have preceded comments with the statements like "not all examiners are like 6k" or "I'm an examiner, but I don't act like 6K"? It seems to me that your brethren have no problem throwing you under the bus.

Regardless, I'll let karma take its course.

[Wasn't me]

e6k:
Your submitted "public policy" is an action - requiring all inventors to be listed - and not a reason for the action which is what a public policy would be. Further, public policy is about what judges and other lawmakers think is best for the public, not what the public literally thinks.

How many members of the public have any idea what section 101 states or what the legal standard for inventorship is?

[Lionel Hutz]

"That doesn't mean a fuel pump has be recited in every patent claim to a car. But if an attorney conceived an alternative that rendered a fuel pump non-essential,"

SF,

There is a subtlety here. Many times when deciding how to claim an invention, I will look at the function of a particular component and besides trying to use a function noun for the item, I will think of other components that could perform the function. I then ask the inventor about each of the others.

I don't think my position is that far removed from the people arguing with me. My process is the same, I simply view it differently - I believe a little more honestly.

[SF]

"I don't think my position is that far removed from the people arguing with me. My process is the same, I simply view it differently - I believe a little more honestly."

I understand the sublety. But the sublety hinges on the contribution itself, not the contributor. Broadening-out certainly isn't invention in my book. But inventing could include broadening-out plus drilling back down for alternatives that fall within the broadened term and that's where the line blurs. You are free to broaden and then ask the inventor what other components could perform that broad function. But if you volunteer those other components, you aren't insulated because you're an attorney. At that point, it all hinges on the significance of your contribution (as it always does with joint inventorship issues). And if those volunteered components end up in a claim, it will be legitimate to argue (although not dispositive) that, if they were significant to end up in the claim, they are significant enough to make you a joint inventor.

[patentboy]

Which leads us back to my hypothetical that e6k did not address:

Edison's attorney claims the light bulb broadly but does not mention Tungsten in the claim. He does mention it in the spec. Would that make him a co-inventor?

[JohnDarling]

"...and that's why you, nor any of the attorneys on here advocating such a stance will be happy to have lunch with me and a higher up of the PTO, congressman, or ethics officer of the bar (does such a beast exist?) so that you can explain your position."

You're a riot. So you're telling us that you can get us a lunch meeting with a "higher up" of the PTO? And who is that going to be, pray tell? Your good buddy Dudas? The same guy whom you thought doesn't even have a law degree?

Even if you could somehow arrange such a meeting, why would any member of the patent bar attend? You are clearly an arrogantly, gleefully, willfully and invincibly ignorant GS-9. The masters you serve are not much more.

You haven't learned much despite being schooled here over and over. Your masters haven't learned much as evidenced by their appeal of the PI against the new rules.

So what would such a meeting accomplish? Are we going to find out that in person you are entirely reasonable? Or that your masters are?

That said, name the place and time. And don't forget to let me know which "higher up" will be joining us.

ROFLMAO