Inventive patent attorneys

As long as they're asking the questions and not answering them, I'd say it's still the inventor that's the first to have the permanent and concrete conception.

Let me add two additional flavors to the question:

1. Often a dependent claim does not represent an inventive step but is added merely for other well-known purposes. Should a contributor of such dependent claim be automatically considered an inventor?

2. Often, during prosecution, the primary element is found unpatentable and the patent is granted on a secondary element. If such secondary element is the patent attorney's contribution, would the attorney remain the sole inventor?

Thanks Motti, and welcome.
These are great questions.  It is surprisingly uncommon to see a patent attorney listed amongst the inventors - I wonder whether there are a whole lot of patents at risk because of this. 
There are some forensic (and potentially privilege) problems that one would encounter during litigation.  However, this seems too risky to rely on solely as the patentee and still worth a try from the defendant's perspective.

Thanks Michael
I don't think that its always the inventors who are asking the questions...

Hmm, this is something I've also thought about. 

A client often goes to a patent attorney with a product rather than a concept.  In seeking to protect the product, it is often left to the patent attorney to identify the inventive concept, and once this is done alternative embodiments present themselves.

When I was a junior patent attorney, I raised this issue with a senior partner at the firm I then worked for (when I thought that I was a co-inventor!) and was told that we didn't cite ourselves as inventors.

These days, most of my work is patent invalidity litigation for generic pharmaceutical suppliers, and I would absolutely rely on a failure to cite the patent attorney as a ground of invalidity - if the information was available. 

The "they" in "they're" was meant to refer to the patent attorneys, not the inventors.

Thanks Tim and welcome
The interesting question is the extent to which you or others charged with invalidating patents, will go looking for this information, to see if you can get it. 
I think its possible to identify patent claims that are more likely to be subject to this ground of invalidity - do you agree?

Thanks Michael
I get it now.  Sometimes the questions (from the patent attorneys) are along the lines of: "This is really interesting - would it also work in this other way / situation?"

Unless the question is purely rhetorical, I would say that by definition there cannot be conception, no matter how detailed the question.

Duncan, I'm not sure that it's so easy to see "patent attorney-invention claims" (or conversely, most patent claims are of this type), as patent attorneys are often active participants in the process of developing an understanding of the invention.  I think it's difficult to draw clear lines here.

Following from this, Michael, I think it's artificial to see the patent attorney's role as only to ask questions.  If the questions asked lead to particular answers, isn't the difference between asking and answering the question one of form, not substance?    

Thanks Tim - I'd have to beg to differ about being able to tell how much potentialy inventive contribution a patent attorney has had.  But I'm not going to say how, here.  Have to agree that you can't always tell, but I think there are ways to get a good suspicion and work out whether it is worthwhile to look into it.

@Duncan and Tim:

When I was a private practice attorney at a respected IP boutique, we had an attorney who added so much to the disclosure that the decision was made to add the attorney as an inventor.  This caused much discussion at the partnership level as to whether this was the right thing to do.  A subsequent Federal Circuit opinion said that a patent attorney is a facilitator, not an inventor.  (I don't have access to case law these days, and can't give a cite on this, but the holding was no inventorship.  In this case, the defendant had challenged inventorship, and tried to have the patent invalidated on these grounds and failed.)  So, at least in the US, the answer is that patent attorneys, no matter how "clever", are not inventors.  As such, there should be little concern that a patent attorney should not ask questions directed toward maximizing the scope of the invention, if that is the desire of the inventor.

Back when I was an attorney in US private patent practice, we had a young attorney who added so much to the patent application that he thought that it was appropriate to add himself as an inventor.  This caused much discussion at the partner level of our firm for the reasons discussed in the original post.  A subsequent US Federal Circuit case cleared up the issue (I don't have a cite) by holding that a patent attorney was merely a facilitator of communication between the inventor and the US Patent Office and, as such, did not need to be named as an inventor even if he/she added considerable subject matter to the inventor's original concept of the invention.  (The facts of the case were that the infringement defendant challenged patent validity based on inventorship when it came out in deposition exactly how much the attorney had contributed to the claimed invention.)  So, at least in the US, patent validity cannot be cannot be challenged on the basis of the attorney's not being named as an inventor.  This leaves the question of whether patent attorneys should add so much to the invention that, but for them being a patent attorney, they would have to be named as an inventor.

Thanks Jackie, and welcome.

“So, at least in the US, patent validity cannot be cannot be challenged on the basis of the attorney's not being named as an inventor.”

Are you referring to Solomon v. Kimberly-Clark Corp (00-1033, Fed Cir 2000)?   I think the result is probably better characterized that it is difficult but not impossible to invalidate a patent based on this ground.  Interestingly, the court seemed to rely on an assessment of ownership rather than inventorship.  Clearly for many reasons (including ethical ones) a patent attorney can’t have an interest in a client’s patent.  However, they may still be an inventor (and thereby be obliged to be listed and to immediately transfer any rights to the client).

Here are a couple of quotes.

"While an inventor's statements made during the course of litigation might in some circumstances justify a court in concluding that the named inventor "did not himself invent the subject matter sought to be patented," 35 U.S.C. ? 102(f), it would require much stronger evidence that the named inventor was not the true inventor to justify a conclusion of clear and convincing evidence of invalidity. Despite some vagueness and inconsistency in Solomon's deposition testimony, she maintained throughout that she invented the claimed subject matter, and she submitted evidence that the DX2 prototype in her patent attorney's files embodied the claimed invention. Moreover, the DX13 prototype actually supports Solomon's position, as she has consistently maintained from the outset of the litigation that her invention includes panties and panty liners with a depression of uniform thickness. See Solomon I"

"As for the suggestion that Solomon’s attorney might be the true inventor, we regard that argument as misguided. An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage. An attorney performing that role should not be a competitor of the client, asserting inventorship as a result of representing his client. Cf. Patent and Trademark Office, U.S. Dep’t of Commerce, Manual of Patent Examining Procedure app. R § 10.64 (7th ed.1998) ("Avoiding acquisition of interest in litigation or proceeding before the [Patent and Trademark] Office"). Thus, to assert that proper performance of the attorney’s role is a ground for invalidating the patent constitutes a failure to understand the proper role of a patent attorney. Accordingly, we conclude that the district court did not err in rejecting Kimberly-Clark’s section 102(f) invalidity defense. We therefore need not assess the remaining evidence presented by Kimberly-Clark, or reach the parties’ arguments relating to 35 U.S.C. § 256."

For those who are keen to explore this area in more detail, you may wish to have a look at the various rants in the discussion on a recent post at Patently'O.

That's the case, Duncan.  And, your characterization is correct.  The context from which my law firm partners received this case was that our good patent drafting efforts were just that, and we didn't need to inject ourselves into inventorship.  Of course, in the US, patent litigators bring up all sorts of arguments, some winnable and some not.  What is sure is that issues like this will continue to keep US lawyers up at night worrying about malpractice liability, which is one of the main reasons I let others do the drafting these days!  Off to Patently-O as you suggest.

Great, thanks Jackie

I agree with your characterization of Solomon v. Kimberly-Clark Corp.  It is not impossible to invalidate a patent based on this ground, but is difficult (as it should be).
In my opinion, assisting an inventor in preparing an application should not rise to the level of inventorship.  To find otherwise would lead to absurd results including: attorneys having interests in their clients patents (always an ethical nightmare);  automatic allegations of invalidity in every Answer (based on incorrect inventorship); automatic allegations of inequitable conduct (resulting from erroneous declarations); and an impediment to the free flow of information between the inventor and his/her attorney.

Mike - thanks very much, and welcome.
This all makes a lot of sense.  An interesting aspect is the attorney owning an interest in the client's invention.  Presumably this would / could be readily dealt with by a change in retainer agreements so that all relevant IP (perhaps best limited to patentable IP) is automatically transferred to the client?  Shouldn't this be standard anyway - and doesn't it deal with a lot of the other issues as well?