Lawyers getting patents: What should the rules be?

I've written several times about patent lawyers who acquire and assert their own patents. Now I'm going to use the blog to ask for folks' opinions and thoughts on this issue, and what the policies should be at law firms, and beyond.

In my last post, I wrote about a court case involving a law firm that has had rules in their contracts since 1999 regarding patent experts getting or asserting their own patents. I've also written about Scott Harris, a former Fish & Richardson attorney who became embroiled in a serious conflict with his firm after getting his own patents which were then sold and used to sue Google, a firm client, and several other IP lawyers filing their own patent lawsuits.

It's clear there are widely varying policies (or lack thereof) around this issue. It's possible that some law firms have instituted policies recently, perhaps in direct response to the Harris case.

Some lawyers have told me they have ethical problems with patent lawyers becoming named inventors, since the attorney can't help but get ideas from the clients they talk about technology with. One told me he thought patent lawyers should be barred entirely from being named inventors on patents, since it's too easy for them to "game the system." Others say, inventorship shouldn't be closed off to anyone—why single out lawyers to stop them from earning patents on their inventions? And they note, it's quite normal for IP lawyers to come to law firms from research and engineering backgrounds, already being named inventors on many patents.

Suing your own client, present tense, is obviously in very poor taste. But acquiring patents is a long-term process. Some lawyers are prosecuting patents while working in one capacity, such as at a big law firm, and then moving on so they can they assert them more easily. No need to list all the examples of lawyer-inventor assertions here, but there are plenty.

So, practitioners: does your law firm have rules about lawyers getting their own patents? Should it have such rules? Heard about other law firms that have instituted "Scott Harris rules?" In-house counsel, would you like to see such rules in place? To non-lawyers interested in innovation and the patent system: does this kind of patenting sound like "gaming the system" to you? Is this really "invention?"

Feel free to comment below, email, or call. I'm going to start collecting interviews, tips, and opinions on this topic, looking towards writing a trend story early next year.

Photo: Flickr / Walsh

Comments

[IDBIIP]

I can't imagine any rule that wouldn't simply lead to even more litigation other than to make a rule against filing patent lawsuits against former clients whose confidential data you had access to if you're one of the inventors on the patent.

That's not to say it's an ideal rule by any means, or that there aren't ways around it (e.g. have your "friend" patent it) and it might be overly restrictive (maybe allow patents filed *before* you worked for that company?) but if you make a rule, it'd have to be really simple.

Otherwise, it's merely another thing that people will spend years litigating over the exact meaning of.

[Colin]

I think law firms need to seriously get on this issue and ensure that all practitioners sign some form of non-compete or non-prosecution agreement. Maybe this should be something forced on firms by malpractice providers.

To me, there is nothing slimier than using the technological knowledge you gained working for a client to file a patent application that later issues and is used against the client. Nasty stuff.

I became a patent attorney in part because I thought it was a more 'honorable' slice of the profession, but clearly even patent lawyers can fall prey to the same ethical lapses that give lawyers a bad name generally.

[Andrew Goldberg]

All,

Thanks for comments thus far. Another idea comes from a patent attorney who emailed me privately. He notes that this problem isn't a problem with in-house counsel, because companies use standard invention-assignment agreements. So the employer would have a very strong argument that any patents resulting from "on the side" patenting actually belong to it, and not to the "rogue" patent prosecutor.

Law firms, he suggests, could simply have patent attorneys and experts sign similar invention-assignment agreements. That way, if the patents were asserted, the law firm would be able to argue that it owns the patents, not the attorney.

This is the argument that Fish & Richardson made in its litigation against Scott Harris—ultimately without success. (Harris had never signed an invention assignment agreement.)

[IDBIIP]

If you do that and they do work for more than one client, couldn't that create a dispute about who the invention would get assigned to? Or do they already only work for one company at a time?

Because it would be an interesting case if a lawyer had worked for two clients, only to patent something and assert the patent against both. In that case, which of the two would own the patent in the end?

[Joe Mullin]

IDBIIP,

It is an idea that would work for law firms but, I think, would be harder to enforce in a consultancy/freelance situation.

And your question is very topical. I've already covered one case where there is some controversy over patenting while consulting; see my Odom v. Microsoft post from Dec. 2.