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December 03, 2008



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.


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


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.)


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


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.

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