Is there a law that prevents a patent lawyer from using his position to modify failed patents he hears about and create a successful patents for himself? I can see that being a conflict of interest.
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2Note that any such patent is likely to be ruled invalid on the basis of prior art.– Eugene StyerMar 20, 2022 at 19:28
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3The body and title here are asking rather different questions– David SiegelMar 20, 2022 at 20:00
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An aside is that patent examiners may not come into ownership rights of any US patent other than by inheritance.– George WhiteMar 22, 2022 at 1:12
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An interesting case would be when the “inventor” has only identified a problem with no clue has to how to solve it. That’s not an invention. Later the attorney (or agent) thinks of a clever solution. It is an invention solely made by the attorney but is it ethical to pursue?– George WhiteMar 22, 2022 at 1:22
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4 Answers
If the patent lawyer "hears about" such failed patents from clients, and then uses the client's work and modifies them into successful patent filings, that would seem to be a clear conflict of interest, just as a business lawyer cannot use info learned from a client to make his own business deals, unless the client grants an OK.
But if the patent lawyer just hears through shoptalk, or through communication by, perhaps, patent examiners that the lawyer works with, I don't see any conflict of interest, although as the comment by Eugene Styer suggests, there is likely to be enough prior art to make the patent invalid.
answered Mar 20, 2022 at 20:06
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I'm not familiar with any meaning of "consomme" other than the soup. Mar 21, 2022 at 22:58
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@Acccumulation thanks. That was a typo compounded by an incorrect choice from a spell-check menu. It is now fixed Mar 21, 2022 at 23:27
A patent lawyer can own a patent.
A patent lawyer can also be an inventor who doesn't use ideas from his or her clients.
If the patent lawyer's invention is actually derived from an appropriation of client ideas about which the patent lawyer was consulted, there can be a violation of professional duties by the lawyer, although the fact pattern contemplated by the body text of the question is not usually how it arises.
A more common fact pattern (although still extremely rare) which I have seen arise in practice, is one in which a patent lawyer is approached by two independent sets of clients who have a similar patentable idea for which no patent application has yet been filed, with one of those clients financing the work in part by giving the patent lawyer part-ownership in the patent to be sought, and the other offering to pay by the hour. Then, the lawyer uses information obtained from one potential client offering to pay on a purely fee for services basis whom he declined to represent further, to assist the other client obtain a patent enhanced by the other client's ideas.
answered Mar 21, 2022 at 21:42
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1The USPTO’s ethics rules for registered practitioners is based on the ABA model rules. In the section that starts “ (i) A lawyer shall not acquire a proprietary interest in the cause of action or subject matter of litigation the lawyer is conducting for a client, except that the lawyer may:” the USPTO has added as an allowable exception “ (3) In a patent case or a proceeding before the Office, take an interest in the patent or patent application as part or all of his or her fee.” so that part is allowed but I would personally be reluctant to take an interest in a client’s application. Mar 22, 2022 at 1:09
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@GeorgeWhite I agree that it is allowed and I could image circumstances where it made sense, although arguably, it is a point that ought to be disclosed to client other than the one in whom the proprietary interest is taken. Mar 22, 2022 at 1:20
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In the case you mention the attorney is clearly in the wrong to disclose one client’s contribution to the other or otherwise make use of it but the temptation as a co-owner is too much? Mar 22, 2022 at 1:26
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Nothing prevents a patent lawyer from owning a patent.
While a patent lawyer can own patents, trying to fix failed patent application doesn't in itself grant any valid patent, because prior applications of an item mean the item is prior art.
Is there a law that prevents a patent lawyer from using his position to modify failed patents he hears about and create a successful patents for himself?
Yes. 35 U.S.C. 115 requires the applicant to execute an oath stating that he is the inventor(s) or is duly authorized by the inventor(s) to apply for the patent.
I can see that being a conflict of interest.
Regardless of the lawyer's relation (if any) with the inventor(s), the lawyer's scheme would hinder "the very point of patents, which exist to promote creation", Ass'n or Molecular Pathology v. Myriad, 133 S.Ct. 2107, 2116 (2013).
answered Mar 21, 2022 at 0:11
