This Article addresses ethical and malpractice issues arising from the fact that attorneys who prosecute patents almost inevitably add to the inventor's original disclosure to the attorney. In the course of drafting a patent application-a process in which the attorney describes, necessarily in his own words, what the client has invented-the attorney will, at minimum, contribute ideas, thoughts, and means of expression that the client had not used. The application is not a verbatim transcript of an interview with the client; it is the creation of the patent lawyer. ...
However, under established law governing inventorship and derivation, seldom during typical patent prosecutions will an attorney actually engage in conduct that qualifies him as an inventor. There are exceptions, however.'° For that reason this Article concludes by discussing policies and procedures for attorneys to follow to reduce the likelihood of engaging in conduct that would require them to be named as inventors and to obviate the pertinent ethical issues if that circumstance arises.
Hricik, David; Geczi, Alexandra; and Thomas, Zachary
"Save a Little Room For Me: The Necessity of Naming as Inventors Practitioners Who Conceive of Claimed Subject Matter,"
Mercer Law Review: Vol. 55:
2, Article 4.
Available at: https://digitalcommons.law.mercer.edu/jour_mlr/vol55/iss2/4