In a far away land, a doctor and two lawyers, an appellate specialist and a patent lawyer, had given offense and were condemned to die by the guillotine.
On the execution platform the doctor lifted his head and gave the Hippocratic Oath, and when the blade was dropped, it jammed an inch from his neck. The executioner said, 'It is God's will, you are a free man.'
Next came the appellate lawyer. He recited the ABA Code of Ethics and placed his neck in the stock. Again the blade jammed and the executioner said, 'It is God's will, you are a free man.'
The patent attorney approached the guillotine, looked up at it and said, 'If you lengthen that linkage a couple of inches, the blade wouldn't hang up like that.' [1]
Introduction
The patent attorney is commonly relegated to the background in the biography of an inventor or the history of an invention. Some cursory mention may be made of the fact that the inventor relied on a patent attorney to secure patent rights or to defend the patent in court. The attorney is only credited with handling strictly legal matters.
In order to perform his legal tasks, however, the patent attorney is privy to information about the inventor and invention that arguably makes him a key resource for students of science and technology. The technical training and legal skill required for his work enables the patent attorney to grasp the essence of the inventor's work and present it in a manner that is understandable to the layperson. He is often a witness to the development of the invention and may even be a part of the inventive team. Inventors and attorneys acknowledge that an effective patent attorney is more than just a legal draftsman. In Grafting the legal description of the invention, he may also spark changes in the underlying technology and make important contributions that advance the art.
This report will examine the various functions of patent attorneys. It begins with a look at the patent law system, then explores the patent lawyers' role within that system. The report concludes with a review of the documentation of patent attorneys' work and issues regarding access to those documents by third parties [2].
Inventions and Incentives
Though the patent system is relatively simple in its fundamental principles, it is in reality a complex blend of economics, law, technology, and psychology, effectively operating in conjunction to provide incentives to innovation [3].
While examples of grants to inventors can be found in ancient Greece, the foundations of American patent law are usually traced back to England. The English monarchs adopted the Venetian practice of granting limited monopoly privileges to inventors or importers of new manufactures or industries that could benefit the realm. The grants of these and other types of privileges were made in charters known as "letters patent" [4]. There were no laws governing this practice. The monopoly privileges were awarded solely at the Crown's discretion, which made the practice subject to abuse. The royal grants were not limited new inventions. Monopolies were also awarded for pre-existing trades and industries, often for the purpose of granting patronage or generating revenue for the Crown.
Patent custom began to evolve into patent law when Queen Elizabeth, faced with anti-monopoly legislation in Parliament, agreed to permit judicial review of the validity of royal patents. Abuse of the royal prerogative nevertheless continued under her successor and led to court decisions that further restricted the Crown's power to grant monopolies. In c. 1623, Parliament passed the Statute of Monopolies. The Statute of Monopolies, generally regarded as the precursor of American patent law, declared monopolies as contrary to common law and abolished the general power of the monarchy to grant monopolies. Parliament excluded from the general prohibition royal grants to the "true and first inventor" for the "sole making and working of new manufactures within the realm" for a term of 14 years.
The Statute of Monopolies did not create any sort of right for inventors. Patents of invention remained a privilege bestowed by the Crown. Petitioners couched their requests for monopoly privileges in terms of the benefit that the Crown would derive from the patented invention. To assure that the Crown in fact obtained the promised benefit, patent holders were generally required to put their inventions into practice.
The Crown had the authority to issue patents that were enforceable in the American colonies, but such patents were rare. Instead, the colonists established their own patent custom. In spite of their aversion towards general monopolies, the colonists recognized the usefulness of patents in establishing needed industries and trades. In 1641, the Massachusetts Bay Colony enacted a statute that allowed limited monopolies for "Inventions that are profitable to the Country" as the exception to the general prohibition on monopolies [5]. Unlike English patents, which were grants bestowed under the royal prerogative, colonial patents were private legislative acts [6]. The custom of granting monopoly privileges continued after the colonies declared independence, with the power to award such privileges vested in the individual states. Inventors, however, soon realized that obtaining a patent in just one state was not adequate. The powers to enforce a patent ended at the state's borders. Inventors and entrepreneurs who wished to gain market advantage regionally needed to secure in a monopoly several states, a time-consuming and expensive endeavor. Moreover, there was no guarantee of consistency in the scope of the patents granted by the various states.
The Constitutional Convention was convened in 1787 to reconsider the governing structure imposed by the Articles of Confederation. The protection of intellectual property was not a major concern of the delegates to the Constitutional Convention. Nevertheless, they included among the specific grants of authority to Congress in the new Constitution the power to "promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" [7] Like the Statute of Monopolies, the so-called Intellectual Property Clause does not create an inherent right in intellectual property; rather, it grants Congress the power to encourage industrial and technological advancement. Moreover, it specified how Congress was to exercise its authority — by the creation of limited monopoly rights to practice the invention [8].
Rather than continue the custom of granting patents legislatively, Congress exercised its authority by enacting the first patent statute in 1790 [9] The act established the basic principles of the national patent system still in effect today. Patents were not arbitrarily granted at the government's discretion, but could be obtained if the invention met certain statutory criteria. It also conditioned the patent upon the production of a written description of the invention which enabled others "skilled in the art" to make the invention. The areas of patentable subject matter were defined ("any useful art, manufacture, engine, machine, or device, or any improvement therein") and standards of patentability were prescribed ("not before known or used" and "sufficiently useful and important"). The private enforcement regime was also established.
As the patent custom evolved into a patent system characterized by laws, patents themselves transformed from a privilege to a property right. The stated justification for the patent system, recited in the Constitution itself, remained an economic one, " to promote the useful arts and manufacturing". In time, new rationales also developed. James Madison's justification was based on the need to create and protect inventors' rights as an award for their efforts [10]. The French Revolution gave birth to a patent law that was based on the natural law theory that assumes man has a natural property right in his own ideas. The idea did not take hold in the U.S., where patents were never issued on demand. Nevertheless, inventors began to argue that they had a natural, inherent property right in their invention, which the state was obligated to protect [11]. Meanwhile, in England the judiciary was developing a body of common law of patents and establishing new legal principles. Among them was the social contract theory of patents: that in consideration for exclusive rights the inventor must disclose the invention to the public.
The authors of the first patent statute may have believed they had devised a system that successfully balanced the competing sentiments of those opposed to monopolies and those who believed that monopolies could encourage economic growth. Nevertheless, subsequent revisions of the law and court decisions interpreting the law would respond to perceived shifts of the law in favor of one side of the other. In response to inventors' complaint that system of review established by the law made patents too difficult to obtain, Congress revised the law in 1793 [12]. The patent system became one of simple registration, with issues of validity left for the court to sort out. Many issued patents were in fact invalid. It was not uncommon for unscrupulous men to apply for and be issued patents on inventions that were not at all new. The patent holders would then obtain royalties through either the sale of licenses to unsuspecting buyers or the threat of litigation against those already using the invention. The rampant fraud and flood of lawsuits that flowed from the "register and sue" system led critics to decry the system as stacked against the common man. The 1836 Patent Act [13] brought back the examination system and established the Patent Office within the State Department. After the New Deal ushered in a period of anti-patent sentiment on the Supreme Court, whose decisions highlighted the anti-competitive nature of patents, Congress responded with the 1952 revisions to the Patent Act. The creation of the Court of Appeals for the Federal Circuit another Congressional response to the perceived anti-patent attitudes of the courts.
Obtaining patents
A patent is just one means of creating and protecting rights in intellectual property, the intangible creations of the human mind. Intellectual property can take many forms, and the form it takes determines how it is legally protected. Literary works, photographs, musical compositions, sculpture, architecture and other works of authorship are protected by copyright law. Phrases or symbols that represent the origin of the products, such as logos, labels and brandnames, are protected under state and federal trademark law. Technological inventions include utilitarian devices or processes and can be protected by patents or under trade secret law. In most instances, an inventor must choose protection under one regime or the other. Trade secret law protects an invention by keeping it confidential, while patent law, as described below, requires disclosure of the invention. Some other forms of intellectual property protection, notably copyright, arise from the creation of the intellectual property. Patents rights, however, are granted only after an inventor meets certain statutory, regulatory and procedural requirements [14].
Inventors most commonly seek utility patents for their inventions. The prosecution of a utility patent begins when an inventor submits an application to the Patent Office. The application, like the patent that may eventually issue, consists primarily of the "specification" [15]. The specification is a written description of the invention [16]. It often includes a background section that discusses of how the invention came to be: the technical problem the inventor faced, the invention produced to solve that problem and how the invention is superior to existing technology. The specification includes the invention's elements or ingredients and a description of how they work together. The description must be complete enough to permit or "enable" practitioners in the technical field to use the invention. It also must include what the inventor believes to be the invention's "best mode," or the superior method of accomplishing the invention [17]. The specification provides important information as to how the invention is built or operates. It fulfills the goal of disclosure and may even serve as promotional literature for the invention, but it does not create any property rights. The claims, which are actually the final part of the specification, are the primary source of the property rights associated with the patent and the heart of the patent. The claims define what the patent covers and what will infringe the patent. Much like a prospector's claim, a patent claim stakes out the boundaries of promising space within a technological field [18].
A claim is a single sentence that consists of three parts. It opens with a "quote preamble." Here the inventor states the purpose of the invention or its general function. Next comes a transitional clause, either "comprising (of)" or "consisting (of), " which connect the preamble to the body of the claim. Here the inventor lists the elements or steps that make up the invention. Generally, a claim with fewer elements will provide greater protection. That is because to infringe a patent requires infringing on each element of the claim. By the same token, a claim may include many elements to distinguish the invention from the prior art. A patent application may and usually do contain more than one claim. Patents typically start with the broadest claim and become progressively narrower and more limited.
Claim drafting is both highly technical and legal. Claims submitted to the Patent Office must reduce sophisticated technical concepts to a single sentence, and yet present an accurate description of the invention. Claims must also be written with a keen awareness of the technical field in which the invention lies. They must include the components or processes that make use of the invention or "underlying inventive idea," but excludes things that people have done before [19]. Drafting is especially difficult in a heavily patented field. Extraordinarily lengthy claims may be necessary to distinguish the invention from the prior art. The failure to adequately capture the invention can result in the loss of important legal rights. It is ironic that arcane, highly stylized drafting conventions must be followed in a field designed to develop with advancing technology [20].
The Patent Office classifies all patent applications by its technological field to a group within the Patent Office, and an examiner, a technically trained staff member, is assigned to the task of determining whether the claimed invention merits patent protection. There are four basic requirements for a utility patent. The invention must fall in within one of the statutory classes: processes, machines, manufactures, composition of matter. The invention must have novelty, it must have utility, and it must be non-obvious [23]. The examiner searches for "prior art" patents already granted on similar inventions and publications to determine if the invention claimed in the application is new, useful and non-obvious. The examiner also reviews the application to see that other procedural and substantive requirements are met.
Most patent applications are initially rejected. The examiner sends the inventor a document, known as an office action, explaining the reasons for the rejection. The examiner may reject all the claims on the grounds that the invention has already been disclosed, or "anticipated," by the prior art or is obvious in light of the prior art. Alternatively, the examiner he may reject some claims and "allow" others. The examiner may point out additional defects in the application as well.
Any patent that issues will be the result of a negotiation process known as prosecution. In responding to the office action, the applicant may argue that the claims should be allowed on legal or technical grounds. More often, the applicant will amend the claims in an effort to distinguish the invention from the prior art. Some of the negotiating is done informally; to get an idea of what claims the examiner will eventually allow the inventor and/or his attorney may speak with the examiner in person or over the phone. When the examiner is satisfied that the invention meets the statutory criteria, a patent issues.
During the prosecution of an application no new subject matter may be added. If the inventor has come up with technical improvements or changes during the course of the prosecution, he may file a continuation in part, which can be regarded as an offshoot of the original application.
A second rejection is generally the end of the road. If the applicant cannot convince the examiner that a patent should issue, he can withdraw his application before a second rejection is issued. The specification and claims are not made public while the application is pending. Withdrawing the application allows the inventor to keep the contents of the application confidential. The inventor then has the option of seeking protection for the invention under trade secret law.
Obviously, two patents cannot be issued for the same invention. In conducting a prior art search, the patent examiner will search not only for previously issued patents and publications that anticipate the invention, but for other applications that claim the same invention as well. Where the Patent Office determines that two or more parties are claiming substantially the same invention, it must determine whose claim has priority. This determination is made through a trial-like procedure known as an interference. Interferences are conducted by the Patent Office's Board of Interferences and Patent Appeals.
Because it is unlikely that both applicants use the same language in their claims, the Patent Office writes is own claims, or "counts," to describe the subject matter at issue. It must initially determine whether both applications support a claim to the invention described by the count. If so, it must then decide which applicant invented first [24]. The first to file is regarded as the senior party; the second as the junior party. The senior party is presumed to have invented first, but that presumption can be overcome by evidence presented by the junior party [25]. The winner can proceed with the patent prosecution. The loser must abandon the application or pursue claims to a different invention. The decision can be appealed to either a federal district court or the Federal Circuit Court of Appeals.
An interference may also be declared between an applicant and a patent that has been issued within one year at the request of the applicant [27]. Issued patents may undergo further examination in two other instances. A "reissue" allows an applicant to correct errors in a patent, including the scope of the claims. In a "reexamination" the Patent Office reconsiders the patent's validity in light of newly discovered prior art. A reexamination may be requested by anyone [29]. A request for a reexamination may come from a party seeking to have the patent invalidated. On the other hand, a patent holder may request a reexamination as a way of strengthening the patent that might be held invalid in litigation. If the Patent Office declines to hold a patent invalid in the face of newly discovered prior art, a court is unlikely to do so [30].
Final rejections can be appealed to the Patent Office Board of Appeals and Interferences. If the outcome is still unfavorable, the unsuccessful applicant can then take the matter to the Court of Appeals for the Federal Circuit.
The documents that are filed by the applicant and examiner form the prosecution history or "file wrapper." These documents become public record and are an important resource for interpreting the claims. Under the doctrine of "file wrapper estoppel" the patent holder cannot interpret a claim more broadly in litigation than he did during the prosecution of the patent. A patent is effective from its issue date and has a term of 20 years from the date of filing [31]. A patent cannot be renewed, and after its expiration the once-new invention enters the "public domain."
During the life of the patent the patent holder has the right to exclude others from making, using or selling the patented invention in the United States. The patent holder may authorize others to make use or sell the invention by assignment, licensing or sale of his patent rights [33]. A patent holder is not required to work the patent, nor is the patent holder required to allow others to use the patent [34]. However, anyone who makes, uses or sells the patented invention without the authority of the patent holder commits patent infringement.
A patent owner whose rights have been infringed can file a lawsuit in Federal District Court [35]. An infringement suit typically involves three issues. The first is the validity of the patent. Although a patent is presumed to be valid [36], that presumption can be overcome. An accused infringer will claim as a defense that the patent is in fact invalid, and there is therefore no infringement. The validity of a patent can be attacked on any number of grounds. The failure to meet any statutory requirement can render the patent invalid.
The second major issue is whether the claims have been infringed. To prove infringement, a patent holder must prove that every element of a claim has been infringed. The precise meaning of the claims becomes very important.
The third major issue is damages. The patent holder must demonstrate that he was harmed by the infringer's action. If the court finds that the patent is valid and infringed, it may grant an appropriate remedy. It may issue a permanent injunction against further infringement and it may also award money damages to compensate for past infringement. If the court finds that the infringement was "willful," i.e., the infringer acted deliberately, the court may award treble damages. Because the issue of damages is considered only after a finding of infringement, a separate trial on damages may be conducted after a trial on the issues of patent validity and infringement.
The losing party may appeal its case to the Court of Appeals for the Federal Circuit. This court was created in 1982 to hear all patent appeals. Prior to its creation, the various Circuit Courts heard patent appeals from the districts within their respective circuits. The result was a lack of uniformity in the interpretation of the patent statute among the various circuits. Absent a ruling by the Supreme Court, the Federal Circuit's decisions form the body of patent case law.
Patent lawyers
Patent attorneys are a different breed who have happened to pick up law degrees. They are propeller-heads [37].
Patent attorneys can provide invaluable assistance to inventors in understanding patent laws and developing strategies for maximizing the value of their inventions under those laws. They can ensure that those strategies are implemented when patent applications are prepared. They are experts in writing (drafting) patent claims and in negotiating the wording (and, hence, scope) of those claims during the prosecution of the patent application. They can also develop strategies that help the client avoid infringement liability.
There is no requirement that an inventor retain the services of a patent attorney in order to obtain a patent. Any inventor can apply for a patent on his own invention. The Patent Office even gives special consideration to inventors who file applications pro se. The examiner who is handling the application of a pro se inventor is required to draft at least one claim for an invention that he believes is patentable [38]. Initially, there were no restrictions on who could solicit patents on an inventor's behalf. Most early American inventors did not use the services of a professional patent solicitor, although some relied on their Congressional representatives to inquire on the status of their applications. Professional patent agents first appeared in the early 1800s and their numbers grew after the Patent Act of 1836 reinstituted the examination procedure. By the middle of the 1800s it became apparent that some standard of professional conduct had to be imposed to protect inventors from unscrupulous solicitors who drafted worthless applications or stole their ideas outright. In 1861 Congress gave the Commissioner of the Patent Office the authority to bar any person, either generally or in a particular case, for gross misconduct [39]. In 1869 the Patent Office provided that "any person of intelligence and good moral character may appear...upon filing proper power of attorney."
The Patent Office established its registration requirement in 1897 [40]. The regulations grandfathered practicing solicitors who had prosecuted a patent within the past five years. Subsequent candidates only needed an affidavit that attested to their ability to prosecute patent applications. In 1918 Congress passed legislation requiring Patent Office approval of all advertising material distributed by patent solicitors. While these measures may have helped to curb fraud, they did little to assure quality control. Complaints of attorney incompetence led to the institution of the examination requirement in 1934 [41].
The Patent Office has rejected numerous attempts to restrict the prosecution of patents to lawyers. Most early patent solicitors were in fact not attorneys. Typically, they had some technical training and learned the necessary patent laws and procedures. It was common for Patent Office examiners to become professional patent agents after leaving the Patent Office. Until 1938 the Patent Office register did not distinguish between attorney and non-attorney patent practitioners, and both were referred to as Patent Attorneys. When the State of Florida tried to prohibit a Patent Office-registered non-attorney agent from engaging in what it saw as the unauthorized practice of law, the Supreme Court upheld the Patent Office's authority to regulate those who practice before it [42].
Anyone who wishes to practice before the Patent Office today must pass the "Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office," commonly referred to as the "patent bar" exam [43]. The examination is currently administered twice a year. Specific scientific and technical training requirements, such as a bachelor's degree in a "hard science" or engineering field, are required just to sit for the exam. In recent years just over half of the approximately 1500 candidates who took the examination passed [44]. Only attorneys who have passed the patent bar exam may call themselves patent lawyers.
There were fewer than 3000 patent attorneys registered with the Patent Office in 1900. As century later there are over 23,000 attorneys and agents registered with the Patent Office. Today, the majority are licensed attorneys.
The setting in which a patent attorney works will dictate the nature of his work to some degree. Patent attorneys may work in private law firms and sell their expertise to a variety of clients. Many became attorneys after working as patent agents. Patent attorneys historically worked in firms whose practice was limited to patent matters. Other attorneys felt that the work of patent attorneys was largely technical and viewed them as only quasi-lawyers. While patent lawyers are still regarded as a highly specialized field, they are increasingly sought after in today's high-tech economy. The current trend is for these "boutique" patent law firms to merge with general practice firms seeking to offer their clients a broader array of services.
Patent attorneys also work "in-house" for a company, government agency or private organization that generates a substantial amount of patent work. In-house attorneys have a greater opportunity to become expert in a particular technology. Unlike the attorneys in private firms, who must deal with a diverse group of clients, the in-house patent attorney has the opportunity to develop an expertise in the technology of his sole client.
Patent attorney functions
The patent is a composite of a legal document and technical literature written to the comprehension of the non-technical judge. The late Judge Smith aptly described the patent bar as " the 'interpreter' for a wide segment of science to the Patent Office, to the industry and to the courts" [45].
Patent attorneys counsel inventors on variety of patent and other intellectual property matters. However, the core task of the patent attorney is preparing and prosecuting patent applications [46]. Possession of the qualifications to perform this work separates the patent attorney from all other lawyers. Some patent attorneys consider the work of drafting patent applications and prosecuting patents to be dull, the task of a highly paid technical writer better left to junior attorneys. They regard the legal strategizing of litigation or negotiations involved in licensing as more challenging and intellectually stimulating. Other attorneys see patent prosecution work as one of the most creative areas of the law. Because every invention is, by definition, new and distinguishable from all else, every patent application is unique. Patents prosecution work also allows a lawyer to stay abreast of the latest in technology and even to keep a hand in the development of new technologies.
The quality of the patent attorney's work has significant consequences for the inventor. A well-written patent can be a highly valued asset. By obtaining broad coverage that anticipates ways in which future competitors will try to circumvent the patent, the patent attorney can maximize the invention's value. Skilled claims drafting will also protect the inventor from those attempting to circumvent the patent through minor improvements. A badly written patent is more than worthless; it can become a negative asset that financially drains the inventor who attempts to enforce it.
Assessing inventions/obtaining disclosures
The involvement of the attorney in the patent application process can begin in many ways. For the attorney in private practice, the process is likely to begin after he is approached by an inventor who has decided to seek a patent. The inventor has made an invention that he believes may be patentable and "discloses" it to the attorney. If the attorney is working with an individual inventor, the disclosure may be rather informal, made through notes, drawings or a model. It could even be made orally. Attorneys in private practice may also work with corporate or institutional inventor. These inventors are encouraged or required to use invention disclosure forms. Before it reaches the patent attorney, a patent committee may have already reviewed the disclosure and determined that a patent should be sought.
It is not always the case that the inventor knows he has something patentable. A researcher, scientist, or engineer may fail to appreciate the novelty of this idea or that it advances the art. Consequently, he neglects to record or report it, and the invention escapes patent protection. In other instances, the researcher or engineer may be aware that he has an important scientific or technological discovery, but does not understand the significance of a patent. In the inventor's field of work, there may be a greater prestige attached to publishing an article in which he reports his findings. In either case, if the invention becomes known to the public before its patentability is assessed, the opportunity to obtain a patent on the invention could be lost forever. Organizations and companies that place a high value on their intellectual property recognize the importance of identifying and capturing inventions before they lose the chance to patent them. Thus, an important aspect of the in-house patent attorney's work is ensuring that these inventions are identified.
Patent attorneys may rely on informal methods to uncover inventions that would otherwise go undetected. Some companies or organizations may facilitate this work by locating the patent department in the laboratories. This gives patent attorneys the ability to keep in close contact with the engineers and scientists and develop relationships and stay abreast of new developments. Patent attorneys might be encouraged to make regular visits to the laboratory or work areas.
Leonard Reich cites an example in which a G.E. patent attorney recognized a patentable invention in a researcher's work during one such visit to the laboratory [47]. Informal information gathering is frequently coupled with more formal mechanisms. It may not be feasible today for patent attorneys to conduct weekly reviews of laboratory notebooks, such as the G.E. patent attorneys did in the early 20th century. Many organizations require inventive personnel to submit research articles for review by patent attorneys prior to publication.
Drafting patent applications
Once the potentially patentable invention has been disclosed or otherwise uncovered, the attorney will assess its patentability by doing a search of the prior art to and begin work on a draft of the patent application. A patent is in part a technical document that teaches the invention to others skilled in the art. More importantly, it is a legal document that establishes the bounds of the inventor's exclusive rights. The more broadly those rights are defined, the greater the value of the patent. Ultimately, however, a patent is worthless unless it can withstand a court challenge. The validity of the patent is ultimately the decision of a nontechnical judge or jury. Therefore, to the extent possible, the claims should be written so that the non-technical judge or jury can understand them.
Drafting a patent application is not simply a matter of rewriting the disclosure to fit the conventions of claims language. To draft an accurate description of someone else's idea requires a thorough understanding of it. If the invention involves simple technology and the disclosure is thorough, the patent attorney may be able to draft a patent application based simply on the inventor's disclosure. The inventor needs only to review the draft to confirm that it correctly depicts his invention.
Such an approach may satisfy the inventor who prefers to deal with lawyers as little as possible. But it is often the case that the inventor's disclosure is not sufficient for the patent attorney to draft the application without additional information from the inventor. The prior art search may have revealed relevant references that require the inventor to distinguish his invention from the prior art. Whether in meetings or through comments on the various drafts of the application, additional information from the inventor can help the patent attorney get a full understanding of the invention. Questions from the attorney may, in turn, help the inventor look more critically at the invention or stimulate an idea that improves the invention. Moreover, a patent that covers only the disclosed invention may not capture the full scope of coverage that the inventor is entitled to. The patent attorney can help the inventor broaden the scope of the invention and consequently obtain greater patent protection.
Many inventions are developed as specific solutions to specific problems. The inventor may not appreciate that his device or process may actually be only one particular way of practicing a more generic inventive concept. It might be possible to put the underlying inventive idea to use in other applications. Unless the inventive idea is uncovered and claimed, the patent will cover only the specific device or process even though the other forms employ the same inventive idea. It is the job of the patent attorney to get the inventor to look beyond the specific device or process and uncover the underlying inventive idea.
To accomplish this, the patent attorney will work with the inventor to strip away all but the invention's most essential elements. The fewer elements in a claim, the broader its scope and the more difficult it is to avoid infringing it. A competitor whose products contains elements A, B and D avoids infringing a claim containing elements A, B and C, but falls within the scope of a claim that contains only elements A and B. For example, Joe Doe, tired of sitting on the ground, invents the chair. He discloses a chair that is made up of a seat, four legs, a chair back and a padded seat cushion. In discussing his invention with his patent attorney, Joe Doe realizes that a rival could invent around Joe's chair by changing the cushion to a slipcover. He realizes that the only essential elements of his invention are 1) a solid surface for the seat 2) four legs supporting the seat and 3) a back. By including only these three elements, a claim would cover both Joe's padded chair, which is the preferred embodiment of his invention, as well as the chair with the slipcover and any chair that included a seat, four legs and a back.
The back and forth between the inventor and patent attorney may take place over the course of several days or weeks, but eventually the claimed invention takes shape. Karl F. Jorda, the former chief patent counsel at Ciba-Geigy who now teaches at the Franklin Pierce Law Center, has dubbed this collaboration between the inventor and attorney "superinventing" [48]. The very term suggests that the result of the attorney-inventor interaction is superior to the disclosed invention. The inventive idea may have changed or been improved upon, but the more common result is an invention which is more generic and broader in scope. By extending patent coverage to potential variations of the invention that a competitor may try to manufacture, the patent attorney has helped to increase the patent's value. There is little doubt that the patent attorney influenced the shape of the claimed invention. He clearly exercises creativity. He may even be "inventive" in the layman's sense of the word. However, it is unlikely that he will admit that his contributions are inventive in the patent context.
Invention in the patent law context is a two-step process. The first step is "conception," the mental act of invention. Conception is complete only when the inventor finds the solution to a problem and the solution is worked out in sufficient detail that the idea could be put to practice without extensive research or experimentation [49]. The second step is known as "reduction to practice," which requires the inventor to turn the mental idea into a physical embodiment. Both of these steps must occur before the inventive process is complete. However, the threshold issue in determining inventorship is conception. A person must participate in the conception of an invention to be an inventor. If two or more persons were involved in the conception, they can be named as co-inventors. However, a person who only reduces the idea to practice is not an inventor.
The issue of co-inventorship has been called "one of the muddiest concepts in the muddy metaphysics of patent law" [50]. Co-inventorship requires the collaboration of two or more persons. The specific contributions of each inventor do not need to equal or even identifiable. A "brain storming" session can lead to claims of co-inventorship. Not all contributions, however, rise to the level of co-invention. The identification of a problem, such as the existence of prior art that must be avoided, will not make a person a co-inventor without an idea that solves the problem. Suggestions that merely result in another embodiment or example of how the underlying inventive idea can be put into use are creative, but not inventive. No new idea was born, only a new use for an existing idea. Similarly, a person who helps the inventor put the invention into practice is not a co-inventor. The contributions of the engineer who builds a machine that allows the inventor to test his invention are not considered inventive. The inventor is merely using his services.
While acknowledging the creativeness they bring to their work, patent attorneys are generally quick to characterize their contributions as technical. In the majority of cases, it is probably so. The patent attorney may help to expand the scope of the invention, but there is no change in the underlying inventive idea. However, there are in fact many instances in which the patent attorney, by bringing his technical training and experience to bear on a particular problem, comes up with an important new idea. His contribution makes him a co-inventor. Although it is not common, patent attorneys have in fact been named co-inventors on patent applications they prepared. Being named a co-inventor on a patent, however, can create problems for the attorney. The inventor is likely to be unhappy that he will have to share credit for his idea, a situation that can arise anytime more than one inventor is involved. There are special problems for the attorney co-inventor. The inventor has entrusted his idea to the attorney for the purposes of obtaining a patent. An attorney who uses information learned in confidence to create rights in the invention that dilute the rights of the client has abused his client's trust under the ethics rules imposed in almost every state.
As a separate ethical violation the attorney has created a conflict of interest between himself and the client, which usually requires that he withdraw from representation. If the patent attorney suddenly acquires rights in the invention, he may not be able to keep his client's interest separate and ahead of his own. State ethics laws strictly restrict a lawyer from entering into a business relationship with his client, when the business relationship involves the same issues for which the lawyer is providing legal services. This rule is based upon the fact that the lawyer owes "fiduciary" duties to his client that most likely cannot be fulfilled if the client and the lawyer are business partners concerning the same area that the lawyer is representing the client. It is too easy for the lawyer who is an expert in the field to overreach the client, and thus the ethical rules prohibit these sorts of arrangements. Some attorneys believe that the patent attorney should immediately assign his rights to the client. Alternatively, another patent attorney could take over prosecution of the patent.
Simply leaving the patent attorney's name off the patent application raises additional problems. The patent statute allows a patent to be issued only to the invention's true inventor or inventors [51]. The failure to name the correct inventor can leave the patent vulnerable in a court challenge and render the patent void. The client must be able to trace the inventive idea back to himself if the validity of the patent is attacked.
Because of the problems that can arise when an attorney becomes a co-inventor, some patent attorneys deny that patent attorneys make any inventive contributions, because the will not know the art as well as the inventor. Others will acknowledge that patent attorneys can be inventive, but that they should not usurp the client's role. As one attorney quipped, "We're not paid to invent." They suggest that patent attorneys should avoid creating even the appearance that they are making inventive contributions. An attorney can do so by carefully presenting any inventive idea he has. Rather than stating his idea or offering it as a suggestion, he may lead the inventor to that idea through structured questioning.
Assume that Moe Roe has come to his patent attorney with his new four-legged chair. The patent attorney has found Joe Doe's patent, which anticipates Moe Roe's invention. Merely suggesting that a three-legged chair would avoid the prior art is not an inventive contribution. However, if the patent attorney has determined how to balance a chair with three legs, he has solved the problem posed by the prior art and invented. His challenge now is to get the inventor to think of the same solution. He will want to avoid putting his idea into the inventor's head by asking questions that are too direct. "Have you tried three legs?" Instead, the patent attorney might ask a series of open-ended questions that mirrors the steps in his own thought process. "Why do you need four legs?" Can it be done with fewer legs?" In that way, it is the inventor, not the attorney, who will actually state the inventive idea.
During the prosecution of the application the patent attorney continues to define the invention as it works its way through the Patent Office. He must convince the examiner that the application describes a new, useful and unobvious invention and that each of the proposed claims recites that invention [52]. He must respond to objections by the Patent Office examiner by distinguishing the invention from the prior art or amending the claims. In amending the claims, the patent attorney will try to keep the claims as broad as the patent examiner will allow.
Litigation
A patent is a license to sue.
The American patent system has a built in bias towards litigation. A patent issued by the Patent Office has only the presumption of validity. It is in the courtroom that the two conflicting policies of the patent system collide. The patent system seeks to discourage infringement of valid patents by allowing patent holders to bring civil actions against infringers. On the other hand, the patent system also encourages challenges to questionable patents.
Despite the central role that litigation plays in the patent system, only a small percentage of patents are actually litigated—somewhere in the neighborhood of 1 to 2 percent [53]. Only those patents that are exploited in the marketplace and have commercial value are likely to be litigated. For the patent holder, infringement of the patent poses a risk to the patent holder's business and should not be left unchallenged. For a competitor, the patent stands as a barrier to his entry into a lucrative market.
While the prosecution of a patent is limited to Patent Office-registered attorneys, any licensed attorney may represent an inventor in court. Opinions vary as to whether it is necessary to be a patent attorney to handle a patent lawsuit. Litigation is its own specialty, and courtroom expertise in particular is not easily gained. One federal judge, who had presided over a number patent cases, voiced his opinion that it would be easier to teach a trial lawyer patent law than to teach a patent lawyer how to be a good trial lawyer [54]. On the other hand, a patent lawyer's technical background is useful, perhaps even vital, because of the technical nature of the subject matter. The ability to understand claim language is particularly important as claim interpretation is central to the case. Some patent attorneys specialize in patent litigation while others devote some percentage of their time to litigation. In cases handled by a general practice trial attorney, a patent attorney often assists and supplies the patent law expertise.
Most civil lawsuits do not proceed to trial, and patent suits are no exception. Trials are winner-take-all affairs and the amount of the "take" in patent disputes can be staggering. The benefits to settling the matter before trial may far outweigh the risks of proceeding to trial. Nevertheless, the parties must approach all cases with the expectation that it may go to trial. The court can order sanctions against a plaintiff who files suit without a good faith belief as to the merits of his case [55].
Trials involve the application of law to a set of facts. Some cases involve novel interpretations the law. However, the crux of the lawyer's job is to establish facts that will result in a favorable application of the law.
The two central issues in patent suits are patent validity and infringement. The attorney defending the patent will have to tell the story of how the invention came to be. It will be the job of the alleged infringer's attorney to explain why the patent should not have been issued in the first place. Attorneys for both parties will direct most of their efforts to discovery—the process of gathering facts to support their case. Lawyer will learn the details of the invention's history as well as the efforts of rival inventors. In the end, he will probably end up with a better picture of the state of the art than perhaps the inventor. For example, in one case a patent was invalidated by a 600-year-old description of pre-Columbian Indians in Peru and Columbia practicing the same method of jewelry making that was covered in the patent [56].
Client counseling
The patent attorney's role is not limited to representation of the inventor in the Patent Office and the courthouse. Many patent attorney devote a large part of their time to counseling the client on patent matters at all stages of an invention's life.
A patent attorney may be asked simply to do a search for prior art. Gathering information on previously issued patents used to require a trip to Washington to look through the patent office records. Eventually, private companies and then the patent office made information about newly patented inventions more widely available. Establishment of repository libraries and computer and on-line searchable databases make it possible for inventors around the country to do their own searches. Still many will rely on a professional search, which is likely to be more thorough. Even a resourceful inventor may not be able to access foreign prior art. It is unlikely that even a competent professional search will capture everything that is relevant, or what the patent examiner considers relevant. An important set of information, pending patent applications, simply is not accessible.
The client may want the attorney to do more than simply identify prior art. The client may ask the inventor to render an opinion as to whether a new product or process infringes on an existing patent. The request may be in response to a notice the client has received that it may already be infringing. An objectively written opinion letter would provide the client with a clear understanding of his legal position, informing him of the validity of the patent and the likelihood of the court finding against him in an infringement suit. In an opinion letter the patent attorney analyzes the patent, its prosecution history, and the prior art to make sure that the patent was property issued. He then compares the claims listed in the patent against the accused product or process and advises how the client might avoid infringement. A client who has infringed on a valid patent may be able to rely on the letter to avoid a finding that the infringement was willful. Ideally, a client has not waited until litigation has commenced before seeking such an opinion. A patent attorney's counsel can help the client avoid such a situation by helping the client in an invention's infancy to identify ways in which the client can avoid infringing existing patents.
An organization will not want to invest time or money in a line of research or product development that may be heavily patented and result in infringement liability if a commercial product is eventually developed. The patent attorney may become a member of a product's development team. His understanding of claims will allow him to point out clearly what areas of a given field have already been spoken for and to point out directions which are safe. Eastman Kodak's instant camera debacle is often cited as the prime example of the risks of pursuing a course of research and development without considering the patent landscape. Kodak ignored Polaroid's many patents in this area, choosing to challenge the validity of the patents if challenged. Predictably, Polaroid brought a patent infringement suit as soon as the cameras went on sale and a decade and million of dollars in legal fees later, Kodak was ordered to pay $925 million in damages, the largest patent damage award in history [57].
Patent attorneys can also shape research and development decisions by help identify areas in which strongest or greatest number of patents can be obtained. A product stands a better chance in the marketplace if potential competitors find it too complex or too costly to invent around the product's patents.
A patent attorney might advise a patent holder on how best to exercise his patent rights. A patent represents more than just an exploitable technology. A patent is an asset with a value. A patent may be the single patent the company holds, or it may be one in a large patent portfolio. For many patent holders, but particularly corporations, patent management is a critical part of an integrated business strategy. A patent attorney can advise the client as to the patent landscape. By literally mapping the patent claims, he can determine what exactly is covered by the patents it holds, what patents the client is exploiting, what the gaps in its patent portfolio are. Patents that are not being exploited can be sold or licensed to generate income for the client. Licensing of patent rights from another party might be more cost effective than inventing around existing patents to fill gaps in the client's patent portfolio.
In addition to advising clients regarding management of their patents, the patent attorney may negotiate and draft the terms of patent licensing agreements. Where patent rights are part of a larger transaction, such as the sale of a corporation, the patent lawyer may be called in to negotiate that segment of the deal. A patent lawyer who knows the technology and the meaning of the claims can better appreciate the patent's value and scope. Licensing arrangements may also be negotiated specifically to acquire needed technology or generate income from royalties.
Documentation
The creation and retention of documents by patent attorneys is greatly influenced by litigation, to a greater degree than other fields of law. This is a result of the uniqueness of patent practice and the central role that litigation plays in the enforcement of patent rights.
Discovery is the pre-trial process by which opposing parties in litigation gather facts to support their case [58]. The purpose of discovery is to gather facts to support one's case, both to avoid surprises at trial and to level the playing field. As part of the fact-finding process, a party may ask its opponent to reveal what facts it has. The Federal Rules of Civil Procedure prescribe the methods for accomplishing this. A litigant can propose written questions, known as interrogatories, to the opposing party. He may conduct oral examination of witnesses in depositions. Both witnesses who are party to the lawsuit as well as non-party witnesses may be deposed. A litigant can also request that the opposing party turn over documents or things in its possession. The discovery phase of litigation can last for months or even years and be extremely costly.
The rules discovery are intended to permit broad inquiry into even tangentially relevant matters. The information being sought need not be admissible at trial; it must only reasonably lead to evidence admissible at trial; it must relate to matters that are relevant and "not privileged" [59]. Admissibility, in turn, is governed by the Federal Rules of Evidence. Information that is privileged under the Rules of Evidence is also privileged from discovery [60].
Rules Limiting Discovery
Rules of evidence are designed to prevent the introduction of evidence that may be unfairly prejudicial or otherwise obscure the truth [61]. Privileges, on the other hand, allow evidence to be withheld when communicated in the context of certain relationships [62]. The rationale behind privileges is to protect information revealed between certain persons because of special nature of those relationships. The public interest promoted by protecting these relationships outweighs the importance of revealing the information exchanged. For example, if patients feared that information they gave their physician might be revealed in court, patients may refrain from seeking needed medical care. For example, commonly recognized privileges include the priest-penitent privilege, the spousal privilege for marital communications, and the psychotherapist-patient privilege.
Among the oldest of the privileges for confidential communications known to the common law is the attorney - client privilege [63]. The policy behind this privilege is that a client must be able to consult with absolute candor when seeking legal counsel. It protects the confidences between a client and attorney in obtaining legal services and is an absolute bar to the disclosure of such confidences when property established and maintained. The privilege belongs to the client, and only the client may wave it. Moreover, the attorney client privilege survives the death of the client [64].
Separate and distinct from the attorney-client privilege is the attorney work product immunity. Rule 26(b)(3) of the Federal Rules of Civil Procedure grants qualified immunity from discovery to documents prepared in anticipation of litigation. The policy behind this rule is to allow an attorney to work without fear of the opponent looking over his shoulder. The rule also prevents the opposing side from preparing its case relying upon "wits borrowed from one's opponent." In order for the immunity to apply, the document in question must have been prepared in anticipation of a specific lawsuit, not merely with an expectation that a lawsuit may someday arise. Unlike the attorney-client privilege, which, if properly established and maintained, is absolute, the work-product immunity is qualified. It can be overcome by a showing by the requesting party that the information sought is not otherwise available. The rule will still protect an attorney's mental impressions, conclusions, opinions or legal theories.
Discovery and Privilege in Patent Cases
In the discovery phase of a patent infringement case the accused infringer will attempt to uncover any evidence that brings into question either the validity of a patent or the patent holder's interpretation of the patent's claims. Evidence of patent invalidity might be found anywhere. When interpreting a patent claim, guidance can be found from the "ordinary meaning" or "plain meaning" of a word, the specification [66], and the prosecution history. Documents generated during the course of the patent application process may provide useful information to the accused infringer.
Draft patent applications are a case in point. Drafts may reveal interpretations or characterizations of the invention that are unfavorable to the patent holder. The attorney may create the initial draft of an application with limited information or without fully understanding the invention. Drafts may contain preliminary commentary or speculative information. The draft or notations on the draft may raise questions on the viability of claims, fail to adequately distinguish prior art, or simply present the invention in a limiting sense. While the courts do not use pre-filing drafts of patent applications to interpret a claim, the drafts may nonetheless raise questions that the patent holder will be forced to address and divert attention away from other issues. Discovery of draft patent applications can pose a serious risk in litigation.
Drafts are not the only item that can weaken the patent holder's case if turned over in discovery. The presence in the file of a prior art reference that was not disclosed during the prosecution of the patent can be the dreaded smoking gun and lead to charges of fraud upon the Patent Office. The attorney may have been well within the bounds of proper conduct in not disclosing a reference that he felt to be entirely irrelevant. However, the consequences can be severe if a judge or jury believes the prior art was indeed relevant.
Because it may contain documents that cast the patent in an unfavorable light, the accused infringer may seek discovery of the patent attorney's file. Surprisingly, the question of whether discovery of the attorney's patent prosecution files should be permitted is not wholly settled. This stems from the unique nature of patent prosecution work. Courts have historically viewed the non-litigation aspects of patent attorney work, including the drafting of a patent application and providing opinions as to patentability, as outside the traditional sphere of legal work. It wasn't until 1963 that the Supreme Court found that preparation of a patent did in fact constitute the practice of law [68]. Up until then, patent attorneys and agents were regarded as mere conduits of information from the inventor to the patent office. That view, however, still colors the decisions of a number of district courts. These courts have held that patent attorney files are not protected from discovery by the attorney client privilege because the work that a patent attorney does in preparing a patent application is merely technical [69]. However, there are a growing number of cases that protect the patent attorney's files from disclosure [70]. The Federal Circuit, whose decisions are controlling on patent law issues absent a Supreme Court ruling, has not decided the matter in a written opinion.
Also undecided is the issue of whether non-attorney patent agents files are protected from discovery. The attorney-client privilege clearly extends to patent agents working under the guidance of an attorney, because the agent is deemed to be an "agent" in the legal sense of the attorney. The agent's files are afforded the same protection as an attorney's files. For patent agents working independently, the law is not as clear. While some courts have extended the privilege to registered patent agents working independently of a patent attorney [71], a few courts hold to the strict view that patent agents are non-lawyers doing merely technical work [72].
Patent attorneys may not be able to rely on work-product immunity to protect their files from discovery. While "litigation" includes interferences in the Patent Office for purposes of work-product immunity [73], the immunity does not extend to documents prepared in connection with the prosecution of a patent application, a process that is considered non-adversarial. It is irrelevant that the ultimate purpose of a patent may be to serve as a litigation document [74], or that the odds of litigation are pretty high on any commercially valuable patent. It is simply not enough to argue that litigation is likely to arise. The application of the work product doctrine requires that a specific lawsuit be contemplated when the documents are produced.
Whether a patent attorney must turn over the file becomes a matter of geography— whatever the rule is in the court with jurisdiction over the case. Without a universal rule on the matter, patent attorneys face the risk of having to turn over a patent application file to an opponent in litigation. They must weigh the risks of retaining documents that may hurt their client in litigation against the benefit of having evidence that supports their client's position. Draft applications, for example, may be persuasive evidence of the invention's date of conception, but they may also contain incorrect information. Patent attorneys must also factor in the benefit of retaining documentation of attorney diligence in case of a malpractice claim.
Because these questions are unsettled, many patent attorneys appear to prefer to err on the side of caution and keep their patent files free of any material that may offer a different interpretation of the invention than the one in the file wrapper. Many of the patent attorneys I interviewed echoed the phrase that anything left in the file could "come back and bite you." There are no hard and fast rules for retention of patent prosecution files. However, among patent attorneys and agents it is considered good practice to retain only those documents that are part of the Patent Office file wrapper, needed to support the invention's date of conception, or needed for the maintenance of the patent. All other material is generally weeded from the file when the patent issues and destroyed. Whether this is done pursuant to a written record retention policy or as an informal policy varies among firms. Even within firms, the practice of the attorneys may vary.
Even attorneys who claimed to retain "everything" admitted, upon further questioning, that they weeded their files to some extent. Perhaps the most extreme example is the law firm that rids its patent prosecution file of everything except what is necessary for the maintenance of the patent, i.e., a schedule for maintenance fees and the forwarding address of the client. Even documents that are part of the Patent Office file wrapper are removed from the file as they are available, if needed, from the Patent Office. The client retains any document that is needed to support the date of conception.
Those who subscribe to the more conservative (or liberal) view of document retention follow a strategic retention policy. Just as files are purged with a view toward possible litigation, documents that might be helpful are retained. Drafts are kept, as are "papers raising and answering questions that would be pertinent to the validity of the patent. If questions are raised but not answered, answer them with a [self serving] cover memo which, even belatedly, explains the basis for proceeding." The burden to review individual case files falls on the attorney, who, because of the pressures of other business, may not complete his review.
Removal of documents from the file is proper if done in the normal course of business. However, if document destruction is triggered by litigation, the party destroying the documents may be exposed to civil and criminal liability.
In addition to influencing what records are retained, the specter of litigation influences whether documents are created in the first instance. Many attorneys indicated that they communicate orally with the inventor instead of in writing to avoid a discoverable paper trail.
The common practice seems to be to retain only those materials that are public record. However, there are attorneys who retain documents because of lack of attention to the matter or as a conscious decision. Malpractice concerns may lead attorneys to keep drafts of their documents to show diligence.
On the other hand, it is clear that litigation files are protected by the attorney-work product immunity. Attorneys are free to create documents without fear that they may be used against them later. They are also less concerned with purging the files at the conclusion of a case.
Litigation generates a daunting amount of documents, and patent litigation especially so. Court files consist largely of pleadings, the documents through which the parties communicate with the court. If the lawsuit is settled or otherwise brought to a close prior to trial, the pleadings may contain few facts concerning the case and document largely procedural matters. The court file will contain only a small fraction of the contents of an attorney's case file. The entire history of an invention may be found among the documents in an attorney's case file.
The majority of the lawyer's file is comprised of raw material that goes into preparing the case. Deposition transcripts, interrogatory responses, and witness interviews represent attempts to elicit information in a structured manner. The case file will likely contain an extraordinary amount of documents produced in response to discovery requests. In addition to those documents produced by the opponent, the attorney is likely to retain a copy of the documents given to the opponent. In one case involving a drug patent, over one million pages of documents were produced in discovery.
Correspondence is another significant portion of the file. Attorneys' legal memoranda and notes may outline the legal strategy of the case . Reports from paid experts and consultants are used increasingly for various aspect of a case.
Firms vary in their retention policy of litigation files. As a practical matter, the cost of maintaining huge litigation files can be substantial. Original documents from the client should be returned to the client. The volume of the files can be substantially reduced by destruction of the documents produced in discovery.
Access to Attorneys' Files
Just as the attorney-client privilege and work product doctrine generally protect attorneys' client files from discovery in litigation, these rules are also invoked to prevent access to the files by researchers. Turning over a file to a researcher might constitute a wavier of any privilege that attaches to contents of the file.
Attorneys will also assert confidentiality to deny outsiders access to client files. Confidentiality is not a rule of evidence but is tied to the ethical obligation an attorney owes to his client. Confidentiality is the bedrock principle of legal ethics [75]. The ABA's Model Rules of Professional Conduct state simply and succinctly, "A lawyer should preserve the confidences and secrets of his client" [76]. 'Confidence' refers to information protected by the attorney client privilege under applicable law, and 'secret' refers to other information gained in the professional relationship that the client requested be held inviolate, or the disclosure of which would be embarrassing, or would likely be detrimental to the client [77]. A lawyer is not to reveal information relating to representation of a client unless the client is consulted and consents [78]. "The duty of confidentiality continues so long as the lawyer possesses confidential client information. It extends beyond the representation and beyond the death of the client. Accordingly, a lawyer must take reasonable steps for the future safekeeping of client files, including files in closed matters" [79], but a lawyer may cooperate with reasonable efforts to obtain information about clients and the law practice for public purposes, such as historical research, when no material risk to a client is entailed, such as financial or reputational harm."
State regulatory bodies have analogous rules, many of them patterned after the ABA Model Rules. Whereas the ABA Model Rules have no legal effect, violation of state ethical rules can result in disciplinary action, including disbarment. The attorney may also be exposed to legal malpractice liability if the client is harmed as a result of the breach of confidentiality.
While the Model Rules cite historical research as an area in which a lawyer may reveal some information, they provide little guidance as to when the exception is applicable. An ad hoc committee of historians and attorneys who have considered this particular issue have concluded that the interests of researchers is best served by not hardening a rule [81].
Issues of privilege and confidentiality hinder access to the client files of attorneys. However, any institution interested in collecting law firm records should be aware that ownership of a law firm's client files might not lie with the firm. There is no uniform rule as to who owns client files. In several states, including Washington and Alabama, the client owns the file. In some jurisdiction the materials in the file that represent the attorney's work product belongs to the law firm. Complicating matters is the fact that not all states have clearly stated laws regarding file ownership. Even if it is not clearly stated in the law, it can be argued that since the client has paid for the work done to create the documents, client files and their contents are in perpetuity the property of the client. While it is good practice for lawyers to settle this matter at the outset of their representation in the contracting document, not all firms do. Furthermore, the contracting document cannot abrogate the ethical rules, and if a certain jurisdiction provides that the client owns the files, the lawyer cannot abridge the client's rights. For archivists seeking to accession the client files from a lawyer or law firm, it is safe to start with the assumption that the files are the property of the client.
Conclusion
Because of the many ways in which patent attorney can assist inventors, he can be a witness to the entire life of an invention, from its infancy to its commercialization. A good patent attorney should be more than just a functionary. He can rely on his technical training to not only understand the invention for which the patent is being sought, but also to intellectually challenge the inventor. By doing so he can force the inventor to look at his invention in a more critical way. In doing so, he may make significant contributions to the scope of the invention and perhaps to the invention itself.
Even when the attorney's contributions do not rise to the level of invention, the patent attorney is likely to be one of the few people who know the invention as intimately as the inventor, and he may be able to better articulate the inventor's idea. He will not only learn the full story of the invention, but will be able to put the invention in the context of prior art. If the patent attorney litigates the patent, he will learn even more information relevant to the invention and its technological field, and others working in the field.
Rather than rely on a documentary record of the patent attorney's work, which may be unavailable, non-existent or inaccessible, researchers may want to conduct oral history interviews to capture the patent attorney's story. The same restrictions on access that are imposed by the attorney-client privilege and the duty to maintain confidentiality will naturally apply to conversations. Nevertheless, the patent attorney will undoubtedly be able to share a good deal of non-privileged information that might otherwise be lost.
Notes
1 Brereton Sturtevant, "Three Generations of U.S. Patent Practice from a Woman Lawyer's Perspective," Proceedings, Events and Addresses of the Bicentennial Proceedings of United States Patent and Copyright Laws, (1991): 503.
2 While the term "patent attorney" will be generally used throughout this report, it will be in many instances interchangeable with "patent agent." Patent agents are non-attorneys who are qualified to prosecute patents on the behalf of others before the Patent and Trademark Office. Their work in this regard is similar to patent attorneys. Patent agents may not, however, represent inventors in court. This distinction will be discussed in greater detail below.
3 Giles S. Rich, "The Exclusive Right Since Aristotle," Proceedings, Events and Addresses of the Bicentennial Proceedings of United States Patent and Copyright Laws, (1991): 169
4 The term letters patent is derived from the Latin phrase "Literae Patentes," meaning open letters. Unlike letters close, which contained private instructions to individuals, letters patent were "so called because they were not sealed up, but exposed to open view., and are usually directed or addressed by the king to all his subjects at large." The term "letters patent" is found on the face of the document issued to inventors by the US Patent and Trademark Office. Edward C.Walterscheid, "To Promote the Progress of Science and Useful Arts: The Background and Origin of the Intellectual Property Clause of the United States Constitution," Journal of Intellectual Property Law 1, no. 2 (fall 1994) available at http://www.lawsch.uga.edu/~jipl/vol2/waltersc.html Feb 4, 2000.
5 Giles S. Rich, The "Exclusive Right" Since Aristotle, (1990) available on-line at http://www.wcbcourses.eom/wcb/schools/LEXIS/law07/jmueller/2/files/rich.doc
6 To do otherwise would be to usurp the royal prerogative. Prior to the enactment of a federal patent law, the term patent was almost never used. Edward C. Walterscheid, "The Early Evolution of the United States Patent Law: Antecedents (5 Part I)," Journal of the Patent and Trademark Office Society 78, no. 9 (1996): 616, fn 4.
7 U.S. Constitution, Art. I, Sec. 8, Cl. 8.
8 Walterscheid argues that the intellectual property clause was intended not so much as an express authority to promote the progress of science an the useful arts, but rather as a means of ensuring authority to do so in a particular way. "It seemed to be understood that the grant of monopoly in lieu of a financial reward to the inventor, which government could not afford." Edward C. Walterscheid, "Patents and Manufacturing in the Early Republic," Journal of the Patent and Trademark Office Society 80, no. 12 (1998):
9 Act of April 10, 1790, 1 Stat 109.
10 Edward C. Walterscheid, "Patents and Manufacturing in the Early Republic," Journal of the Patent and Trademark Office Society 80, no. 12 (1998): 889.
11 Edward C. Walterscheid, "To Promote the Progress of Useful Arts: American Patent Law and Administration, 1787-1836, Part I," The Journal of the Patent and Trademark Office Society 79, no. 1 (1997):68 “Patent Attorneys, Their Records, and the Study of Invention,” Midori Okazaki, 2000 Modern Inventors Documentation Program invention.smithsonian.org/mind Smithsonian Lemelson Center -23- lemcen@si.edu
12 Act of February 21, 1793, 1 Stat. 318.
13 Act of July 4, 1836, 5 Stat. 117
14 While no monopoly rights accrue in an invention until the Patent Office issues a patent, others rights might be created under state common law, such as the law of trade secret or unfair competition. Arthur R. Miller and Michael H. Davis, Intellectual Property 2d ed, St. Paul, MN West Publishing Co. (1990): 10.
15 35U.S.C. 111-112.
16 Although not required, drawings are nearly always a part of the patent application and can be more useful than the written description in explaining the invention.
17 John R. Thomas, "Patent Law and Pioneering Inventions," High Technology Law Journal 10 (1995): 40.
18 Greg Myers, "From Discovery to Invention, The Writing and Rewriting of Two Patents." Social Studies of Science 25 (1995): 73.
19 Thomas at 56.
20 Thomas at 55.
21 37C.F.R. sec. 1.101-1.104.
22 Utility patents are given to technological invention having practical use and are the most common type of patents. Design patents protect designs as they are embodied in a manufactured object, and plant patents protect new plant varieties. They have somewhat different requirements.
23 35U.S.C. 101-103.
24 Durham, Patent Law Essential: 36.
25 see. Bosies v. Benedict. 27 F.3d 539, 541 (Fed Cir 1994).
26 35 U.S.C. 146.
27 35 U.S.C. 135(b) Interference between two issued patents may occur, but is conducted by the federal courts. 35 U.S.C. 291.
28 35 U.S.C. 251.
29 35 U.S.C. 251.
30 Durham, Patent Law Essentials: 39.
31 Regarding extension of patent terms see 35 U.S.C. 156. Design patents have 14-year term. 35 U.S.C. 173. Patents applied for prior to June 8, 1995, are entitled to the greater of the 20-year term of current statute or 17 years from date of issue under the former statute. 35 U.S.C. 154(c). 31 35 U.S.C. 282.
32 35 U.S.C. 154.
33 Assignments of patents must be registered with the Patent Office.
34 Anti-trust concerns may have the effect of obliging a patent owner to license the patent to others.
35 Infringement suits against the U.S. Government or government contractor must be in the U.S. Court of Claims. Patent owners whose rights have been infringed by imported goods may bring a suit before the International Trade Commission, in lieu of or in addition to a suit in Federal District Court. However, if the defendant alleges that the patent is invalid, the case will be "removed" or transferred to District Court. 19 U.S.C. 1337.
36 35 U.S.C. 282.
37 Pamela McClintock, "Brobeck Grabs Six From Lyon," The Recorder/Cal Law (Feb 8, 2000) available online at http://www.lawnewsnetwork.com/practice/iplaw/news/A15554.html March, 17, 2000.
38 Manual of Patent Examining Procedure, sec 707.07(j) "When, during the examination of a pro se case, it becomes apparent to the examiner that there is patentable subject matter disclosed in the application [the examiner] shall draft one or more claims for the applicant and indicate in office action that such claims would be allowed if incorporated in the application by amendment, [paragraph] This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent."
39 Michelle J. Burke and Thomas G. Field, "Promulgating Requirements for Admission to Prosecute Patent Applications," Journal Of The Patent And Trademark Office Society 77, no. 5 (1995): 370.
40 Rules of Practice in the United States Patent Office. Rule 17 (1899).
41 Harry Moatz, "The Source of the Registration Examination," PTO Today (April 2000): 21.
42 Sperry v. Florida, 373 U.S. 379 (1963).
43 Former Patent Office examiners are sometimes given waivers. Current examiners are not permitted to register for the examination. The UK patent office recently relaxed its restrictions on those who represent inventors in its patent office. Where only those who were qualified by the Chartered Institute of Patent Agents could apply for a patent on behalf of another, anyone can now represent inventors, so long as they refrain from using the term patent agent. Non-CIPA qualified practitioners must style themselves as patent representatives or patent advisors.
44 The passing rate was 58% for the 1997 examination, 37% for the 1998 examination, 53% for the April 1999 examination was 53%, and 66% for the November 1999 examination.
45 Arthur R. Whale, "A Trenchman's Guide to Getting Better Patents," Journal Of The Patent And Trademark Office Society 71, no. 3 (1989): 245
46 Arthur R. Whale, A Trenchman's Guide to Getting Better Patents, Journal of the Patent and Trademark Office Society 71, no 3 (1989): 242.
47 Leonard S. Reich, The Making of American Industrial Research: 103.
48 Private conversation with Karl Jorda.
49 Sewall v. Walters, 21 F. 3d 411, 415 (Fed. Cir. 1994).
50 Mueller Brass Co. V. Reading Industries, 352 F.Supp. 1537, 1372 (E.D. Pa. 1972), affd 180 U.S.P.Q. 547 (3rd Cir. 1973), cited in John O. Trasansky, "Inventorship Determination," Journal of the Patent Office Society 56, no. 9 (1974): 571
51 35U.S.C. Ill, 115-116.
52 Al Lawrence Smith, "Negotiating with Patent Examiners," Journal of the Patent and Trademark Office Society 72, no. 2 (1990): 169.
53 Kevin G. Rivette and David Kline, Rembrandts in the Attic, Boston: Harvard Business School Press (1999): 47
54 Simon H. Rifkind, The Romance Discoverable in Patent Cases, 16 F.R.D. 253
55 Fed. R. Civ. P. 11
56 Simon H. Rifkind, The Romance Discoverable in Patent Cases, 16 F.R.D. 253
57 Kevin G. Rivette and David Kline, "Rembrandts in the Attic," Boston: Harvard Business School Press 1999: 93-96.
58 In patent controversies, discovery can take place during a civil infringement lawsuit as well as in an interference. Discovery in an interference, however, is far more limited.
59 Fed. R. Civ. P. 26.
60 See. U.S. v. Reynolds. 345 U.S. 1,6, (1953) (holding that the term "not privileged" as used in discovery under the Federal Rules of Civil Procedure, refers to privileged, as understood in evidence law."
61 Wigmore on Evidence
62 Wigmore on Evidence
63 Upjohn v. U.S.. 449 U.S. 383 (1981).
64 Swidler& Berlin v. U.S.. __ U.S. __ (1998).
65 Hoechst Celanese Corp v. BP Chemicals Ltd.. 78 F.3d. 1575, 1578 (Fed. Cir. 1996).
66 Vitronics Corp. v. Conceptronic. Inc.. 90 F.3d 1576, 1582, (Fed. Cir. 1989)
67
68 Sperry v. Florida . 373 U.S. 379 (1963).
69 Jack Winter. inc. v. Koratron Co.. 54 FRD 44, 172 USPQ 201 (N.D. Cal. 1971), see also, Quantum Corp. v. Western Digital Corp... 15 USPQ 2d 1062 (N.D. Cal. 1990); Hewlitt-Packard Co. v. Bausch & Lomb. Inc.. 116 F.R.D. 533, 4 USPQ 2d 1676 (N.D. Cal. 1987); McNeil-PPC. Inc. v. Procter & Gamble Co.. 136 F.R.D. 666 (D. Colo. 1991).
70 Knogo Corp. v. United States. 213 USPQ 936, 941 (Ct. Cl. 1980) see. also. Advanced Cardiovascular Sys.. Inc. v. C.R. Bard. Inc.. 144 F.R. D. 372, 25 USPQ2d 1354 (N.D. Cal. 1992); Laitram Corp. v. Hewlett-Packard Co.. 827 F.Supp. 1242, 27 USPQ2d 1541 (E.D. La. 1993); Rohm and Haas Co. v. Brotech Corp.. 815 F. Supp. 793, 26 USPQ 2d 1800 (D.Del. 1993) affd 1994 U.S. App. LEXIS 3102 (Fed. Cir. Feb. 18, 1994 (unpublished opinion)); Ball Corp. V. American National Can Co.. 27 USPQ2d 1958 (S.D. Ind. 1993).
71 Glaxo. Strvker Corp. v. International Orthopaedics, Inc. 145 FRD 298, 304 (E.D. NY 1992).
72 Duplan Corp v. Peering Milliken, Inc.. 397 F.Supp. 1146 (D. S.C. 1974); Sneider v. Kimberly-Clark Corp.. 91 F.R.D. 1 (N.D. HI).
73 Hercules Inc. v. Exxon Corp.. 434 F. Supp 136, 151 (D. Del. 1977).
74 D.C. Toedt, Reeingineering the Inventor Interview, Intellectual Property Law Journal ,119 “Patent Attorneys, Their Records, and the Study of Invention,” Midori Okazaki, 2000 Modern Inventors Documentation Program invention.smithsonian.org/mind Smithsonian Lemelson Center -26- lemcen@si.edu
75 Daniel R. Fischel, Lawyers and Confidentiality, University of Chicago Law Review 65, no. 1 (1998): 1
76 ABA Model Code of Professional Responsibility Cannon 4.
77 Disciplinary Rule 4-101.
78 Rule 1.6 of Model Rules.
79 112 ALI Restatement of the Law (Third), The law Governing Lawyers, Proposed Final Draft 1996.
80 Ibid. 81 E-mail from Michael Churgin, January 17, 2000.