Inventing While Writing Patent Applications

On one of the patent listservs today, someone posed the question about whether a patent attorney/agent should list themselves as an inventor on a client’s patent application, when the attorney/agent added to the invention while writing the application.

I am of the opinion that if the patent drafter is not adding to the invention in some way, they are not providing enough value, but I think it is a very rare case where the attorney/agent should list themselves as an inventor if they are doing the patent drafting.

In order to draft a patent application well, the patent practitioner must understand the invention as well or better than the inventor. As the practitioner gains this knowledge of the invention, any good practitioner would investigate each element of the invention and through the course of the discussion suggest the outer limits of the invention. During the process of questioning and discussion, the invention often morphs and changes and in some cases, new insights or ideas come to light.

This process, when properly implemented with a willing inventor, can provide an incredible amount of value to a client. In many cases, the inventor is focused on solving a particular problem in a particular manner, but the patent professional may suggest a wider applicability or test the limits of the invention and help the inventor see the invention in a new light.

This skill is not found in all patent attorneys or agents. As an inventor in several corporations, I found excellent patent attorneys and those who were absolutely horrible. The good ones understood the big picture of the invention and helped me expand my view of the invention. The bad ones would write pages and pages of excruciatingly detailed description while providing little, if any, analysis or summary. The big picture explanation was missing and often led to a misunderstanding of what the invention really was.

As advice for those seeking patent counsel is to interview several patent attorneys or agents. Chat with them on the phone or in person and try to gage their understanding of technology and get a sense of how it will be to do the all important patent interview.

I have the benefit of having been on both sides of the conversation, as an inventor and as a patent agent. I have worked with good attorneys and bad ones, as well as good clients and bad ones.

There is not always synergy between the inventor and the patent professional. When the two are aligned and thinking in the same direction, they can feed off of each other and create some very broad and creative ideas. When the synergy does not exist, it is often better to find a patent attorney/agent that is better suited for the inventor.