Patent Law

Should creative patent attorneys be fired?

By Lawrence B. Ebert, Esq.

What?s the most creative thing you?ve seen a patent attorney do?. In one of the answers, the answerer states that it is not a patent attorney?s role to be creative and if he/she is creative?he/she should be FIRED. Agree? Disagree?

LBE posted:

It was the patent attorney at Fairchild who pushed for what became the application for the integrated circuit.

From L. B. Ebert, The Impact of World War I on Present Day Patent Issues, Intellectual Property Today, p. 35 (February, 2005)

-->Robert Noyce and Jean Hoerni had been working merely on an idea about putting a flat plane of silicon dioxide on top of silicon, but patent attorney John Ralls kept asking "What else can you do with this idea?" Noyce then realized that electrical connections could be run along the silicon dioxide, particularly connections among multiple elements, and Noyce's conception of the IC was born.<--

Additionally, one might ask "creative as to what"? Invention or innovation? A patent lawyer who can (creatively) foresee the innovation, and draft claims accordingly, is invaluable. A patent lawyer who mechanically drafts claims to an invention is merely a scrivener.

***Separately, in passing

Highly Publicized Lawsuit by Inventor Overturned including the text:

[Patent lawyer] Gugliotta should have known that Morano's invention could never be patented because two known concepts such as the cell phone and solar energy pad cannot be combined to obtain a new patent.

Also, from Patently-O:

In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J?s attorneys found that the patent was narrowly drafted and refused to take a license. (?Consisting of? claim language). In 2005, the Immunocept sued its patent attorneys for malpractice. On appeal, the CAFC agreed that federal courts holds exclusive jurisdiction over this case because it requires a determination of patent claim scope ? a substantial patent law question.

In Air Measurement (AMT), the patent holder sued its attorney for malpractice based on a series of alleged mistakes, including filing after an on sale bar date, failing to submit two prior art references; and failing to properly inform AMT of the mistakes.

Also Federal Circuit Issues Patent Law Malpractice Decisions

***Cross-reference

Oprah Winfrey's Harpo sued for patent infringement as to patent attorney Scott Harris, the inventor of the '252 patent on which Harpo is being sued.

Full post as published by IPBiz on December 24, 2008 (boomark / email).