I am often approached by an individual or group of individuals that have worked together to develop a new invention for which they would like to file a patent application. They could be friends, neighbors, college buddies, or maybe just acquaintances. They almost never have any type of agreement, written or otherwise, regarding rights or ownership in the invention.
Sometimes, one of the inventors asks me to represent him, but that it is not necessary for me to represent them both. Maybe the second inventor is not available to talk to me or does not have time to review documents or some other reason. As I always explain to the one inventor who requests my representation, this creates a number of problems.
The primary complication is that any communication I have with the inventor who is my client is protected by attorney-client privilege. I cannot, however, discuss the matter with the non-client inventor because of the privilege. If the inventor who is my client shares our conversations with the non-client inventor, the attorney-client privilege may be waived. This could result in serious consequences if the inventors seek to license or assert the patent at a later date.
I typically prevail on the joint inventors that I need to represent all of them in order to keep our communications protected by the privilege. Even the case of representing all of the inventors individually can present problems.
First, if the inventors have a disagreement or falling out, I would not be permitted to represent any of them. This represents a situation where there would be a conflict of interest in the representation. If I previously represented inventors A and B on a matter and they have a disagreement, I cannot then represent only inventor A or only inventor B in the matter that is now potentially adverse to the interests of the other inventor. In such a case, I would be forced to withdraw from the representation and the inventors would each be required to get new attorneys to handle the matter. This results in needless duplication of efforts, delays, and added expense.
Second, as I detailed in an earlier post, there is the problem of “secret prior art.” Inventor A conceives of an invention and files a patent application for it on September 3, 2010. Later, Inventor A and Inventor B conceive of an improvement to Inventor A’s invention and file a patent application for it on October 3, 2010. The jointly-filed application may be rejected over Inventor A’s earlier application if the improvement would have been obvious in light of Inventor A’s initial invention to one of ordinary skill in the art. This is even true whether Inventor B is aware of Inventor A’s earlier application or not.
35 U.S.C. § 103(c)
Congress saw this as a potential problem and enacted a solution.
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
Subsection (1) refers to the situation where the invention and the improvement are owned by the same entity or that the inventors are both obligated to assign to the same entity. So, as above, if both Inventor A and Inventor B had an obligation to assign their inventions to a corporation or a jointly-formed entity, such as an LLC, this section precludes the use of Inventor A’s application as prior art for obviousness purposes against the application filed for the later improvement.
Subsection (2) refers to the situation where there is no single entity for assignment or obligation of assignment, but there is a joint research endeavor. If there is a written agreement, and the improvement is invented as part of the agreement, then the original application cannot be used in an obviousness rejection of the application filed for the improvement. Thus, if Inventors A and B had a written agreement signifying a joint research endeavor, this provision would provide them with a shelter from an obviousness rejection.
Inventors Should Have an Agreement to Take Advantage of 103(c)
What does all this mean? When inventors get together with the idea of inventing or creating a new product, they should at least have at least a written joint research agreement. In that case, none of the individual inventors’ prior inventions that might otherwise qualify as “secret prior art” can be used to reject any new inventions as obvious. I understand that this may seem onerous, but at least a written agreement that states that the individuals intend to work together to develop a new product or invention is better than nothing.
An even better scenario is when the inventors form a common entity, such as an LLC, to which they obligate themselves to assign the inventions. This permits the inventors to use the safe harbor provisions of § 103(c) and to avoid potential conflicts of interest when the inventors approach an attorney to represent them individually with respect to the inventions. The attorney can represent the LLC rather than the inventors individually.