Tonight, I am reading Professor Hricik's article Save a Little Room For Me: The Necessity of Naming as Inventors Practioners Who Conceive of Claimed Subject Matter. My comments will be brief.
The article is worth reading if you are a patent attorney or agent preparing US patent applications. If nothing else it will increase awareness of the issue and give guidance on how to handle a practitioner's inventive contribution to a claim of an application.
As a matter of practice, I think it's better to conduct an inventor interview so you don't increase the possibility of contributing to the conception of an invention. Ask questions rather than suggest things and listen more than talk. However, if you have contributed inventive material, Professor Dolak's proposal appears to be right: (1) add your name as an inventor to the application to satisfy US requirements that all inventors be named, and (2) assign your entire ownership to the client to satisfy your fiduciary duty.
Copyright © 2014 Robert Moll. All rights reserved.
