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September 13, 2005
Ethical Question in Patent Prosecution: Should You Write Something Technically Wrong?
One of the things I bring to the table is a huge background in product design. I picked up the patent game quite late in life, after spending many years doing real engineering in several different industries.
Part of the value added that I like to deliver is helping the inventors see beyond the bounds of the immediate application of their invention to the great vista that could be covered with a broad application of their technology. Being both an inventor and patent agent, I have a good base for doing this. With very few exceptions, I have always been very successful in working with the inventors this way.
On rare occasions, I run into inventors and clients who are adamant about their knowledge of the invention and refuse to even consider a broader view of the invention. These are inventors who are stuck on their view of a technology and just cannot seem to let go. Sometimes, I run into a situation where I am much more skilled in the art than the inventor.
One ethical question is this: should the patent agent/attorney write a patent application where the inventor is flat wrong on the physics behind the invention? It is not a case where there may be multiple interpretations, just pure, unadulterated mechanics. Should an inventor’s half baked and incorrect explanation of the invention be put into the patent application, or does the patent agent/attorney have a duty to disclose the actual physics behind the invention?
To answer that question, I think the agent/attorney has a duty to discuss the situation with the client. However, as noted in a comment below, it is fraud on the Patent Office to knowingly submit a paper with false information. As Bob Staffer says below, the right thing is to refuse the employment.
This raises a bigger question, and that is the value added of the agent/attorney in preparing a patent application. When the client is unwilling or unable to consider any suggestions for broadening the invention, and is unable to articulate any other reason why not to accept the suggestion, I feel like I am not being able to add the value that I can bring to the situation. In the end, I am taking their money but not delivering a product that I believe to be in their best interest. This is the bigger ethical dilemma for me.
"Miss Taggart, do you know the hallmark of the second rater? It is resentment of another man's achievement. Those touchy mediocrites who sit trembling lest someone's work prove greater than their own." - from Atlas Shrugged
Posted by krajec at September 13, 2005 02:48 PM
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Comments
I think you need to review this:
37 CFR 10.18. Signature and certificate for correspondence filed in the Patent and Trademark Office.
(a) For all documents filed in the Office in patent, trade-mark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trade-mark Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this chapter.
(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements . . . made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that —
. . . (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery . . . .
It seems pretty clear to me from these rules that if you know the argument you want to make is false, YOU CANNOT DO IT, period, end of discussion. There is no "the client told me to do it" defense. The PTO guidelines, CFR and MPEP, REQUIRE you to not file the paper and refuse employment for this particular inventor on this particular invention.
Posted by: Bob staffer at September 14, 2005 07:34 AM
Bob: Thanks for your comment. That course of action makes life much more bearable and clear cut.
Posted by: Russ Krajec at September 14, 2005 09:10 AM