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August 15, 2018


This not-unique mess leaves an interesting "hot potato" issue for any agent or attorney handling such an application with disputed joint versus sole inventors and different ownership[s] - who is the client and what to do if there are any conflicting instructions? Likewise as to any suggestions, or handling, of any possible AIA Derivation Proceeding, request for PTO Solicitor advisory opinion, etc.?

the complaint probably should have been submitted in an IDS. I have seen a file history where contentions regarding inventorship were thrown at the patent offic.e

I've been in a situation where my client insisted he was an inventor, which was disputed by another purported inventor who'd also filed an application.
My duty was to my client, and to the PTO, so I proceeded accordingly, while encouraging a dialogue to resolve the dispute. (Our application named the other party as a co-inventor, and claimed priority to his application, but he refused to sign a declaration.) The other party's attorney was understanding, and did his best to help resolve the matter. We had some interesting discussions about what we could (or should) ethically disclose to each other.
At the end of the day, both applications were abandoned in the face of §103 prior art, so the story ended there. The rules for dealing with these situations are less than crystal clear. I think the best course of action is to represent to the PTO what you believe in good faith to be the facts - and keep good notes to support it. If you don't believe your client's version of events, you should probably withdraw from representation.

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