Lately I have received a recurring question: “Will you sign this Confidentiality Agreement before I tell you about the invention for which I want you to write a patent application?” Sometimes the question is asked, “How much do you charge to write an NDA that you will then sign so I can tell you about my invention?” This second question is a wonder that presents all kinds of problems. Let me just eliminate the two questions here: You probably don’t need your patent attorney to sign an NDA when you are considering hiring him (or her) as your patent attorney.
Let’s talk about that second question first. A lawyer owes all kinds of ethical duties to his client. The lawyer would be violating any of them by writing a confidentiality agreement that he will then sign. In practice, I hate to think that there may be some attorneys who are actually charging clients to prepare an NDA just so the client can then ask them some questions about how to patent their invention. The attorney has a duty of loyalty to the client, so drafting an agreement that benefits the client, possibly at the attorney’s expense (as the signing party), is likely prohibited by ethical rules, which is difficult to separate from the attorney. the client’s.
In general, it is advisable for both parties signing an agreement to have an attorney who can give them some advice on the agreement. The client is represented by the attorney who wrote the argument. Does that mean that the writing attorney should ask his own attorney for advice on whether to sign the agreement that he actually wrote? The whole situation is very strange. And getting paid to be in that situation is even weirder. And probably unethical. So let’s drop that.
On the first question: should a lawyer sign a confidentiality agreement before the inventor reveals his idea to him? Probably not. Attorneys often have a duty of confidentiality, imposed by state law, on their clients. Patent attorneys are also subject to federal rules that require client information to be kept confidential. But then the question arises as to whether an inventor who calls in to get basic information on the fees and the patent process is actually a customer. This depends on many factors, and it could certainly be argued that the inventor is not yet a client, which means that the attorney may not have an obligation to maintain the confidentiality of the disclosed information. This has all sorts of ramifications on the inventor’s ability to apply for patent protection in the US and abroad.
So what is the solution? How can an inventor get basic advice without risking revealing his idea? An inventor might attempt to go to an attorney, ask them to write an NDA, and then take it to the patent attorney for signature before initiating the attorney-client relationship. But this presents problems of its own, beyond the obvious cost concerns. An attorney must ensure, before representing a client, that the representation does not cause any conflict of interest with any current or past client. Making this determination would be quite difficult before knowing the approximate limits of what the customer needs.
Perhaps the inventor could give the attorney only really basic information about the invention, not enough to trigger disclosure, but enough that the attorney can get an idea about the invention? Again, it is difficult to do. Most attorneys will want to describe the invention to some extent in the engagement letter so that it is clear exactly what the representation will entail. And for patent attorneys practicing in specialized fields: optoelectric sensors, balloon catheter medical devices, etc. – a “basic” description is probably not enough.
I propose that you lean on two things: trust and faith. Most attorneys can be trusted. And most lawyers are not entrepreneurs or inventors, nor do they seek to expand their income stream. What I mean by this is that they are not your competition, they are probably not going to steal your idea and try to market it themselves. And when I say that you must rely on faith, I assume that the Patent Office would never reject your patent application based on a disclosure to a lawyer, nor would a court invalidate your patent because it compared it to two or three lawyers before. choosing one. Have some faith that the courts will find that there is a duty of confidentiality that extends to potential patent clients. I’m going to do some research to see if there is any jurisprudence where an inventor was prevented from obtaining a patent because he disclosed it to a lawyer and then waited too long to apply. I highly doubt that there are any; Generally, that type of disclosure occurs when it is made to a convention audience, or friends and family, not to an attorney who has a generally recognized duty of confidentiality.