I’ve been getting a recurring question lately: “Will you sign this nondisclosure agreement before I tell you about the invention I want you to write a patent application for?” Sometimes, the question is worded “Write a nondisclosure agreement How much will it cost, and then you’ll sign a non-disclosure agreement so I can tell you about my invention?” The second question is a question that raises all kinds of questions. Let me kill both issues here: You probably don’t need your patent attorney to sign a non-disclosure agreement when you’re considering hiring him (or her) as your patent attorney.
Let me talk about the second question first. Lawyers have various moral obligations to their clients. The lawyer will violate any number of them by writing a non-disclosure agreement that he will later sign. As a practical matter, I’m reluctant to think that there might be some attorneys who are actually charging clients to prepare an NDA so that clients can ask them questions about how to patent their inventions. A lawyer has a duty of loyalty to a client, so writing an agreement in favor of the client, possibly at the lawyer’s expense (as a signatory), may be prohibited by ethics rules – it’s hard to separate the lawyer from the client.
Generally, when the parties sign an agreement, it is best to have a lawyer advise them on the agreement. Clients are represented by attorneys who draft arguments. Does that mean the drafting attorney should have his own attorney advise him whether to sign the agreement he actually wrote? The whole situation is weird. Getting paid in this situation is even weirder. And possibly unethical. So let’s drop that.
Regarding the first question: Should the lawyer sign a non-disclosure agreement before the inventor reveals his idea to him? Probably not. Under state law, attorneys generally have a duty of confidentiality to their clients. Patent attorneys are also subject to federal regulations requiring the confidentiality of client information. But then there is the question of whether the inventor who calls and asks for some basic information about fees and the patent process is actually a client. It depends on a number of factors, and of course it could be argued that the inventor is not yet a client, which means the attorney may not be obligated to keep leaked information confidential. This has various implications for inventors’ ability to seek patent protection in the United States and abroad.
So what’s the solution? How can inventors get basic advice without risking giving away their ideas? An inventor could try going to an attorney and have them draft a nondisclosure agreement, which is then given to the patent attorney to sign before initiating the attorney-client relationship. But this brings its own problems, beyond the obvious cost issue. A lawyer must ensure that, before representing a client, the representative does not create any conflict of interest with any current or past client. Making this decision will be very difficult until the rough boundaries of customer needs are known.
Perhaps the inventor could just tell the agent the really basic information about the invention – not enough to trigger disclosure, but enough for the agent to know about the invention? Again, hard to do. Most attorneys expect some level of description of the invention in the power of attorney so that it is clear what is being stated. For patent attorneys practicing in niche areas (photoelectric sensors, balloon catheter medical devices, etc.), the “basic” description may not be sufficient.
I suggest you rely on two things: trust and belief. Most lawyers are trustworthy. Most lawyers are not businessmen or inventors, nor are they seeking to expand their income streams. I mean they are not your competition, they probably won’t steal your idea and try to sell it themselves. When I say you should rely on faith, I’m guessing the patent office will never deny your patent application based on what it disclosed to an attorney, nor will a court invalidate your patent because you bought it from two or three attorneys before picking one . It is believed that courts will find that there is indeed a duty of confidentiality that extends to potential patent clients. I’m going to do some research to see if there is any case law that prohibits an inventor from obtaining a patent because he disclosed it to an attorney and then waited too long to file. I very much doubt that there is; generally, such disclosures occur to conference audiences or friends and family, not to attorneys with recognized obligations of confidentiality.
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