| I've been getting a recurring question lately: "Will you | | | | for patent protection in the US and abroad. |
| sign this Non Disclosure Agreement before I tell you | | | | So what is the solution? How can an inventor get |
| about the invention I want you to write a patent | | | | basic advice without risking disclosure of his idea? An |
| application for?" Sometimes, the question is phrased, | | | | inventor could try going to one lawyer, have them |
| "how much do you charge to write an NDA that you | | | | draft an NDA, and then take that to the patent |
| will then sign so I can tell you about my invention?" | | | | lawyer to sign before initiating the attorney-client |
| This second question is a doozy presenting all sorts | | | | relationship. But this presents problems of its own, |
| of problems. Let me me just kill both questions here: | | | | beyond the obvious cost concerns. An attorney must |
| you probably don't need your patent attorney to sign | | | | make sure, before representing a client, that the |
| an NDA when you are considering hiring him (or her) | | | | representation wouldn't cause any conflict of interest |
| as your patent attorney. | | | | with any current or past clients. Making this |
| Let's talk about that second question first. An | | | | determination would be pretty hard before knowing |
| attorney owes all sorts of ethical duties to his client. | | | | the rough boundaries of what the client needs. |
| The attorney would be violating any number of them | | | | Maybe the inventor could tell the attorney only really |
| by writing a non disclosure agreement that he will | | | | basic information about the invention - not enough to |
| later sign. As a practical matter, I hate to think that | | | | trigger disclosure, but enough that the attorney could |
| there might be some lawyers who are actually | | | | get an idea about the invention? Again, tough to do. |
| charging clients to prepare an NDA just so the client | | | | Most attorneys will want to describe the invention to |
| can then ask them some questions about how to | | | | some extent in the engagement letter so that it is |
| patent their invention. The lawyer owes a duty of | | | | clear exactly what the representation will entail. And |
| loyalty to the client, so writing an agreement that | | | | for patent attorneys who practice in niche fields - |
| benefits the client, possibly at the lawyer's expense | | | | opto-electrical sensors, balloon catheter medical |
| (as the signing party), is probably barred by ethical | | | | devices, etc. - a "basic" description probably isn't going |
| rules - hard to separate the attorney's from the | | | | to suffice. |
| client's. | | | | I propose that you rely on two things: trust and faith. |
| Generally, it is advisable that both parties signing an | | | | Most attorneys can be trusted. And most attorneys |
| agreement have counsel give them some advice on | | | | aren't businesspeople or inventors or looking to |
| the agreement. The client is represented by the | | | | expand their income stream. What I mean by this is |
| lawyer who drafted the argument. Does that mean | | | | that they aren't your competition, they're probably |
| the drafting lawyer should then get his own attorney | | | | not going to steal your idea and try to market it |
| to advise him whether to sign the agreement that he | | | | themselves. And when I say you should rely on faith, |
| in fact wrote? The whole situation is very odd. And | | | | I'm guessing that the Patent Office would never |
| getting paid to be put in that situation is even | | | | refuse your patent application based on a disclosure |
| weirder. And likely unethical. So let's drop that one. | | | | to an attorney, nor would a court invalidate your |
| Onto the first question: should a lawyer sign an NDA | | | | patent because you shopped it around to two or |
| before the inventor discloses his idea to him? | | | | three attorneys before picking one. Have some faith |
| Probably not. Attorneys typically owe a duty of | | | | that the courts would find there does exist a duty of |
| confidentiality, imposed by state law, to their clients. | | | | confidentiality extending to prospective patent clients. |
| Patent attorneys are also subject to federal rules | | | | I'm going to do some research to see if there is any |
| that require client information be kept confidential. But | | | | case law where an inventor was prevented from |
| then the question arises of whether an inventor who | | | | getting a patent because he disclosed it to an |
| is calling to get some basic information about fees | | | | attorney and then waited too long to file the |
| and the patent process is actually a client. This | | | | application. I highly doubt there is any; generally, that |
| depends on many factors, and it could certainly be | | | | sort of disclosure occurs when it is made to a |
| argued that the inventor is not yet a client, which | | | | convention audience, or friends and family, not to an |
| means the attorney may not have an obligation to | | | | attorney who has a generally recognized duty of |
| keep the divulged information confidential. This has all | | | | confidentiality. |
| sorts of ramifications on the inventor's ability to file | | | | |