I've been obtaining a recurring question lately: "Will you sign this Non Disclosure Agreement ahead of I tell you about the invention I want you to write a patent application for?" From time to time, the question is phrased, "how considerably 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 doozy presenting all sorts of complications. Let me me just kill each questions here: you probably don't have to have your patent lawyer to sign an NDA when you are taking into consideration hiring him (or her) as your patent lawyer.
Let's speak about that second question first. An attorney owes all sorts of ethical duties to his client. The attorney would be violating any number of them by writing a non disclosure agreement that he will later sign. As a practical matter, I hate to believe that there could possibly be some lawyers who are truly charging clients to prepare an NDA just so the client can then ask them some concerns about how to patent their invention. The lawyer owes a duty of loyalty to the client, so writing an agreement that benefits the client, possibly at the lawyer's expense (as the signing party), is most likely barred by ethical rules - difficult to separate the attorney's from the client's.
Usually, it is advisable that both parties signing an agreement have counsel give them some guidance on the agreement. The client is represented by the lawyer who drafted the argument. Does that mean the drafting lawyer must then get his own attorney to advise him no matter whether to sign the agreement that he in fact wrote? The complete scenario is incredibly odd. And finding paid to be put in that situation is even weirder. And likely unethical. So let's drop that one.
Onto the first question: need to a lawyer sign an NDA before the inventor discloses his thought to him? Probably not. Attorneys ordinarily owe a duty of confidentiality, imposed by state law, to their customers. Patent attorneys are also subject to federal rules that demand client details be kept confidential. But then the question arises of no matter if an inventor who is calling to get some simple info about fees and the patent approach is really a client. This depends on many factors, and it could undoubtedly be argued that the inventor is not however a client, which indicates the attorney may not have an obligation to preserve the divulged information and facts confidential. This has all sorts of ramifications on the inventor's capacity to file for patent protection in the US and abroad.
So what is the solution? How can an inventor get standard assistance without having risking disclosure of his concept? An inventor could try going to one lawyer, have them draft an NDA, and then take that to the patent lawyer to sign before initiating the attorney-client relationship. But this presents complications of its own, beyond the apparent cost concerns. An attorney should make confident, before representing a client, that the representation wouldn't cause any conflict of interest with any existing or past clients. Creating this determination would be pretty hard just before understanding the rough boundaries of what the client requirements.
Maybe the inventor could tell the attorney only honestly simple information and facts about the invention - not adequate to trigger disclosure, but enough that the lawyer could get an notion about the invention? Again, difficult to do. Most attorneys will want to describe the invention to some extent in the engagement letter so that it is clear precisely what the representation will entail. And for patent attorneys who practice in niche fields - opto-electrical sensors, balloon catheter medical devices, etc. - a "basic" description in all probability isn't going to suffice.
I propose that you rely on two factors: trust and faith. Most attorneys can be trusted. And most attorneys aren't businesspeople or inventors or searching to expand their income stream. What I mean by this is that they are not your competition, they are possibly not going to steal your thought and attempt to marketplace it themselves. And when I say you should certainly rely on faith, I'm guessing that the Patent Workplace would in no way refuse your patent application based on a disclosure to an attorney, nor would a court invalidate your patent given that you shopped it about to two or 3 attorneys before choosing one. Have some faith that the courts would acquire there does exist a duty of confidentiality extending to prospective patent clients. I'm going to do some study to see if there is any case law exactly where an inventor was prevented from getting a patent simply because he disclosed it to an lawyer and then waited too long to file the application. I very doubt there is any commonly, that sort of disclosure happens when it is made to a convention audience, or pals and loved ones, not to an attorney who has a normally recognized duty of confidentiality.
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