Lately I’ve been getting a recurring question: “Will you sign this Non-Disclosure Agreement before I tell you about the invention I want you to write a patent application for?” Sometimes the question is asked, “how much do you charge to write an NDA that you will then sign so that I can tell you about my invention?” This second question is a stupid one that presents all sorts of problems. Let me delete both questions here – you probably don’t need to have your patent attorney sign an NDA when you’re considering hiring them as your patent attorney.

Let’s talk about the second question first. A lawyer owes all kinds of ethical duties to his client. The attorney would be violating any number of them by writing a confidentiality agreement that he will then sign. In practice, I hate to think that there might be some lawyers who actually charge clients to prepare an NDA just so the client can ask them a few questions about how to patent their invention. The attorney owes a duty of loyalty to the client, so writing an agreement that benefits the client, possibly at the expense of the attorney (as the signing party), is probably prohibited by ethical rules that are difficult to separate between attorney and client.

In general, it’s a good idea for both parties signing an agreement to have a lawyer give them some advice about the agreement. The client is represented by the attorney who drafted the argument. Does that mean that the drafting attorney should get his own attorney to advise him whether he should sign the agreement that he actually wrote? The whole situation is very strange. And getting paid to put yourself in that situation is even weirder. And probably unethical. So let’s leave that.

Regarding the first question: does an NDA have to be signed by a lawyer before the inventor reveals his idea to him? Probably not. Lawyers generally owe a duty of confidentiality, imposed by state law, to their clients. Patent attorneys are also subject to federal regulations that require client information to be kept confidential. But then the question arises whether an inventor who calls to get basic information about 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 keep the disclosed information confidential. 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 running the risk of having his idea spread? An inventor might try going to a lawyer, have him write an NDA, and then take it to the patent attorney for signature before starting the attorney-client relationship. But this presents its own problems, beyond the obvious cost concerns. An attorney must ensure, prior to representing a client, that the representation does not cause any conflict of interest with any current or former client. Making this determination would be difficult enough before knowing the approximate limits of what the customer needs.

Perhaps the inventor could tell the attorney only really basic information about the invention, not enough to trigger disclosure, but enough that the attorney can get a sense of 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 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 rely on two things: trust and faith. Most attorneys can be trusted. And most lawyers are not entrepreneurs or inventors or looking to expand their income stream. What I mean by this is that they are not your competition, they probably won’t steal your idea and try to market it themselves. And when I say 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 you bought it from two or three lawyers first. choosing one Have some faith that the courts will determine that there is a duty of confidentiality that extends to prospective patent clients. I’m going to do some research to see if there is any case law where an inventor was prevented from getting a patent because he disclosed it to a lawyer and then waited too long to apply. I very much doubt there is any; Typically, that type of disclosure occurs when it is made to a convention audience, or to friends and family, not to an attorney who has a generally recognized duty of confidentiality.