I’ve been getting a recurring question lately: “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 phrased, “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 doozy presenting all sorts of problems. Let me me just kill both 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. 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 think that there might be some lawyers 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 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 probably barred by ethical rules – hard to separate the attorney’s from the client’s.
Generally, it is advisable that both parties signing an agreement have counsel give them some advice on the agreement. The client is represented by the lawyer who drafted the argument. Does that mean the drafting lawyer should then get his own attorney to advise him whether to sign the agreement that he in fact wrote? The whole situation is very odd. And getting paid to be put in that situation is even weirder. And likely unethical. So let’s drop that one.
Onto the first question: should a lawyer sign an NDA before the inventor discloses his idea to him? Probably not. Attorneys typically owe a duty of confidentiality, imposed by state law, to their clients. Patent attorneys are also subject to federal rules that require client information be kept confidential. But then the question arises of whether an inventor who is calling to get some basic information about fees and the patent process is actually a client. This depends on many factors, and it could certainly be argued that the inventor is not yet a client, which means the attorney may or may not have an obligation to keep the divulged information confidential. This has all sorts of ramifications on the inventor’s ability to file for patent protection in the US and abroad.
So what is the solution? How can an inventor get basic advice without risking disclosure of his idea? 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 problems of its own, beyond the obvious cost concerns. An attorney must make sure, before representing a client, that the representation wouldn’t cause any conflict of interest with any current or past clients. Making this determination would be pretty hard before knowing the rough boundaries of what the client needs.
Maybe the inventor could tell the attorney only really basic information about the invention – not enough to trigger disclosure, but enough that the attorney could get an idea about the invention? Again, tough 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 who practice in niche fields – opto-electrical sensors, balloon catheter medical devices, etc. – a “basic” description probably isn’t going to suffice.
I propose that you rely on two things: trust and faith. Most attorneys can be trusted. And most attorneys aren’t businesspeople or inventors or looking to expand their income stream. What I mean by this is that they aren’t your competition, they’re probably not going to steal your idea and try to market it themselves. And when I say you should rely on faith, I’m guessing that the Patent Office would never refuse your patent application based on a disclosure to an attorney, nor would a court invalidate your patent because you shopped it around to two or three attorneys before picking one. Have some faith that the courts would find there does exist a duty of confidentiality extending 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 an attorney and then waited too long to file the application. I highly doubt there is any; generally, that sort 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.