I’ve been getting a recurring question lately: “Will you sign this Non-Disclosure Agreement before I tell you about the invention for which I want you to write a patent application?” 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 nonsense that presents all sorts of problems. Let me eliminate 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 lawyer 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 lawyer has 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 prohibited by ethical rules, difficult to separate between lawyer and client.
In general, it is recommended that both parties signing an agreement have a lawyer who can 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 if 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 rarer. And probably unethical. So let’s leave that.
As for the first question: does a lawyer have to sign an NDA before the inventor reveals his idea to him? Probably not. Lawyers generally have 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 as to 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 lawyer may not have an obligation to keep the information disclosed confidential. This has all sorts of ramifications for 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 them write an NDA, and then take it to the patent attorney for signature before initiating the attorney-client relationship. But this presents its own problems, beyond the obvious cost concerns. A lawyer must ensure, before representing a client, that the representation does not cause any conflict of interest with any current or past client. Making this determination would be quite difficult before knowing the rough limits of what the customer needs.
Maybe the inventor could tell the lawyer just really basic information about the invention, not enough to trigger disclosure, but enough so that the lawyer can get an idea about the invention? Again, hard to do. Most lawyers 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 lawyers 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 have to rely on faith, I assume 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 before. 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 digging 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 doubt very much that there are 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.