In an effort of full disclosure, I am a patent attorney.
There are two significant deficiencies in working with a patent agent.
- No attorney client privilege.
- Patent agents cannot give and do not have any experience in advising clients with other areas of intellectual property law.
Attorney client privilege
During my consultations with clients, one of the first items that I discuss is the attorney client privilege. The attorney that you choose will become your trusted advisor. If you tell your attorney something detrimental to your situation, your communication is protected by the attorney client privilege. No court can make that attorney testify against you because the law wants you to be able to freely inform your attorney of your entire situation so that he/she can properly advise you in the way that you should go. However, if the person advising you could be forced to testify against you, then you would not be able to freely speak with that person and would not be able to obtain the right advice.
With a patent agent, your communication with the patent agent is not protected by the attorney client privilege because the patent agent is not an attorney.
In my experience, it appears that patent agents wants to lead you to believe that they will keep your information confidential. They do this by promising to sign a non disclosure agreement. However, this is only a contractual duty by the agent and will prohibit them from disclosing your information voluntarily. A court can still subpoena the patent agent to testify against you. The patent agent must tell the court what you told him or her.
Important peripheral advice
Patent agents are only allowed to prosecute your patent application before the Patent Office on your behalf, conduct patentability opinions and provide you a patent assignment agreement. Beyond this, their advice in other areas is considered the unauthorized practice of law. For example, the following types of advice and agreements would be considered the unauthorized practice of law:
- Licensing agreements;
- Contracts for independent contractor agreements;
- Confidentiality agreements;
- Employer-employee agreements.
In my experience, these are important topics that need to be discussed prior to filing a patent application.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.