No, you do not need to get your patent attorney to sign a confidentiality agreement before you disclose your invention to him or her. In general, the state bar which regulates that attorney’s conduct requires that the attorney keep your information confidential. In California, for instance, the California Business and Professions Code requires all attorneys including patent attorneys to maintain the confidentiality of the information that prospective clients tell them during an initial consultation.
However, is this duty of confidentiality imposed by the California Business and Professions code enough to protect you? In general, yes but I recommend that you research the patent attorney to determine if that person is a trustworthy person.
Below are links to a few online research resources so that you can check out the patent attorney that you want to retain. The online research should lead you to gain a certain level of trust with that person. If not, then please do not even consider retaining that patent attorney. Plus, do not think that you will just make that person sign a confidentiality agreement to protect yourself. Finding and retaining a trustworthy attorney is much better than any amount of contractual protection from a confidentiality agreement.
- Online research of the patent attorney
- Patent attorney status
- Past client testimonials
- Visit the patent attorney
- Is there a benefit in forcing your patent attorney to sign a confidentiality agreement?
- Should you get the patent attorney to sign a confidentiality agreement?
- WHAT ARE THE DOWNSIDES TO RAISING THIS ISSUE WITH THE PATENT ATTORNEY?
Online research of the patent attorney
First, confirm if the person is a bona-fide patent attorney. After hearing so many horror stories, I’ve discovered that patent agents and invention promotion companies try to pass themselves off as patent attorneys to increase their perceived value.
These agents and promotion companies may not flat-out lie and say that they are patent attorneys, but they will try to convince you that their advice is comparable to that of a patent attorney. Inventors who are new to the process might not understand the difference between a patent attorney, patent agent and an invention promotion company. Read here to find out more about the different types of people that can help you to market your idea.
For your protection, you should first ask them if they are a patent attorney. It is a reasonable question for an inventor to ask a person, and if they are offended, then you can find somebody else worth your time.
Visit their website and blog if they have one
Most attorneys have a website which act as an online business card while others will also have a blog.
The following information will help you gage the patent attorney’s trustworthiness and ability to represent you:
How long has the person been practicing law?
Retain someone with a minimum 5 years of full time experience in one area of law. I’ve been practicing patent law for more than 14 years – full time since 2003.
Their website should tell you how long they have been practicing law and should also have the person’s profile on the state bar website (click here for California State Bar: Attorney Search) should tell you how many years they have been practicing law.
Does the person have multiple practice disciplines?
I recommend staying away from someone that practices in multiple areas of the law. It is impossible to have multiple practice areas because the case law changes too frequently. I practice law solely in the area of intellectual property with a focus primarily on patents and trademarks. Other than those two areas, I refer all other cases out to other attorneys such as corporate formation and tax advice.
What technical school and law school did the person graduate from?
Be sure that the person graduated from a reputable engineering school and/or law school. The person that you retain to prepare your patent application must have the ability to understand the complexities of your invention. You will have better success if the person has the foundational education that will permit him or her to intimately understand how your invention works.
For example, I graduated from Cal Poly Pomona in 1995. It consistently ranks among one of the best undergraduate engineering schools in the country by Newsweek. Additionally, I worked as an engineer for Avibank Manfucturing and as a project manager for ACL Technologies. I graduated law school in 2003 from Loyola Law School in the top 15% of my class.
Read the person’s bio
In general, you have to like the person. If they don’t seem personable, you won’t want to call them for advice.
Patent attorney status
A patent attorney is someone who is both an attorney and has also passed the USPTO patent agent test. A patent agent is someone who has only passed the USPTO patent agent test. While the USPTO imposes a duty of confidentiality on patent agents, the state courts appear to be silent on that issue. For patent attorneys, the state bar typically requires attorneys to maintain in confidence the information that they receive from potential and actual clients. Hence, patent attorneys are under a duty of confidentiality under both USPTO administrative rules and state law. Patent agents are only under a duty of confidentiality by the USPTO administrative rules.
Confirm he/she is an attorney
Each state bar will have an attorney search function where you can find out if the person is authorized to practice in your state. For California, the State Bar provides an Attorney Search function so that you can check the status of the California based patent attorney.
Confirm he/she is a patent agent
You can also find out if the person you want to retain is authorized to practice before the United States Patent and Trademark Office (USPTO). The USPTO website provides a Patent Practitioner Search function.
Past client testimonials
The patent attorney you are researching should have some testimonials posted online. Hopefully, they are easy to find. Here are my reviews from google.
If the person doesn’t have any reviews, then there could be a number of reasons. However, you should be on the lookout for whether they just have a bad reputation and want to hide that fact. If the person does have reviews online, then just use it as another data point for whether this person is trustworthy.
Visit the patent attorney
After you’ve done your online research, I recommend that you visit the person for an initial meet and greet or a formal initial consultation. Some charge a fee for the initial consultation. Personally, I do not but I do qualify those that want to hold an initial consultation. Am I the right type of attorney for them? Do they have the funds to pay for legal services? Do our personalities match?
When you visit the patent attorney, you will uncover a lot of soft cues that will tell you whether he or she is trustworthy. How do they handle themselves? Is the person asking the right question about your situation and the technology?
Is there a benefit in forcing your patent attorney to sign a confidentiality agreement?
The benefit of a confidentiality agreement is that it would give you a contract-based cause of action against the patent attorney should they breach their duty to keep your information confidential.
Should you get the patent attorney to sign a confidentiality agreement?
The bottom line is that if you find the right person, you wouldn’t have to get the patent attorney to sign the confidentiality agreement. You should find someone that is trustworthy. The relationship between the patent attorney and the inventor is very close. You will eventually trust them to make recommendations that will cost you a lot of time and money in some cases. If you don’t have this type of trust and feel that you need to get them to sign the confidentiality agreement, then you do not have the right person to represent you. Keep on looking.
All of the research that you conduct on that person should have led you to come to the conclusion that the person is the right person and you do not need him or her to sign the confidentiality agreement. Or, the research will lead you to doubt the trustworthiness of the person and you should not even do business with that person.
If you cannot come to trust the person, do not have that person sign the confidentiality agreement thinking that the agreement will provide you with sufficient protection. It will not. Do not be lured in by a low price. Just keep looking for a trustworthy person. You will not have to have that person sign the confidentiality agreement, because they are already under a duty of confidentiality both by the state bar and the USPTO.
WHAT ARE THE DOWNSIDES TO RAISING THIS ISSUE WITH THE PATENT ATTORNEY?
In my opinion, there is nothing wrong with asking a patent attorney to sign a confidentiality agreement. That is a very reasonable question for a new inventor. However, to expect that person to sign the agreement is very unreasonable. Some attorneys will do sign it and others will not. There is nothing wrong either way. My practice is to turn away clients that demand that I sign the confidentiality agreement. I hope that my online profile and the way that I carry myself with the person would be enough to gain their trust.
You might even ask this question just to see how the person responds.
Patent agents and invention promotion companies
Patent agents and invention promoters should sign a confidentiality agreement. For patent agents, the USPTO administrative rules impose a duty of confidentiality on patent agents. However, state law is silent on the issue, at least that is the case in California. For invention promotion companies, regardless of whether they have a duty to confidentiality, they have a generally bad reputation. The FTC and the USPTO has produced literature on various issues with invention promotion companies.
Patent agents and invention promoters will sign one. In fact, they will provide and sign their own confidentiality agreement that is meant to protect you. However, their willingness to sign a confidentiality agreement should not be viewed as a positive sign. They know that they do not have a duty to protect the confidential nature of the invention as much as the duties imposed on attorneys. They also know that you probably know this and are trying to give you a good impression. No matter how good of an impression that they provide, the duty that they have to protect your information will never be as strong as a patent attorney.
On the other hand, a patent attorney that does not sign a confidentiality agreement should not be held against them. I do not sign them because of various reasons. In fact, the vast majority of patent attorneys that I know do not sign confidentiality agreements.