No, you do not need to get your patent attorney to sign a nondisclosure agreement (NDA).
The state, in which the patent attorney is registered, has a rule against their attorneys disclosing the private information of clients without their consent. However, this duty is only as good as the reputation that the patent attorney is trying to protect.
To this end, I strongly recommend that you conduct research on the person you are going to retain to see if they are a reputable patent attorney. Many people pretend to be patent attorneys to improperly gain people’s trust. You need to be aware of this and guard against these types of businesses and people by conducting a few basic checks.
Below are a few action items you can take to research the person you are going to retain.
- Check whether the person is a patent attorney
- Check whether the patent attorney has a good reputation
- Review the patent attorney’s experience
- Visit their physical office once
Check whether the person is a patent attorney
First, confirm if the person is a 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, a patent agent, and an invention promotion company. Read Patent attorneys, agents and the USPTO can help with the patent process 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 someone else.
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.
Check whether the patent attorney has a good reputation
Visit their website and blog if they have one
Most attorneys have a website that acts as an online business card while others will also have a blog.
The following information will help you gauge the patent attorney’s trustworthiness and ability to represent you:
How long has the person been practicing law?
Retain someone with a minimum of 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 focus on one practice area?
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.
Which college 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 Manufacturing 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.
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?
Getting your patent attorney to sign a nondisclosure 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, 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 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 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 others things such as a low price. Just keep looking for a trustworthy person. You don’t have to have the person sign the confidentiality agreement. They are already under a duty of confidentiality both by the state bar and the USPTO.
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
You decide that you want to retain a patent agent, not a patent attorney or even an invention promotion company. In my opinion, 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 have produced literature on various issues with invention promotion companies.
Patent agents and invention promoters will sign a nondisclosure agreement. In fact, they will provide one 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 you are looking for someone to sign a nondisclosure agreement. They are trying to give you a good impression by offering to sign the nondisclosure agreement.
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, patent attorneys that I know do not sign confidentiality agreements.
What rules require attorneys to keep your information confidential even without an NDA?
The Business and Professions Code Section 6068(e)(1) require attorneys to keep your information confidential. Specifically, it states that “It is the duty of an attorney to … maintain inviolate the confidence, and at every peril to himself or herself to preserve the secrets, of his or her client.”
The State Bar of California prohibits attorneys from revealing client secret information under Rule 1.18 for clients who haven’t formally signed a retainer agreement (i.e., prospective clients). Our ethics rules refer back to Busines and Professions Code Section 6068(e)(1).
Rev. April 10, 2019