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?" In some cases, 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 difficulties. Let me me just kill both concerns here: you probably don't will need your patent attorney to sign an NDA when you are considering hiring him (or her) as your patent attorney.
Let's speak about that second question very first. An attorney owes all sorts of ethical duties to his client. The lawyer 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 feel that there might be some lawyers who are in fact charging customers to prepare an NDA just so the client can then ask them some concerns 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 in all probability barred by ethical rules - difficult to separate the attorney's from the client's.
Normally, 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 no matter whether to sign the agreement that he in fact wrote? The entire circumstance is particularly odd. And finding paid to be put in that scenario is even weirder. And likely unethical. So let's drop that 1.
Onto the initial question: really should a lawyer sign an NDA just before the inventor discloses his idea to him? Possibly not. Attorneys commonly owe a duty of confidentiality, imposed by state law, to their clients. Patent attorneys are also topic to federal rules that require client facts be kept confidential. But then the question arises of whether or not an inventor who is calling to get some fundamental facts about fees and the patent approach is actually a client. This depends on quite a few factors, and it could undoubtedly be argued that the inventor is not but a client, which means the lawyer may possibly not have an obligation to preserve the divulged information confidential. This has all sorts of ramifications on the inventor's capacity to file for patent protection in the US and abroad.
So what is the remedy? How can an inventor get basic assistance without having risking disclosure of his concept? 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 troubles of its own, beyond the obvious cost issues. An lawyer have to make confident, ahead of representing a client, that the representation wouldn't cause any conflict of interest with any current or past customers. Producing this determination would be fairly difficult prior to understanding the rough boundaries of what the client demands.
Maybe the inventor could tell the lawyer only honestly standard information about the invention - not sufficient to trigger disclosure, but sufficient that the attorney could get an notion about the invention? Once again, difficult 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 "fundamental" description probably isn't going to suffice.
I propose that you rely on two points: trust and faith. Most attorneys can be trusted. And most attorneys aren't businesspeople or inventors or seeking to expand their income stream. What I mean by this is that they aren't your competition, they're quite possibly not going to steal your concept and try to market place it themselves. And when I say you ought to rely on faith, I'm guessing that the Patent Workplace would by no means refuse your patent application based on a disclosure to an lawyer, nor would a court invalidate your patent given that you shopped it about to two or three attorneys prior to picking one. Have some faith that the courts would locate 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 exactly where an inventor was prevented from finding a patent for the reason that he disclosed it to an attorney and then waited too lengthy to file the application. I highly doubt there is any frequently, that sort of disclosure happens when it is produced to a convention audience, or pals and loved ones, not to an lawyer who has a usually recognized duty of confidentiality.
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