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Non Disclosure Agreement

Should your Attorney sign a Non-Disclosure Agreement?

In preparing for and attending initial patent consultations to address a preparation and filing of an American patent application, there are several myths that seem to pervade. There are many reasons for these misperceptions on how to disclose an idea to a patent law firm.

First, most new clients seeking patent registration have never been to an attorney’s office or have sought the advice of a lawyer. For those who have, the reason is typically associated with seeking legal counsel was due to either a personal injury claim or a family dispute (typically a divorce or child custody issue). Accordingly, most new clients seeking patent protection have an inherent level of apprehension meeting with a registered patent attorney to share their new patent idea. Moreover, such clients are unsure what to do, what to bring, or what to say.

non-disclosure-agreementBased upon this feeling of apprehension, new inventors often attempt to self-educate in the hope of gaining some understanding of the patent process. While this is understandable and encouraged, this also leads to misinformation through conflicting messages available through online patent research, review of blogs on how to patent an idea, as well as discussing such affairs with others attorney unfamiliar with the patent process. Often, this further adds to the confusion, which escalates an inventor’s fears in disclosing his invention to a U.S. patent attorney.

Due to this conflicting information, many inventors of patent ideas often believe that they need to have their lawyer execute some form of non-disclosure agreement – out of some fear that the registered patent attorney, once knowledgeable regarding their patent invention, could seek to monetize the patent invention without the consent and/or authority of the inventor. What is more, inventors may not disclose any form of patent information to a prospective patent attorney unless and until they sign such a restrictive agreement (often downloaded and/or retrieved from an unknown website). Often such form agreements are inapplicable and/or not tailored in any fashion to assist in protecting confidential between the inventor and a third party.

The good news is that there are two bodies of law that help protect an inventor and his/her idea from being misappropriated by a Florida patent attorney. What is more, these ethical obligations are well established and understood by registered patent attorneys.

The first body of law is based upon the rules of professional responsibility which each member of the Florida Bar must abide by regarding maintaining client information as strictly confidential. Specifically, Rule 4-1.6 of the Florida Bar professional rules proscribe how lawyer may not reveal information relating to representation of a client unless the client gives informed consent – or if such information must be disclosed to prevent a client from committing a crime or to prevent a deal or substantial bodily harm to another. Often, this is known as the attorney client privilege.

The second body of law is based upon the Federal Code of Regulations which applies to attorneys licensed before the United States Patent & Trademark Office – specifically, registered patent attorneys. Under Section 10.57 of the code, a patent practitioner is restricted from revealing the confidences or secrets of a client, or the ability to use the confidences or secrets of a client to the disadvantage of the client. This regulation goes further to require a patent practitioner to “exercise reasonable care to prevent the employees, associates, and others whose services are utilized by the practitioner from disclosing or using confidences or secrets of a client.”

Accordingly, registered patent attorneys and intellectual property counsel licensed by the Florida Bar already are restricted from disclosing client confidences. A written non-disclosure agreement is only repetitive and unessential to the performance of the attorney’s duties to the client, and his/her efforts to help the client in an initial patent evaluation meeting.