Can/should you still ask a Patent Attorney to sign an NDA?

[kessa]

Hi folks,

I'm due to have my 1st chat with a local Patent Attorney tomorrow, and I've seen mention on various sites that as Patent Attorneys are legally bound by a confidentiality clause/oath, you don't need to ask them to sign an NDA.

However, my only slight concern is that if I dont ask them to sign one, then in theory, I have no record of ever having told them, or their company, about my idea, unless I end up hiring them to complete the actual patent.

Hopefully all will be OK and there won't be a problem, but I'm mindful that EVERY industry has its few rogues (tiny though that number may be), and I guess my cautious side is just playing devil's advocate

So my question is, whilst I dont need to get one signed, should I do it to be on the safe side? Also, are they likely to take offense at being asked to sign one if it's something they dont normally do?

Thanks

 

[Spearmint]

I possess a book relating to patents and I'll quote from it:-

"IP Attorneys are bound by strict confidentiality obligations and are subject to discipline and loss of their right to practice if they breach their obligations under the Rules of Conduct set by the Chartered Institute of Patent Attorneys (CIPA). Therefore you can reveal your most sensitive knowledge or information to your attorney. There's no need to make them sign a confidentiality or non disclosure agreement because they're already bound by rules of conduct set down by their professional body to complete discretion."

I think that answers your question quite nicely.

It may be worth checking mind that the IP Attorney that you are meeting is a member of such a body which you should be able to check on the CIPA website.

I wasn't sure if I was able to reveal the name of the book where I took the quote from in a public forum but pm me if you need to know it. I too have met with a Patent Attorney recently, and your initial consultation will fly by, and you'll probably be left with more questions after the meeting than before. If I were you I'd bone up on the subject before you see one, for it will give you a greater knowledge about IP, and you'll enter the meeting asking better questions as you've already done your homework.

I wish you every success.

Peter

 

[kessa]

Thanks Peter, that's a brilliant quote, and has at least put my mind at rest that the memory of what I saw somewhere was correct.

I guess my concern was that I'd not personally have any evidence of actually having met the patent attorney, and therefore that that discussion actually took place :redface:

That said, thinking about it, I do have an email confirming our appointment, and I guess I could send a follow up after the meeting thanking them for their help (which could be used as evidence if it were needed that the meeting actually took place too), so hopefully those combined with Rules of Conduct you mention above should cover all the bases

I'm probably being overly cautious, but better safe than sorry as they say!

Thanks for your help

 

[Kevh1981]

If you look on the Intellectual Property Office and search for privilege you will see that we are bound by legal privilege which basically means anything which is disclosed to use in the course of our duties is done in confidence. If we were to disclose that information to another party we would be in breach of the regulations laid down by CIPA and IPreg.

You are right to be cautious but no patent attorney would risk violating his professional duties.

 

[asj100]

i recently used the services of a patent lawyer and I asked himn to sign the NDA agreement that I had asked everyone else to sign, he thanked me for making his life easier, as I had protected the patent information in exactly the right way, he signed with no problem and I give him a copy and kept one on file.

So no harm no foul by asking, and I am sure your attoney will have no issues signing...

My patent is now filed and my product is now in production

good luck with it

 

[David Warrilow]

As a patent attorney I am often asked to sign NDAs.

However, signing an NDA doesn't provide anyone with more protection than they already have - as mentioned above, all correspondence with patent attorneys is strictly confidential, both under common law and our code of professional conduct.

I think that there is also one crucial point that has not been mentioned.

Most patent attorneys are extremely satisfied with their work and their salary - the work is very interesting and we are paid much above the national average. Furthermore, the work involved in commercializing an idea can be a full-time job. On a day-to-day basis we see how difficult it can be for clients to commercialize even very good ideas.

Thus, why would any patent attorney wish to jeopardize their career (which can take many years to establish) by taking a punt on stealing an idea and trying to commercialize it with the risk of being sued? I don't think any patent attorney would have the time or incentive to do so.

David

 

[kessa]

All good responses, and really helpful - thanks all

I've had my first meeting now so I've crossed that hurdle, but it helped put my mind at rest, and I hope this thread may help do the same for others, so thanks all for your input