Do You Need Your Patent Attorney to Sign an NDA?

Below are a few steps you can take to research the person you are considering hiring.

Confirm the Person’s Credentials

First and foremost, it is essential to verify if the person is, indeed, a patent attorney. Unfortunately, there have been instances where patent agents and invention promotion companies have tried to pass themselves off as patent attorneys to increase their perceived value.

These agents and promotion companies may not outright claim to be patent attorneys, but they often try to convince you that their advice is on par with that of a patent attorney. As a new inventor, it can be challenging to understand the differences between a patent attorney, a patent agent, and an invention promotion company. To learn more about the various types of professionals who can assist you in marketing your idea, check out the article [Patent Attorneys, Agents, and the USPTO Can Help with the Patent Process].

For your own protection, it’s reasonable to ask if they are a patent attorney. If they take offense or refuse to answer, it’s a clear sign to look for someone else.

A patent attorney is someone who is both an attorney and has passed the USPTO patent agent test. On the other hand, a patent agent has only passed the USPTO patent agent test. While the USPTO imposes a duty of confidentiality on patent agents, the matter remains silent in state courts. For patent attorneys, the state bar typically requires them to maintain the confidentiality of information from potential and actual clients, both under USPTO administrative rules and state law. Patent agents, on the other hand, are only bound by the USPTO administrative rules when it comes to confidentiality.

Confirm if They Are an Attorney

Each state bar has an attorney search function that allows you to check if the person is authorized to practice law in your state. For example, the State Bar of California provides an Attorney Search function where you can verify the status of a California-based patent attorney.

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Confirm if They Are a Patent Agent

You can also determine if the person you’re considering is authorized to practice before the United States Patent and Trademark Office (USPTO). The USPTO website offers a Patent Practitioner Search function for this purpose.

Assess the Patent Attorney’s Reputation

In addition to verifying their credentials, it’s important to assess the reputation of the patent attorney you are researching. Here are some aspects to consider:

Visit Their Website and Blog

Most attorneys have websites that serve as online business cards, and some even maintain blogs. For instance, you can read more about me at my blog, [OC Patent Lawyer], which is part of Klein, O’Neill & Singh LLP, where I work.

These online platforms can provide insights into a patent attorney’s trustworthiness and ability to represent you.

Consider Their Years of Experience

It’s advisable to work with someone who has at least five years of full-time experience in patent law. I have been practicing patent law for over 14 years, with a full-time focus on it since 2003.

The attorney’s website should indicate how long they have been practicing law, and you can also find additional information on the person’s profile on the state bar website.

Evaluate Their Practice Area

It is generally recommended to avoid attorneys who practice in multiple areas of law. The frequent changes in case law make it difficult to stay up-to-date in multiple fields. I, for example, specialize exclusively in intellectual property law, primarily patents and trademarks. For other areas of law, such as corporate formation and tax advice, I refer clients to other qualified attorneys.

Assess Their Education Background

Ensure that the patent attorney graduated from a reputable engineering or law school. You need someone who can grasp the complexities of your invention. A solid educational foundation will enable them to understand how your invention works.

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For instance, I graduated from Cal Poly Pomona, consistently ranked as one of the best undergraduate engineering schools in the country by Newsweek. In addition, I have prior engineering experience with Avibank Manufacturing and project management experience with ACL Technologies. I graduated from Loyola Law School in 2003, ranking in the top 15% of my class.

Read Their Bio and Client Testimonials

Ultimately, you should feel comfortable with the patent attorney you choose to work with. A personable demeanor is crucial because you’ll be relying on their advice for potentially significant time and financial investments.

Check if the attorney has testimonials posted online, as they can provide valuable insights. You can also refer to my Google reviews for reference. If a patent attorney has no reviews, it could be due to several reasons, but exercise caution to avoid potential reputation issues. Conversely, positive reviews should be considered an additional indicator of trustworthiness.

Arrange a Meeting with the Patent Attorney

After conducting thorough online research, it is highly recommended to visit the patent attorney for an initial meet and greet or a formal consultation, which may involve a fee. While I do not charge for initial consultations, I do assess whether I am the right fit for potential clients, taking into account factors such as compatibility and their ability to cover legal costs.

When you meet the patent attorney, pay attention to their demeanor and the questions they ask about your situation and technology. These subtle cues will help you assess their trustworthiness and expertise.

Nondisclosure Agreements with Patent Attorneys

If you’ve found the right patent attorney, you should feel confident in their trustworthiness and competence, making it unnecessary to request a confidentiality agreement. The relationship between a patent attorney and an inventor is built on trust. Eventually, you’ll entrust them with recommendations that may have significant time and financial implications. If you don’t feel this level of trust, you haven’t found the right person to represent you, and it’s best to continue your search.

Your research should have led you to conclude that the person you’ve chosen is trustworthy, thereby eliminating the need for a confidentiality agreement. Conversely, if your research highlights any doubts about their trustworthiness, it’s crucial to avoid doing business with them.

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If you lack trust in a person, having them sign a confidentiality agreement won’t provide sufficient protection. Don’t be swayed by a low price or other enticements. Keep searching for someone trustworthy. Remember, patent attorneys are already bound by confidentiality duties mandated by the state bar and the USPTO.

Addressing the NDA Issue with the Patent Attorney

Asking a patent attorney to sign a confidentiality agreement is a reasonable question for a new inventor. However, expecting them to sign such an agreement may be seen as unreasonable. Some attorneys are open to signing NDAs, while others are not. There is no right or wrong approach. Personally, I prefer not to sign such agreements and instead rely on building trust with my clients through my online profile and the way I conduct myself during our interactions.

Feel free to ask the question anyway, as it can provide insight into the attorney’s response and help you gauge their approach.

Patent Agents and Invention Promotion Companies

If you decide to retain a patent agent or work with an invention promotion company instead of a patent attorney, it is advisable to have them sign a confidentiality agreement. Patent agents are subject to the duty of confidentiality imposed by the USPTO administrative rules. However, state law is silent on this issue in some jurisdictions, including California. Invention promotion companies, regardless of any legal obligation to protect your information, often have a poor reputation. The FTC and the USPTO have published literature highlighting various concerns related to invention promotion companies.

While patent agents and invention promoters may be willing to sign NDAs, this should not be seen as a guarantee of trustworthiness. They are aware that potential clients are seeking someone who will sign such agreements and may use it as an opportunity to give a favorable impression.

Contrastingly, the decision of a patent attorney not to sign a confidentiality agreement should not be held against them. There are several reasons why patent attorneys, including myself, do not sign such agreements.

Confidentiality Obligations Without an NDA

Even without a nondisclosure agreement, attorneys are obligated to keep your information confidential. The Business and Professions Code Section 6068(e)(1) stipulates that attorneys must maintain the confidence and preserve the secrets of their clients, even at considerable personal risk.

The State Bar of California prohibits attorneys from revealing client secret information under Rule 1.18 for prospective clients who haven’t formally signed a retainer agreement. Our ethical rules refer back to Business and Professions Code Section 6068(e)(1).

Remember, when dealing with reputable patent attorneys, the duty of confidentiality exists independently of any additional agreements.

Revise April 10, 2019