Q: When I consult with an attorney that specializes in patents, trademarks, etc . Do I need to protect my idea in advance?
I have rough prototype for an invention , i’ve done a rough patent search. I just want to protect my idea as best as possible. And maybe advice on my next steps .
A: Every licensed attorney has a legal and ethical duty to keep confidential everything you disclose, unless they let you know in advance that they may have a conflict of interest. Many people consider this to be sufficient to protect your interests. You can also ask the attorney to sign a nondisclosure agreement, if you have one ready.
Not to speak with an IP attorney, and for at least the reasons stated below, most attorneys won't sign a "confidentiality agreement" with a prospective client as it's unnecessary and not required and would be highly unusual.
IP attorneys, like all attorneys, are obligated under professional rules of responsibility and ethics rules to maintain confidentiality, even regarding an initial consultation. See, e.g., South Carolina Rules of Professional Conduct, Rule 1.18(b) ("Even when no client-lawyer relationship ensues, a lawyer who has had discussions with a prospective client shall not use or reveal information learned in the consultation...."). The confidentiality rule applies to all matters communicated in confidence by the prospective client.
In other words, there is no need to have a written "confidentiality agreement" to speak with an attorney because attorneys are officers of the court, and as such, have a much different status with very unique legal responsibilities and obligations as compared to potential investors, potential business partners, manufacturers, etc. (for discussions with those groups, the best protection is having a patent application on file and a confidentiality agreement wouldn't hurt, too).
As an aside, to disclose client information, the client or even prospective client must give his/her "informed consent" for the attorney to disclose information provided in confidence - an attorney cannot unilaterally break confidentiality (there are some exceptions if the client is about to commit a criminal act or if it is prevent certain death or bodily harm). Moreover, 99.9% of attorneys take their oath as officers of the court quite seriously, and for the few miscreants who might not, they usually end up disbarred. So, even if there is a "bad apple" out there who doesn't take his oath, roles, and the rules seriously, practically speaking, he isn't likely to risk his law license breaking client confidentiality.
All of this being said, I like to have a preliminary consultation by phone to answer hypothetical questions about the broad nature of the invention and the patent process in general. Then I prefer when possible that a potential client go ahead and engage me as his attorney before our first substantive consultation, even if the engagement letter simply says "engaged for preliminary discussions." That way, we can speak freely about not only invention details but potentially related issues like prior art, licensing, inventorship, perhaps sour business deals related to the invention, possible experimental uses, trademarks, etc. etc. (because an attorney can't/shouldn't/won't provide legal advice to a non-client about specific facts/details). This approach usually saves everyone's time and even if the "client" decides after that first substantive meeting to not use my services, we at least were able to have a fruitful discussion that isn't stilted by me having to interject every few minutes to say something like, "You haven't retained me as your attorney yet so I can't answer that specific question as it involves legal advice, but hypothetically...."
Lastly, although a prototype isn't needed for a patent application nor is a patentability search required under the law, both can be helpful to the patent attorney when drafting the patent application. However, because Obama changed the U.S. patent system to a "first inventor to file" system, time is no longer on the side of U.S. inventors. It's best to file as soon as possible to "win the race to the Patent Office." Delay is dangerous.
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