Do I Need a Signed Confidentiality/Non-Compete Agreement With My Patent Attorney?

I received a question from an independent inventor like yourself wondering whether she needs a signed confidentiality/non-compete agreement with her patent attorney before disclosing her invention.

Well, attorneys (licensed by a State Bar Association) as well as patent attorneys (additionally licensed by the U.S. Patent and Trademark Office – USPTO) are respectively bound by State Bar Association and USPTO ethical rules. These ethical rules typically obligate attorneys and patent attorneys to keep matters of their client and prospective client (e.g. a no-cost initial consultation) confidential. Therefore, such a signed confidentiality/non-compete agreement is typically not needed.

Once an attorney formally takes on a person as a client, there typically will be a formal Engagement Agreement signed between the two parties that covers the scope of the attorney’s engagement (work), confidentiality, and other such matters. However, a patent attorney should be willing to sign a confidentiality/non-compete agreement before discussing your case if it makes you feel better. If not, find a patent attorney who will sign one.

Patent agents are non-lawyers who are licensed by the USPTO to attend to patent (not trademark) matters before the USPTO such as to prepare and file patent applications, prosecute them to issuance, and post-issuance matters such as maintenance fees Patent agents cannot attend to licensing (state contract law), trademarks (state trademark law), or attend to other legal tasks which require an attorney. Patent agents are bound by the same USPTO ethical rules as are patent attorneys and thus typically do not require signed confidentiality/non-compete agreement unless it makes you feel better. You may want an agreement similar to a Engagement Agreement that attorneys use anyways.

Note that just because an attorney, patent attorney, or patent agent is licensed does not mean they have the skills you require to get the job done. It simply means they have passed a “minimum requirements test” (i.e. the applicable State Bar Exam and/or USPTO Bar Exam). While new attorneys, patent attorneys, and patent agents are supposed to (by their licensing requirements) seek and be under the daily supervision of an experienced attorney or patent agent, be sure to ask their experience level and the number of patent applications they have written before using them. Also note that they must have been TRAINED for 2-3 years under the daily supervision of an experienced patent attorney or agent An untrained patent attorney or patent agent that has written a lot of patent applications probably has written a lot of JUNK (patents that issue will be extremely narrow in scope uch that it does not cover competitor’s products and/or will not hold up in court when you sue someone for patent infringement).

For state law such as licensing your invention, forming a corporation, or filing a federal or state trademark, be sure to consult an attorney in your home state (or in the state who’s law you want to apply). Call your State Bar Association if you need an attorney referral. Attorneys are only familiar with and licensed to practice the law of the state(s) in which they are licensed.

A patent attorney or patent agent can practice patent law before the USPTO regardless of where in the world they live. Note that each country (and group treaty) tests and licenses its own patent attorneys/agents. See my article “Is There Only One Patent Office – The One In The United States of America?”.

Best regards,

Brian R. Rayve

P.S. You can lock in “patent pending” at a reasonable price at:

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