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I have an Invention ... Now What?
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   Author  Topic: lawyers involvement  (Read 722 times)
rich
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lawyers involvement
« on: Jul 21st, 2005, 8:53am »
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When deciding to advise an attorney on weather or not an idea is patentable should you have him/her sign a NDA (is this standard procedure for them anyway?).
 
And what are the chances that a large law firm lawyer would work off commision...take a cut if profit is made. And how much more important is an NDA than.  
 
This might be the wrong place to ask this question but is it possible to get investors or loans or whatever capital you have raised to start the business to pay for the lawyers.
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Re: lawyers involvement
« Reply #1 on: Jul 21st, 2005, 11:10am »
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on Jul 21st, 2005, 8:53am, rich wrote:
When deciding to advise an attorney on weather or not an idea is patentable should you have him/her sign a NDA (is this standard procedure for them anyway?).

Just to be clear, you're referring to having the attorney advise you, not advising the attorney, right?
 
In my 14 years of practice, I've never signed one (not that I recall anyway).  Attorneys are bound by fairly strict ethical codes.  The two most serious ethical violations an attorney can commit are (i) commingling funds (mixing your money with their money) and (ii) divulging client confidences.  As my ethics professor drummed into us, either of those violations subjects the attorney to "virtually automatic disbarment."  In other words, you're not an attorney anymore and have to find something else to do for a living.
 
So, an NDA is entirely redundant and superfluous.  Whether a patent agent should sign an NDA is not something I can speak to -- I don't know.
 
Now, I don't refuse to sign NDAs, but no one has persisted in having me sign one after I explain the above to them.  And, I have to say that I prefer it that way.  My job is much more rewarding if my client understands and appreciates the nature of my service.  It helps keep the expectations reasonable (and therefore achievable).  See, the above explanation is sometimes the first legal advice I give a new client.  If they ignore that and ask that I sign an NDA, it's a sign that they could very well ignore more of my advice.  It's a sign that perhaps we're not a good match and they would best be served by another attorney -- not convincing compelling evidence, but a sign.
 
on Jul 21st, 2005, 8:53am, rich wrote:
And what are the chances that a large law firm lawyer would work off commision...take a cut if profit is made. And how much more important is an NDA than.

Slim.  A lawyer at a large firm is generally not free to strike risky deals without permission of the partnership.  If you business represents so much work and so much potential gain for the firm, they may be motivated to make you a sweet deal and absorb much of your risk.  
 
I'd say that the odds of succeeding in convincing an attorney to prepare your patent application on contingency are inversely related to the number of people who must consent to such an arrangement.  One might say that the odds of succeeding are inversely related to the square of the number of attorneys who must consent.
 
on Jul 21st, 2005, 8:53am, rich wrote:
This might be the wrong place to ask this question but is it possible to get investors or loans or whatever capital you have raised to start the business to pay for the lawyers.

That's the way it's done most of the time.  See my FAQ on the topic:
http://www.isrlaw.com/inventorFAQ.html
 
I suppose the next FAQ in that series should be where to start to look for investors.  Before you talk with prospective investors, you should be aware of this:
http://www.isrlaw.com/patentFAQ.html#1
 
Try to get potential investors to sign NDAs.  
 
I know that's a lot of information.  I hope it helps.
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Re: lawyers involvement
« Reply #2 on: Jul 21st, 2005, 1:26pm »
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Jim wrote that:
... The two most serious ethical violations an attorney can commit are (i) commingling funds ... and (ii) divulging client confidences.  ... either of those violations subjects the attorney to "virtually automatic disbarment."  ....  Whether a patent agent should sign an NDA is not something I can speak to -- I don't know.
 
Practitioners before the USPTO, including patent attorneys and patent agents, are bound by the same USPTO code of ethics.  Attorneys also have to worry about state bar rules.  Regarding disclosure of client confidences the rule (37 CFR 10.57) includes:
 
   ... a practitioner shall not
   (1) Reveal a confidence or secret of a client.
   (2) Use a confidence or secret of a client to the
    disadvantage of the client.
   (3) Use a confidence or secret of a client for the advantage
    of the practitioner or of a third person, unless the client
    consents after full disclosure.
 
So I agree with Jim, an NDA is superfluous.
 
Rich T.
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Richard Tanzer
Patent Agent
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