Do I need NDA when talking to a patent professional?

Question

when talking to a patent professional do I need her to sign NDA or non-disclosure is implied?

Answer 1

It is recommended to have a NDA in place before you discuss your invention with a patent professional. A patent professional can either be an attorney OR a part of search firm. Normally, it is an obligation for all patent attorneys to maintain the confidential of anyone’s invention under the law and they have to abide by the rules of law but in case of a search firm, as a normal practice, please do sign a NDA before you send any disclosure to them for prior art search purpose. Further, do verify if the search firm has a valid ISO27001 certification OR not.

If you are discussing your invention with an investor, as a best practice, it is important to file a provisional application before disclosing the details of an invention. If disclosing your invention to a potential shareholder or a business associate before filing a provisional application is inevitable, an invention disclosure should be accompanied by a NDA. It should also be kept in mind that applying early for patent protection will generally be helpful when seeking financial support to commercialize an invention.

Answer 2

Patent professional can be:

1. Patent Agent
2. Attorney
3. Paralegal

In case of Attorney and member of BAR, a person need not to go for confidentiality NDA agreement, as per law they are bound by the law and ethics to keep information confidential unless you ask them. [US attorney]

In case of inventor, if dealing directly with Agent or Paralegal (non-law firm), he is right to ask for confidentiality NDA agreement.

In general for law firm confidentiality NDA agreement are not required. they will include agent and paralegals but employee secrecy agreement will be in place to safeguard inventors.

In any event, you can ask for confidentiatliy agreement if you want to be perfectly sure about it.