“If you cannot get a confidentiality agreement signed you absolutely must file a patent application first, and you really should have professional help doing that if you can afford it.”
As mentioned in Part I of this series, many inventors will seek to obtain some kind of patent protection so they can stake claim to their invention. Filing at least a provisional patent application is a necessary strategy, because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step, particularly if you are going to need some assistance later to develop your invention. It is also a good first step because you do not need a confidentiality agreement when dealing with a patent agent or patent attorney because the law already requires that information learned from clients or even prospective clients must remain confidential. So, even if you just seek the advice of a patent attorney or patent agent and never wind up hiring them, they are legally required to keep what you tell them confidential. This legal requirement is much stronger than any confidentiality agreement you could ever have them sign. This is true because any confidentiality agreement will say that if the information becomes public the signer is no longer obligated to keep the information secret. There is no such “out clause” in the attorney-client privilege. What you tell a patent attorney or patent agent about your invention is confidential and will remain confidential even if no representation relationship ever is undertaken.
Don’t be a Prima Donna
Most attorneys simply do not sign confidentiality agreements and are invariably scared away from representing those who ask for a signed confidentiality agreement. It is simply urban legend that attorneys steal inventions. There has never been a single provable case of an attorney stealing an invention, ever. It simply doesn’t happen, and if you are caught up on an attorney or patent agent signing a confidentiality agreement, finding reputable assistance will likely be quite difficult. Sure, you can find a patent attorney here and a patent agent there who will sign a confidentiality agreement, but those who worry about attorneys stealing inventions despite the legal requirements imposing attorney-client confidentiality are routinely viewed as difficult clients that are likely to be problematic and perhaps even sue the attorney if a patent is not obtained. Put bluntly, patent practitioners do not need the hassle of representing someone whose first request is to set up a lawsuit if something goes wrong. Many patent practitioners are not interested in representing independent inventors, so don’t present as a prima donna when seeking legal assistance—at least not if you want to obtain high-quality representation.
Patent Application: A First Step, But No Guarantees
Back to the question at hand regarding the need for a confidentiality agreement after filing a patent application. It is important to understand that no exclusive rights will attach to your invention unless and until a patent is actually awarded by the United States Patent and Trademark Office (USPTO. Filing a patent application, whether a provisional patent application or a nonprovisional patent application, is an important first step that works to legally define the scope of your invention, but no rights attach at the time of filing. After you have a patent application on file, even if it is a provisional patent application, the need to obtain a confidentiality agreement lessens, but it does not go away. The short answer is that you are always better off getting a confidentiality agreement signed whenever possible. However, after you file a patent application you can use the coveted terms “patent pending” and this should scare away many, if not all, potential competitors. Typically, no one wants to spend the time, money and energy associated with making and selling a product when a patent could pop up and be used to shut down the operation.
Having said this, there is no reason that others could not use, make and sell your invention prior to the issuance of a patent. Additionally, if you file a patent application and inadvertently do not include as much description as is required and should be present, you could significantly harm yourself by telling others about your invention without a confidentiality agreement in place. For example, if you tell someone and they engage in some activities, such as, but not limited to, writing about your invention, and you later realize that the original application was faulty, you may not be able to file a new, updated application. This is particularly a concern if you filed a provisional patent application on your own or used a bargain basement attorney. Bargain basement prices mean little time was spent, which in turn means a less complete work product.
When to Show Your Cards
As mentioned in Part I, many people are just not going to sign confidentiality agreements. This is not necessarily because they plan on stealing your invention, but rather because, in many cases, if they sign, they are creating liability for themselves. The same holds true even after you have filed a patent application.
You can, however, with some level of assurance, show interested individuals your patent application once you have filed the application. You are still better getting a confidentiality agreement if you can, but at least you have defined your invention and secured your priority date, which relates to whatever is present in the disclosure at the time you filed the patent application. So, even if the person you are showing would be inclined to do something nefarious like rush to the USPTO with your invention, they could never obtain a priority date as early as the one you have. Of course, the sufficiency and comprehensiveness of your disclosure is critical. Don’t skimp on your first patent application ever! You cannot update your application unless you file a new application—if you leave something out, it is out, and not yours. Even if you file a second or subsequent patent application, that which was left out of the first application gets a new priority date. In the patent world, having the earliest priority date is always best.
If you are apprehensive about providing a copy of your patent application after filing without a confidentiality agreement, perhaps you should consider providing an executive summary of the invention, together with a few of the illustrations you filed. This would give the investor or potential partner or licensee something to evaluate substantively, but not the core description of your invention. This could entice someone who was otherwise unwilling to sign a confidentiality agreement into signing. It may not work that way, but you are still holding as a secret the specific details about your invention while trying to see if the other party really has interest.
Despite these risks, it is at least somewhat common to show serious investors the patent application you have on file. They might not want to actually see the application and instead might just ask you questions about it, but some will want to at least take a look to thumb through it so they can get a sense about whether it is a quality patent application. Others might want to talk to your patent attorney, or even see a patent search report or patentability opinion. Again, they may not read the report or any of the patents, they may just want to make sure you have responsibly checked the boxes and have obtained professional advice, thus having some reason to believe that a patent will issue or that the patent that has already issued is valuable and strong.
Always remember that investors, particularly those you will most want to talk to, are notorious for not wanting to sign confidentiality agreements because they can talk to so many different inventors that they are bound to come across someone who could think that their idea was stolen. And the investors you most want to talk to are in high demand, so they don’t need to sign a confidentiality agreement because everyone wants them to consider their idea/invention.
Help is Out There
The moral of the story is that you should get a confidentiality agreement signed whenever possible, but understand that, to get the help of a reputable professional, you may have to live with not having one. If you cannot get a confidentiality agreement signed you absolutely must file a patent application first, and you really should have professional help doing that if you can afford it. If you need to do the preliminary patent work on your own due to cost constraints, take a look at the Invent + Patent System, which helps individuals create and file a provisional patent application themselves, using a step by step process I invented in order to teach law students how to write patent applications. Many thousands of inventors have used it successfully over the years.
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