Friday, January 20, 2012

Should I Reveal My Invention to Attorney?

Dear Rich: I have a series of inventions, but for right now my only focus is one and it is one of rather strong global consequence. Which is a big statement to make I know, but I also know what it means for global health. I am feeling trapped just by my ignorance of the best way to protect myself and even though I am going to an I.P. lawyer tomorrow the intimidation factor is quite strong. I know enough to inquire of the attorney's engineering background, patent experience and a full quote as well what payment arrangements would be expected and a reasonable expectation of a timeline. I do not really intend to reveal what it is I have as I am so afraid of losing the control of it, it's that attractive. The application is industrial in nature and affects every single exhaust source in the world. I realize you will read this most likely after my initial meeting but I intend to basically interview this lawyer, test the waters and listen closely. We're not sure what your question is, but we assume it has to do with whether you should (or when you should) make invention disclosures to an attorney. We know that many inventors see attorneys and manufacturers as wolves in corporate clothing and although we don't agree, we understand the paranoia. We're reminded of David Mamet's 1992 movie, The Water Engine, in which the creator of a machine that ran on water -- loosely based on the tale of these inventors -- was double crossed by crooked patent attorneys. The inventor had the last laugh (spoiler alert) when he prevented any commercialization of his invention and his patent drawings turned to dust in an attic.
Invention = disclosure. At some point every inventor who wants to commercialize an invention must make disclosures. These disclosures may be to the patent office, to business partners, to attorneys, or to manufacturers. Even if you seek to protect your invention under trade secrecy law, you will need to disclose it to others under the protection of a nondisclosure agreement.
Attorneys and disclosures. There is no reason you must disclose your invention at your preliminary meeting with your patent attorney. But if you retain this attorney, you will have to disclose your invention. Otherwise the attorney cannot properly assess its value and the protection it requires. Your communications with the attorney are privileged, meaning that unless you authorize publication, the attorney cannot disclose what you say. (BTW, USPTO rules establish confidentiality requirements for patent agents.) One situation in which you must make a public disclosure is if a patent application is filed. Unless you do not plan on filing foreign applications, your U.S. patent application will be published eighteen months after you file. Alternatively, if the patent is granted, it will also be published.
The trick with disclosures ... We believe that proper precautions should be taken when making invention disclosures. Maintain your information with secrecy and only disclose it under the protection of privilege, or nondisclosure agreements. But, perhaps more importantly, try to use personal radar to determine whether you can trust those to whom you have made disclosures. For example, prolific inventor Maurice Kanbar had a strong 35-year relationship with his patent attorney, Mike Ebert. In his book, Secrets from an Inventor’s Notebook,  Kanbar wrote:
“Most basically, you need to be able to communicate with your attorney. I can call Mike on the phone, describe my idea and detail its mechanics and Mike will ‘get it’ instantly and start writing it up. If an attorney has a different understanding of your invention, or if he or she doesn’t quickly get your drift, go elsewhere.”