You have an invention that may be patentable. You know by now that secrecy and confidentiality is key to retaining patentability of your invention. To patent an invention, you need to talk to a patent attorney.  But is discussing your invention with your patent attorney not a disclosure? The good news is, no, it is not a disclosure that could harm the patentability of the invention.

A patent attorney (including an admitted attorney, advocate and in-house counsel) has a duty to preserve confidentiality of all communications between him- or herself and you, the client. Not only does a patent attorney have a duty to preserve confidentiality, all communications are also protected by way of the legal doctrine, commonly known as legal professional privilege or legal privilege. This privilege is yours only and as such may only be waived by you. However, beware that there are certain requirements that have to be met, namely:

  • the patent attorney must have acted in a professional capacity;
  • communications between the patent attorney and client must have been intended to be confidential; and/li>
  • the purpose of the communication must have been to obtain legal advice from the patent attorney.

The initial steps to get your invention patented is as easy as contacting your patent attorney and arranging a consultation – there is no need for a non-disclosure agreement to be entered into between you and the patent attorney. Discussion with any person other than your patent attorney does, however, require that a non-disclosure agreement be entered into to preserve confidentiality prior to applying for a patent. Disclosing your invention at a trade show, on the Internet, in an advertisement, in a scientific publication, on Facebook or in any other manner to the public prior to the filing of a patent application, will irrevocably destroy the novelty of your invention. Your invention will thus become public property. Consulting with your patent attorney is therefore the first step in your journey after making the invention.

Disclosing your invention to your patent attorney is as simple and risk free as that.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.