Finding and Disclosing to a Patent Attorney
Enjoy the protections of an attorney-client relationship.
At some point, you may need the advice and counsel of an experienced patent attorney (See Do You Need a Patent Attorney?). Your first step is to find one in your area who can help you.
- Browse Nolo's Lawyer Directory to find local patent attorneys. You'll find detailed profiles, philosphy, fee information, and more.
- All patent attorneys are listed in the PTO publication, Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office (A&ARTP ). It is available in many public libraries and Patent and Trademark Depository Libraries, government bookstores, and on the PTO ’s website (www. uspto.gov).
- The American Intellectual Property Law Association (AIPLA ) may be able to assist you in locating patent attorneys in your area. Contact the AIPLA at http://www.aipla. org or at 2001 Jefferson Davis Highway, Suite 203, Arlington, VA 22202, phone: 703-415-0780.
- The Intellectual Property Law Association of the American Bar Association also has a listing of intellectual property attorneys. Contact them at www.abanet.org or at 312-988-5000. Most attorneys bill on an hourly basis ($150 to $600 an hour) and send a bill at the end of each month.
Some attorneys bill on a fixed fee basis. For example, $1,000 for a patent validity opinion, $1,000 for a patentability search, and $5,000 for a simple patent application. Note that in many states, such as California, a client always has the right to terminate the attorney, although this does not terminate the obligation to pay the attorney. If you don’t respect and trust your attorney’s professional abilities, you should switch and find a new attorney. Under most state bar rules, your attorney is required to deliver all of your papers to you at your request and without charge upon termination. However, you should not make this decision hastily. Switching attorneys is a nuisance and you may lose time and money.
Disclosing Patents and Trade Secrets to an Attorney
When you retain the services of an attorney, a privileged relationship is created. The attorney cannot divulge information given in confidence. The attorney can only disclose information you’ve shared with your consent or under special circumstances, such as a court order.
This confidential relationship (attorney/client privilege) also applies to employees and agents of an attorney. However, you should observe the following guidelines regarding attorney/client relationships:
- Disclosures to an attorney are only protected when made in confidence. For example, public disclosures (in a diner or a ballpark) that could be overheard might not be protected.
- The attorney/client privilege only applies to your attorney—the attorney you have retained. A casual discussion with an attorney (sometimes known as “street corner advice”) will generally not set the privilege in motion (although in some states it may).