Daniel Becker, Patent Attorney and Early-stage Engineering (2013-present)
“Attorney-client confidentiality” is different from “attorney-client privilege.”
If you meant to say “attorney client privilege,” then that refers to the part of criminal law / evidence law which allows a party to a proceeding to prevent his attorney from disclosing confidences, barring some exception.
In my patent law practice, when people ask about “attorney-client confidentiality,” they are typically asking about what sorts of assurances they can expect of an attorney to not share their confidential matters shared with the attorney. This varies from jurisdiction to jurisdiction, but basically these protections are provided to the prospective client by the ability of a state bar system to discipline the lawyer.
There is also room for making a legimitate claim that it is a breach of contract by the lawyer, where there is enough supporting evidence that the lawyer agreed to be bound to secrecy, in exchange for information, so that the lawyer could carry out a contract. This is difficult to enforce, and it is better to have a writing, such as a Non-Disclosure agreement. Those can be executed and signed without a letter of engagement.
Under the law, a valid non-disclosure agreement is as enforceable against a lawyer as any other party, with the complication that contracts are only enforceable where there is adequate consideration given, so that the contract really does live up to a legal standard of a contract being an exchange of value or other valuable consideration (meaning an agreement to be bound or to give up or receive or a right to receive some value).
So the issue with enforcing an NDA against a lawyer is that there is the question of whether the matters shared are for the purposes of CREATING a representation, meaning necessary information so that the lawyer can even assess whether a representation can or should take place, or whether the sharing of the information is, in itself, value conveyed.
I’m going to go ahead and take a personal position.
If you come to me with details that I need, in order to represent you… there’s no way for me to do anything for you… without that information. Imagine the exchange:
“I invented something.”
“Ok, what is it.”
“I can’t tell you. You might steal it.”
“Well, if you’ve invented a brush for insertion into a mouth, and engaging the teeth with bristles, by which reciprocating and orbital motion are able to dislodge food particles, then that’s been done.”
“How did you know?”
“That’s called a toothbrush.”
“Well, mine is different.”
“I can’t tell you.”
“Is it very very long?”
“maybe. Ok, Ok, I’ll tell you. It’s a foot long.”
“ok, thanks. Why is it a foot long?”
“So that you can reach your mouth”
“But you can reach your mouth with a handle of any length.”
“But this is longer.”
“Listen, I understand the potential value here. If someone would want to brush teeth, and they can’t get their hands very close to their mouth, then that could make a difference. But you need more than just a longer handle. Handles can be any length, and they are in fact practiced in countless lengths. And even if toothbrushes were not, there is knowledge in the unknown but long length of making brushes that handles can be many or any lengths. … Is there something about the long handle that helps make it longer?”
“Well then, I’m sorry, but I can’t do anything for you. There is an aspect of patent law called 35 USC 103, by which the patent office can reject an application for patent where the invention cannot be described in a way that demonstrates “non-obviousness,” over teachings found in the relevant arts. What that literally means is, …. if someone having skill or knowledge in similar sorts of things could use knowledge that already exists in the public domain, in order to make a thing which would be essentially what you would attempt to protect, then you cannot have a patent. The world already knows how to do it. Here, if I don’t have anything more to work with, I can only describe a longer brush.”
“Well, you still better not tell anyone. I told you because I needed to find a lawyer, and if this gets out, it would ruin my opportunity.”
“Listen, I understand that anything you said to me was said for the purposes of confidence, but you can’t expect to be able to prevent me from ever talking about or even making a longer brush. That is ALREADY known. If I tied my daughter’s hairbrush to a fishing pole, so that I could brush her hair from a different room for some reason, that didn’t require doing anything with any knowledge that you brought me. My obligations are to basically not tell people about our meeting. But you needed to tell me this information about a longer brush so that I could have any idea about what I could do for you. I’m not in the business of making brushes, and you didn’t come to me for the purpose of licensing your idea or even a prototype so that I could go into business with you. That information was not value to any sort of deal. It was critical information about WHAT I could do for you.”
“If I see anyone make a long brush, I’m coming after you.”
“great. see you next week, when you walk into a CVS and see that there’s 10 different brushes in different lengths. C’mon man. Be reasonable.”
NOW…. imagine if that entire conversation had been preceded by a NON DISCLOSURE agreement. Now there’s a writing which will inevitably purport to characterize the information as its own value. But PLAINLY, the entire conversation, whether pursuant to an NDA or otherwise, was COMPLETELY without a conveyed value. So what good is the writing? All it does is foment an adversarial interaction that could create a court case where there is nothing to be gained.
On the OTHER hand… imagine the scenario where the circumstances of the interaction created a real risk of damage to the client.
the changed circumstances:
- instead of a private patent attorney, the attorney is the in-house counsel for a large corporation, specializing in acquiring intellectual property to guide new products for the R&D department of that organization.
- The client comes to the organization FOR THE PURPOSE of selling the invention, so that the organization can do business with the prospective client.
HERE… the attorney is NOT being someone solicited for legal services for the “client.” The attorney may be someone who practices law, but they are the representative of a business entity who stands to benefit from the very disclosure that would be made to the organization, VIA the attorney. If that attorney receives that information, it can be presumed that the organization will become aware of the information, and its actions may injure the person which I have called “the client.”
THAT is where an NDA belongs.
Here is where the state of North Carolina sets the standard for confidentiality for matters disclosed to lawyers:
It’s up to the bar to decide what to do with an attorney that doesn’t follow those obligations. It’s a more logical protection than an NDA in the case of a true scenario of someone disclosing to an attorney for the purpose of an attorney acquiring information, in order to form a representation.
If you need some other reasurance, consider that attorneys need referrals, and lawyers stop sending referrals to attorneys that lose their reputation for being able to live up to the professional conduct standards.
Hope that helped.
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