We are often asked by prospective clients if a confidentiality or non-disclosure agreement (NDA) should be signed before sensitive information is disclosed to us. In fact, this is not required for the reasons explained below.
Concerns surrounding confidentiality are understandable, and it is always pleasing to hear clients raise this important issue at an early stage. Insofar as inventions are concerned, an “enabling” public disclosure which takes place before the filing date of a patent application will be a ground for revoking any eventually granted patent rights (i.e. a valid patent may only be granted for inventions which are new and inventive at the date of filing). Therefore, confidentiality or non-disclosure agreements (NDAs) are often essential to preserve the validity of any future patent rights.
However, as an exception to the general rule, the disclosure of sensitive technical information to a chartered patent attorney does not require a confidentiality or non-disclosure agreement (NDA) to be put in place. As a fully regulated firm of chartered patent and trade mark attorneys, confidentiality is inherent in our role. Our obligation to maintain confidentiality is reinforced by statute, and is a requirement of the Rules of Conduct of the Chartered Institute of Patent Attorneys (CIPA). For those reasons, and in common with other regulated patent attorney firms, we do not sign confidentiality agreements.
Whether or not a prospective client becomes a client of our firm, we are bound by strict confidentiality obligations under the Rules of Conduct set by the Chartered Institute of Patent Attorneys (CIPA). For example, Rule 8.5 states:
“If information is obtained in relation to a prospective client, a regulated person may still be bound by a duty of confidentiality, even if that prospective client does not subsequently instruct that person or their firm”.
As a firm of Chartered Patent Attorneys, any information you disclose to us is also covered by “client-attorney legal privilege” as is confirmed by Section 280 of the UK Copyright, Design and Patents Act 1988 which states:
280 Privilege for communications with patent agents.
(1) This section applies to communications as to any matter relating to the protection of any invention, design, technical information, or trade mark, or as to
(a) any matter involving passing off, and
(b) documents, material or information relating to any matter mentioned in paragraph (a).
(2) Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the patent attorney had at all material times been acting as the client’s solicitor.
(3) In subsection (2) “patent attorney” means—
(a) a registered patent attorney or a person who is on the European list,
(b) a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on the business of a European patent attorney,
(ba) an unincorporated body (other than a partnership) entitled to describe itself as a patent attorney, or
(c) a body corporate entitled to describe itself as a patent attorney or as a company carrying on the business of a European patent attorney.
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