Disclosing your invention to a UK Patent Attorney: Non-disclosure Agreements

Introduction:

If you are an innovator, inventor, or business owner seeking to protect your intellectual property through patents, you may have questions about the need for a Non-Disclosure Agreement (NDA) before discussing your ideas with a Patent Attorney.

You may be wondering whether you need to request an NDA before an exploratory meeting with your Patent Attorney. It’s a common concern, and it’s essential to clarify this matter to ensure we can have a productive and open discussion about your intellectual property needs.

This article aims to address your concerns, provide reassurance, and shed light on the importance of confidentiality and disclosures in the patenting process.

Legal Privilege:

In the UK, Patent Attorneys must register with The Intellectual Property Regulation Board (IPReg) in order to practice, given that the title “Patent Attorney” is a reserved legal title to conduct reserved legal activities.

The title “Patent Attorney” is protected under s.276 of the Copyright, Designs and Patents Act 1988 (CDPA), meaning that it is a criminal offence to use that title “Patent Attorney” when not authorised.

Disclosing details of your invention to a regulated Patent Attorney grants you a level of protection known as “legal professional privilege”.

Generally, communications between a UK registered Patent Attorney and a client are privileged under s.280 CDPA. This means that third parties including the courts, are not entitled to discover the content of such communications where they concern professional advice. In rare circumstances, however, the courts may rule that such privilege is lost or does not apply.

Hence, in the UK, Patent Attorneys are legal professionals that are required to keep client disclosures confidential.

In summary, the professional privilege between you and your Patent Attorney can ensure that certain communications between you cannot be disclosed without your explicit permission, even in court – this is a standard protection that comes with working with a regulated Patent Attorney.

The Chartered Institute of Patent Attorneys (CIPA)

CIPA is the approved regulator of the Patent Attorney profession in the UK and discharges its responsibilities – in partnership with The Chartered Institute of Trade Mark Attorneys (CITMA) – through IPReg, which is independent of both CIPA and CITMA.

CIPA delegates its regulatory function to IPReg – both are separate. CIPA charges membership subscription to UK Patent Attorneys and IPReg levies practice fees – again, both are separate – and members of CIPA are not automatically registered with IPReg.

However, in order to be a UK Chartered Patent Attorney i.e., a Fellow of CIPA, a Patent Attorney must be on the Register of Patent Attorneys which is maintained by IPReg. Therefore, most if not all Patent Attorneys in the UK are members of CIPA and are thus registered with IPReg.

Now, let’s look at what the IPReg rules state about legal privilege.

IPReg’s Core Regulatory Framework:

For a comprehensive understanding of the regulatory arrangements governing Patent Attorneys, you can access IPReg’s Core Regulatory Framework [1].

IPReg’s Legal Professional Privilege:

IPReg is the “regulatory body” of Patent Attorneys & Trade Mark Attorneys. IPReg plays a vital role in setting regulatory arrangements for Patent Attorneys.

According to IPReg, choosing a regulated Patent Attorney that is on the IPReg register provides you with additional protection as:

“[O]nly those attorneys and firms subject to IPReg’s regulatory arrangements are required to:

• carry professional indemnity insurance, safeguarding you against negligent work or a failure to account for your money.
• adopt and follow a formal complaints procedure, ensuring transparency and accountability in case of any issues.
• comply with IPReg’s Overarching Principles and Code of Conduct, which outline the minimum standards of ethical behavior and professionalism. Breaches of these rules can lead to IPReg taking disciplinary action against the attorney or firm.
• maintain their competence throughout their careers and provide evidence of ongoing professional development to IPReg.

Furthermore, only registered attorneys are included in the Legal Ombudsman Scheme. The Legal Ombudsman deals with complaints about costs, delay, and poor communication that do not constitute breaches of IPReg’s rules.

By instructing a registered Patent Attorney, you are protected by legal professional privilege, meaning certain communications between you and your attorney cannot be disclosed without your permission, even in court” [2].

Therefore, you can be assured that your confidential information will remain secure with your regulated Patent Attorney.

The Importance of Confidentiality:

Open and transparent communication may allow your attorney to understand your invention fully and provide tailored advice to protect your intellectual property rights.

You can trust your regulated Patent Attorney, as they are ethically and legally bound to maintain the confidentiality of your commercially sensitive information.

Non-disclosure Agreements & Third Parties:

It is of paramount importance to remember not to disclose your invention to any third party as such an enabling disclosure may otherwise anticipate the novelty of your invention. The exception here is if your invention is disclosed in confidence, however, this naturally also carries risks i.e., if a breach of confidence takes place.

We typically advise our clients to first file a patent application before disclosing any details to third parties and preferably to wait until after the patent application is published and even then to only discuss information that has already been made available to the public via the publication of the patent application.

In some cases, however, you may decide to disclose your invention to a third party at your own risk, in confidence, ensuring an NDA is in place. For example, you might need confidentiality agreements for necessary disclosures to third parties involved in testing or implementing an invention before filing a patent application.

The UK Intellectual Property Office (UKIPO) offers helpful information, examples, and templates on non-disclosure agreements on their website [3]. These resources can be valuable if you still feel the need for an NDA in specific situations.

It may be a good idea to include a covering letter when you send the NDA to a third party as this may help to maintain relationships. The letter may identify the sender and recipient and the purpose of the disclosure while stating that the disclosure is to be treated as confidential and referring to the attached NDA.

The information subject to confidentiality typically would not cover anything trivial or obvious, nor would it apply to any subject-matter that is made available to the public, i.e., through publication or otherwise, by the sender after the date of the letter or agreement.

Conclusion:

In conclusion, the need for an NDA with your regulated Patent Attorney may not be essential due to legal professional privilege and the regulatory protection offered by IPReg.

Regulated Patent Attorneys are committed to protecting your commercially sensitive information and guiding you through the patenting process with transparency and professionalism.

This legal privilege grants you the peace of mind that your confidential information remains secure and protected. You can check if your Patent Attorney is regulated and listed on the IPReg registers [4].

About Alphabet Intellectual Property:

Alphabet Intellectual Property Ltd, trading as Alphabet Intellectual Property and Alphabet IP, is a Private Limited Company registered in England & Wales with company number 14693728. Our registered office is located at 29 Lincoln’s Inn Fields, London, WC2A 3EG, United Kingdom. We are a member of CIPA and regulated by IPReg.

We fully understand the importance of confidentiality when discussing your intellectual property needs.

References:

[1] IPReg’s Core Regulatory Framework –https://ipreg.org.uk/sites/default/files/Core%20Regulatory%20Framework_0.pdf

[2] IPReg – How do I choose an advisor? https://ipreg.org.uk/got-an-idea/do-i-need-an-advisor/how-do-i-choose-an-advisor

[3] Non-disclosure agreements https://www.gov.uk/government/publications/non-disclosure-agreements

[4] IPReg Registers – https://ipreg.org.uk/registers