Is it necessary to obtain a signed non-disclosure agreement from an attorney prior to disclosing your invention ? The clear answer is no. A non-disclosure agreement is not required. Attorney confidentiality applies.
Communication made by the potential client to the attorney in a confidential setting for the purpose of securing legal services (as well as for obtaining a legal opinion or assistance in a legal proceeding) are privileged. Reference is made to the long established case of United States v. United Shoe Machinery Corp., 391 U.S. 244 (1968)
In a specific patent related case, the inventor’s records disclosed to the attorney were found to be confidential. The court decided that an invention record constitutes a privileged communication, as long as it is provided to an attorney for the purpose of securing primarily legal opinion, or legal services or assistance in a legal proceeding. Specifically, the court found the invention record was privileged because it was prepared and submitted primarily to the attorney for the purpose of obtaining legal advice on patentability and legal services in preparing a patent application. In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 2000)
Note an attorney client relationship is not established simply by disclosing information to the attorney. The attorney must agree to the representation. But disclosures of material and information made in the course of exploring that possible relationship will be deemed confidential.
Note this special relationship applies only to attorneys.
Copyright David McEwing, 2019