Hello,

I submitted by email a provisional patent to a registered attorney in
order to help me review the content. I mentioned on each page of the
document "confidential" and stated in the body of the email that this
information should not be shared with anybody. I met this attorney for
only 30min and have not yet decided whether to use his services to
review the document.

Some of the content relates to the technology my current empoyer has.
This technology is in the public domain. The application of my patent
is completely different than my company line of business. I do not
think I infringe any of my current company IP. However, I do not have
my employer contract on what I can patent and what I cannot.

Let's assume I can patent it (no infringements), but I am not allowed
to develop a patent using my company technology while I am employed. I
did not use my company technology while I was working there.

I plan to submit this patent in 3 months, once I am not employed by
this company. Once it is submitted, I will start a new business based
on this patent.

The attorney has the prove that I worked on this patent while I was
employed (dated email). He does not have any prove that I used my
company technology while I was employed though. But he said that my
patent seems very suspicious and that my company could easily think
that I used their technology while I was employed.
Could he contact this company to try to sue me? Should I sign a
Non-Disclosure Agreement with this attorney to avoid having him
communicating with my company or anybody else about this work?

Thank you.

---

Request for Question Clarification by hagan-ga on 06 Jun 2006 06:00 PDT

In general, communications with counsel are absolutely privileged, and
an attorney would face severe penalties for revealing confidential
information.  But to give you a definitive answer, I need the
jurisdiction.  Are you in the US, and if so, what state are you in?

---

Clarification of Question by dddddd-ga on 06 Jun 2006 14:13 PDT

I am in California.

Hello, d^6.  Although I cannot tell you -- no Researcher could tell
you -- whether the particular lawyer you contacted is an ethical human
being who will obey the law, I can tell you the rules that he is sworn
to obey.

California Business and Professions Code Section 6068 sets forth the
duties of lawyers in the State of California.  Many of these are
included in the Lawyer's Oath that a lawyer swears to upon admission
to the bar.  Among those obligations, and included in the Lawyer's
Oath, is the following:

"To maintain inviolate the confidence, and at every peril
to himself or herself to preserve the secrets, of his or her client."

The only exception to this requirement is that an attorney is
permitted to reveal a client's confidences IF "the attorney reasonably
believes the disclosure is necessary to prevent a criminal act that
the attorney reasonably believes is likely to result in death of, or
substantial bodily harm to, an individual."  Note, however, that even
in such a case, the attorney is NOT REQUIRED to reveal the client's
confidences, and cannot be disciplined by the State Bar for failure to
do so.  AND, if he does make disclosure, he is required to make the
disclosure no more than absolutly necessary in order to prevent death
or serious bodily harm.  See the Rules of Professional Conduct, Rule
3-100, at http://www.calbar.ca.gov/state/calbar/calbar_generic.jsp?sImagePath=Current_Rules.gif&sCategoryPath=/Home/Attorney%20Resources/Rules%20%26%20Regulations/Rules%20of%20Professional%20Conduct&sFileType=HTML&sCatHtmlPath=html/RPC_Current-Rules-3-100.html
That's how important the obligation to maintain client confidences is.

California courts, and the California State Bar, take this obligation
VERY, VERY SERIOUSLY.  The California Supreme Court has said that "the
protection of confidences and secrets is not a rule of mere
professional conduct, but instead involves public policies of
paramount importance."  _In re Jordan, 7 Cal.3d 930, 940-941.

Attorneys are not just forbidden to reveal their clients' secrets;
they are also forbidden to take on a new case against a former client,
when the former client's secrets might conceivably be part of the new
case.  Any "substantial relationship" between the two cases results in
a presumption that the client's secrets would be compromised, and bars
the attorney from accepting the case.

"To protect the confidentiality of the attorney-client relationship,
the California Rules of Professional Conduct bar an attorney from
accepting "employment adverse to a client or former client where, by
reason of the representation of the client or former client, the
[attorney] has obtained confidential information material to the
employment except with the informed written consent of the client or
former client." (Rules Prof.Conduct, rule 3-310(D); Western
Continental Operating Co. v. Natural Gas Corp., supra, 212 Cal.App.3d
at p. 759, 261 Cal.Rptr. 100.)

"For these reasons, an attorney will be disqualified from representing
a client against a former client when there is a substantial
relationship between the two representations. (Western Continental
Operating Co. v. Natural Gas Corp., supra, 212 Cal.App.3d at pp.
759-760, 261 Cal.Rptr. 100; River West, Inc. v. Nickel, supra, 188
Cal.App.3d at pp. 1303-1304, 234 Cal.Rptr. 33.) When a substantial
relationship exists, the courts presume the attorney possesses
confidential information of the former client material to the present
representation. (Ibid.)"

From In re Complex Asbestos Litigation (1991) 232 Cal.App.3d 572, 587.
Sorry for the long quote, but it encapsulates the law perfectly, and
demonstrates why the lawyer CANNOT take your information and use it to
sue you.  If he tried, the court would remove him from the case on
your request.

And no, it doesn't matter that you haven't formally engaged the
lawyer's services, or paid him. "The lawyer-client privilege is,
indeed, so extensive that where a person seeks the assistance of an
attorney with a view to employing him professionally, any information
acquired by the attorney is privileged whether or not actual
employment results."  _People v. Canfield_ (1974) 12 Cal.3d 699, 705,
on the web at http://online.ceb.com/CalCases/C3/12C3d699.htm

"Where a person consults an attorney with a view to employing him
professionally, any information acquired by the attorney in the course
of interviews or negotiations looking toward such employment is
privileged and cannot be disclosed, even though no actual employment
of the attorney as such follows...."  _Estate of Dupont_ (1943) 60
Cal.App.2d 276, 288, on the web at
http://online.ceb.com/CalCases/CA2/60CA2d276.htm

I hope this answer has been helpful.  Please don't hesitate to ask for
clarification before rating the answer, if I can provide anything
further.

---

Request for Answer Clarification by dddddd-ga on 07 Jun 2006 17:30 PDT

Thank you for your detailed answer. It seems then that there is no
point to have him sign a Non-Disclosure-Agreement. It would not bring
any extra protection to avoid having him sharing the information I
gave him to try to have my former company sue me. Is it correct?

---

Clarification of Answer by hagan-ga on 08 Jun 2006 05:37 PDT

Correct.  If he's willing to violate his oath, and one of his most
basic and fundamental obligations as an attorney, a little thing like
a Non-Disclosure Agreement isn't going to stop him.

I am always a bit cautious with an attorney until I pay him or her.

So basically you're offering $2 to a researcher to find out if you can
trust the guy you are about to give $1500 to, right?

The US legal system is complexe, and often lucrative for the
attorneys. I want to verify that they can not disclose information
with anybody else nor try to make more money by trying to see (or
creating) potential employees mal-practice.

Yes, my point is that the research you are requesting is likley to
exceed the time contraints that $1.50 (the researcher's reward) is apt
to entice a researcher to invest in your question.

For you, it's got to be worth a lot more than $2 to get a Researcher
fired up enough to tackle this question.

Please think again.

You can easily up the price of this Question.

Ok, I just increased it.

Learn from the best:
http://www.dilbert.com/comics/dilbert/archive/dilbert-20060522.html
...
http://www.dilbert.com/comics/dilbert/archive/dilbert-20060524.html

and

" The lawyer is a mercenary in the war between good and evil. The
expression "legal ethics" is an oxymoron. Perhaps the lawyer's
intentional obfuscation is the cause. As a matter of course, instead
of uncovering the plain facts of ..."

http://www.amazon.com/gp/sitbv3/reader/ref=sib_dp_pt/103-9727351-1147842?%5Fencoding=UTF8&asin=0873370724#reader-link

The lawyer is NOT your problem.  Your problem is the USPTO and the
patent lawyer's duty to the USPTO not to lie about an application.

Your employer will eventually hear about your application
(applications are published 18 months after filing) and they will
claim that you invented it during your employment (In California,
employer's own all inventions of their employees).  Since your
invention is close to the work you conducted at the company, it does
not matter that you did not use the company's equipment.  You
"learned" information at work and therefore your invention is the
company's.

The company will have one year after your application publishes to
file an application for the same invention (they will copy your
application word for word) with you as the inventor and the company as
the ASSIGNEE.  This will cause an interference to be declared.  Each
side will have to prove their date of invention (US is a First to
Invent country).  You will lose because you cannot pre-date your
employment to the company.

You should do the honest thing and tell your company that you have
this idea for an invention.  You might be surprised and they will not
want it.  Then you are free to file for a patent yourself.

If your company wants the invention, then you are still the inventor
(although no money).  You cannot win in a battle against the company. 
They have more money.  Also, have you thought that by asking this
question on Google in a PUBLIC forum you have supplied additional
evidence of your intent to violate your duty to your company.  If the
invention is valuable, then some lawyer will find this forum and find
your name.

Good Luck and do the right thing.