Attorney-Client Matters

• Jurisdiction: Maryland

V. ATTORNEY-CLIENT MATTERS

A. Introduction

This Section addresses the collateral aspects of patent law practice that relate to the representation of clients. While the ethical guidelines of a particular state bar continue to apply to attorney conduct, there are specific ethical guidelines that also apply to the conduct of registered patent agents and attorneys. Furthermore, there are unique aspects of the interaction between patent attorneys and clients of which a general legal advisor should recognize as potential traps for the unwary.

B. Patent Applications and Confidentiality

Because a claimed invention must satisfy the novelty condition of patentability, and especially with the United States' accession into a "first inventor-to-file" system such that novelty will be measured generally against the patent application filing date, inventors and applicants as well as their colleagues, friends, families, business partners, and legal advisers are well-advised to maintain a heightened state of conduct to treat the invention confidentially in advance of patent application filing. Inadvertent, unshielded disclosures in conferences, meetings, and online or print publications can result in harsh outcomes concerning unpatentability. For example, inventors and patent applicants who disclose their inventions in federal, state, or private grant funding applications, where confidentiality is often implied, still risk the exposure of such agency or organization records to public access requests, such as under the Freedom of Information Act (FOIA), which may jeopardize patent rights. In the end, the management of such risk is best accomplished by preparing and filing the patent application as soon as possible.

C. Inventive Contributions

In counseling clients in the preparation and filing of patent applications, patent attorneys and agents sometimes provide a significant degree of input into the potential scope and application of the invention to the...