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I sent an email to a patent attorney soliciting tradement and patent services.

At what point does the "client-attorney relationship" begin, and hence offering protection to the client?

I plan to exchange multiple emails with many questions before the initial consultation, if there is one. Will the information that I send over via these emails be protected by the "client-attorney relationship".

EDITED:

This is a sentence in the last email reply of the attorney:

"please provide further details on your needs and I'll advise you accordingly"

Given the last bit of "and I'll advise you accordingly", is this enough to constitute a client-attorney relationship and hence protection for the client?

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    Others have given the law, but really it has to be that, because until you give sufficient details, the attorney doesn’t have enough information to decide whether they can or are willing to represent you. And if you start out lying to and distrusting your attorney, you are unlikely to get effective representation.
    – jmoreno
    Mar 16 at 2:49
  • In my experience, patent attorneys refuse to read any "information" from a prospective client prior to forming a relationship. If your patent attorney is reading "information", you already have a billable relationship. Right now, you need to determine what "services" are required, and if the attorney offers those services.
    – david
    Mar 16 at 9:29
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    @david and whether the patent attorney has already started charging. I have been burned by this in the past, or nearly so. I always ask about cost in initial conversations, and most lawyers are quite straightforward about it. One, however, never addressed it until we had a call in which he proposed a hefty retainer fee. I stalled for a couple of weeks, uncertain whether I was prepared to pay. Before I responded I received an invoice for the call. This made the decision easier. He stopped trying to collect when I pointed out the many times he had ignored my earlier questions about cost.
    – phoog
    Mar 16 at 13:25
  • @jmoreno having too much trust in a lawyer can also lead to trouble. A little bit of skepticism is healthy.
    – phoog
    Mar 16 at 13:27
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    Bear Bile Farming is Torture: what protection do you seek? A patent attorney has a duty of confidentiality toward even a protective client, so if that is your goal then it may not matter whether an attorney-client relationship has been formed.
    – phoog
    Mar 16 at 13:39

4 Answers 4

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Depending on the protection you seek, it may not matter whether an attorney-client relationship has been formed. The USPTO rules of professional conduct are found at 37 CFR Part 11, Subpart D. The first relevant bit is from 37 CFR 11.118, "Duties to prospective client":

(a) A person who consults with a practitioner about the possibility of forming a client-practitioner relationship with respect to a matter is a prospective client.

(b) Even when no client-practitioner relationship ensues, a practitioner who has learned information from a prospective client shall not use or reveal that information, except as § 11.109 would permit with respect to information of a former client.

From 37 CFR 11.109:

(c) A practitioner who has formerly represented a client in a matter or whose present or former firm has formerly represented a client in a matter shall not thereafter:

(1) Use information relating to the representation to the disadvantage of the former client except as the USPTO Rules of Professional Conduct would permit or require with respect to a client, or when the information has become generally known; or

(2) Reveal information relating to the representation except as the USPTO Rules of Professional Conduct would permit or require with respect to a client.

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The communications are probably protected by the attorney-client privilege, and there is a special ethical rule governing interactions between lawyers and prospective clients. I'll quote Colorado's version of this widely enacted model rule at length along with its official comments:

Rule 1.18. Duties to Prospective Client

(a) A person who consults with a lawyer about the possibility of forming a client-lawyer relationship with respect to a matter is a prospective client.

(b) Even when no client-lawyer relationship ensues, a lawyer who has learned information from a prospective client shall not use or reveal that information, except as Rule 1.9 [conflicts of interest with former clients] would permit with respect to information of a former client.

(c) A lawyer subject to paragraph (b) shall not represent a client with interests materially adverse to those of a prospective client in the same or a substantially related matter if the lawyer received information from the prospective client that could be significantly harmful to the prospective client, except as provided in paragraph (d). If a lawyer is disqualified from representation under this paragraph, no lawyer in a firm with which that lawyer is associated may knowingly undertake or continue representation in such a matter, except as provided in paragraph (d).

(d) When the lawyer has received disqualifying information as defined in paragraph (c), representation is permissible if:

(1) both the affected client and the prospective client have given informed consent, confirmed in writing; or

(2) the lawyer who received the information took reasonable measures to avoid exposure to more disqualifying information than was reasonably necessary to determine whether to represent the prospective client; and

(i) the disqualified lawyer is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and

(ii) written notice is promptly given to the prospective client.

COMMENT

[1] Prospective clients, like clients, may disclose information to a lawyer, place documents or other property in the lawyer's custody, or rely on the lawyer's advice. A lawyer's consultations with a prospective client usually are limited in time and depth and leave both the prospective client and the lawyer free (and sometimes required) to proceed no further. Hence, prospective clients should receive some but not all of the protection afforded clients.

[2] A person becomes a prospective client by consulting with a lawyer about the possibility of forming a client-lawyer relationship with respect to a matter. Whether communications, including written, oral, or electronic communications, constitute a consultation depends on the circumstances. For example, a consultation is likely to have occurred if a lawyer, either in person or through the lawyer's advertising in any medium, specifically requests or invites the submission of information about a potential representation without clear and reasonably understandable warnings and cautionary statements that limit the lawyer's obligations, and a person provides information in response. See also Comment [4]. In contrast, a consultation does not occur if a person provides information to a lawyer in response to advertising that merely describes the lawyer's education, experience, areas of practice, and contact information, or provides legal information of general interest. Such a person communicates information unilaterally to a lawyer, without any reasonable expectation that the lawyer is willing to discuss the possibility of forming a client-lawyer relationship, and is thus not a "prospective client." Moreover, a person who communicates with a lawyer for the purpose of disqualifying the lawyer is not a "prospective client."

[3] It is often necessary for a prospective client to reveal information to the lawyer during an initial consultation prior to the decision about formation of a client-lawyer relationship. The lawyer often must learn such information to determine whether there is a conflict of interest with an existing client and whether the matter is one that the lawyer is willing to undertake. Paragraph (b) prohibits the lawyer from using or revealing that information, except as permitted by Rule 1.9, even if the client or lawyer decides not to proceed with the representation. The duty exists regardless of how brief the initial conference may be.

[4] In order to avoid acquiring disqualifying information from a prospective client, a lawyer considering whether or not to undertake a new matter should limit the initial consultation to only such information as reasonably appears necessary for that purpose. Where the information indicates that a conflict of interest or other reason for non- representation exists, the lawyer should so inform the prospective client or decline the representation. If the prospective client wishes to retain the lawyer, and if consent is possible under Rule 1.7, then consent from all affected present or former clients must be obtained before accepting the representation.

[5] A lawyer may condition a consultation with a prospective client on the person's informed consent that no information disclosed during the consultation will prohibit the lawyer from representing a different client in the matter. See Rule 1.0(e) for the definition of informed consent. If the agreement expressly so provides, the prospective client may also consent to the lawyer's subsequent use of information received from the prospective client.

[6] Even in the absence of an agreement, under paragraph (c), the lawyer is not prohibited from representing a client with interests adverse to those of the prospective client in the same or a substantially related matter unless the lawyer has received from the prospective client information that could be significantly harmful if used in the matter.

[7] Under paragraph (c), the prohibition in this Rule is imputed to other lawyers as provided in Rule 1.10, but, under paragraph (d)(1), imputation may be avoided if the lawyer obtains the informed consent, confirmed in writing, of both the prospective and affected clients. In the alternative, imputation may be avoided if the conditions of paragraph (d)(2) are met and all disqualified lawyers are timely screened and written notice is promptly given to the prospective client. See Rule 1.0(k) (requirements for screening procedures). Paragraph (d)(2)(i) does not prohibit the screened lawyer from receiving a salary or partnership share established by prior independent agreement, but that lawyer may not receive compensation directly related to the matter in which the lawyer is disqualified.

[8] Notice, including a general description of the subject matter about which the lawyer was consulted, and of the screening procedures employed, generally should be given as soon as practicable after the need for screening becomes apparent.

[9] For a lawyer's duties when a prospective client entrusts valuables or papers to the lawyer's care, see Rules 1.15A and 1.15D.

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The Supreme Court has said (Descôteaux et al. v. Mierzwinski, [1982] 1 SCR 860):

In summary, a lawyer’s client is entitled to have all communications made with a view to obtaining legal advice kept confidential. Whether communications are made to the lawyer himself or to employees, and whether they deal with matters of an administrative nature such as financial means or with the actual nature of the legal problem, all information which a person must provide in order to obtain legal advice and which is given in confidence for that purpose enjoys the privileges attached to confidentiality. This confidentiality attaches to all communications made within the framework of the solicitor-client relationship, which arises as soon as the potential client takes the first steps, and consequently even before the formal retainer is established.

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It's likely these initial emails would not form an attorney-client relationship. Such a relationship requires your belief that you have indeed formed an attorney-client relationship, typically by virtue of the fact that the attorney has given or has agreed to give you legal advice. Unless the initial pre-consultation emails are actually giving you legal advice, or are agreeing to do so, you won't have formed an attorney-client relationship. If you don't have any reason to believe the person has agreed to be or is acting as your attorney, you're not protected by an attorney-client relationship.

See here for more detail.

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  • I have edited my post with a reply from the attorney. Mar 15 at 18:30
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    @BearBileFarmingisTorture It's tough to say without broader context of how much you've told him and how much you're both still evaluating one another - if that's his first email after a brief hello, it's might not reasonably be construed as an offer for legal advice. I'm not sure I would walk away from that single line in the email with the belief that this person was now my attorney and owed me a legal duty. Mar 15 at 18:46
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    Patent attorneys are uniquely placed to being forced into an unwanted relationship by the reception of initial communications. Confidential "information" is central to the specialized practice of "Patent Attorney" in a way that is not common to criminal or commercial practice: you don't normally /start/ those relationships by disclosing confidential [criminal activities or business financials], as you do with a Patent Attorney.
    – david
    Mar 16 at 21:44

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