IP Blog
Attorney-client privilege
Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law
The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., Inc. v. Global Industries, Inc., No. 18-2498-DDC (D. Kan. May 15, 2020). Plaintiff Sudenga Industries sent a cease and desist letter alleging patent infringement to Defendant Global...
Invention Disclosure to In-House Counsel Privileged
Is an invention disclosure submitted by an inventor to an in-house attorney for procurement of a patent covered by attorney-client privilege? The Central District of California held in The California Institute of Technology v. Broadcom Limited, et al., No. CV 16-3714-GW (C.D. Cal. Mar. 19, 2018) that invention disclosures sent to in-house attorneys are covered by attorney-client privilege. During a...
Supreme Court of Texas Recognizes Patent Agent Privilege
Texas now recognizes an independent patent agent privilege in Texas state courts. In re Andrew Silver, No. 16-0682 (Texas 2018). This now aligns with the Federal Circuit, which recognized patent agent privilege a few years ago, and the Patent and Trademark Office, which formally recognized patent agent privilege recently. This decision reverses the Texas Court of Appeals decision which did...
PTO Codifies Patent Agent Privilege at the PTAB
The U.S. Patent and Trademark Office has extended patent agent privilege to Patent Trial and Appeal Board (PTAB) proceedings. The PTO has thus resolved an ambiguity resulting from the Federal Circuit’s decision in In re Queen’s University, 820 F.3d 1287 (Fed. Cir. 2016). In that case, as we discussed in this webinar, the Federal Circuit recognized patent agent privilege for...
Common Interest Privilege Covers Non-Attorneys in Patent Case
The District of Massachusetts held that the common interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v. Rolling Optics, AB, No. 14-12428-LTS (D. Mass. Feb 3, 20017). Crane Security Techs. Inc sued Rolling Optics, AB for infringing patents related to anti-counterfeiting measures on currency, e.g., metallic colored strips with images...
Will State Courts Recognize Patent Agent Privilege?
A Texas Court of Appeals held that the privilege between patent agents and their clients – recognized by the Federal Circuit in In re Queen’s University, No. 2015-145 (Fed. Cir. March 7, 2016) – is not recognized by Texas state courts. In re Andrew Silver, 05-160074-CV (Dallas Ct. App. Aug. 17, 2016). The court reasoned that, because the “Federal Circuit...
Communications with Patent Agents and Foreign Associates – Recent Developments on Privilege
If you are, or work with, a patent agent – or if you are at one end or the other of communications between U.S. attorneys and foreign attorneys and/or patent agents – this recent presentation by my colleague Peter Keros has some useful information. The basic takeaways are these. First, patent agents are treated like lawyers for purposes of privilege...
Federal Circuit Recognizes Privilege For Patent Agents
The Federal Circuit recently held that there is an independent patent agent privilege, explaining that because prosecuting a patent application before the US Patent and Trademark Office (USPTO) constitutes the practice of law, communications with non-attorney patent agents are privileged. In re: Queen’s University at Kingston, No. 2015-145, 2016 U.S. App. LEXIS 4259 (Fed. Cir. Mar. 7, 2016). In re...
Independent Contractors Are Covered by the Attorney-Client Privilege
Use of independent contractors is common in the tech world, especially in software development. Communications between a company’s attorneys and an independent contractor may be protected by the attorney-client privilege, so long as the communications are directed to the independent contractor functioning as an employee. A recent case illustrates the principle. Gen-Probe Inc. v. Becton Dickinson and Co., Nos. 09cv2319...