Preserving Attorney–Client Privilege in Patent Proceedings

Patent proceedings raise unique issues concerning the attorney–client privilege. The use of U.S. and foreign patent agents, as well as the technical information involved in patents, bring up issues that are not typically seen in the more general application of the attorney–client privilege.

In addition to the general principles underlying the privilege, counsel must be aware of the unique issues that arise when handling patent proceedings in order to protect the exchange of confidential information.

Listen as our panel of IP specialists examines the application of the attorney–client privilege to patent attorneys, U.S. and foreign agents, and specific documents, defenses and exceptions to privilege, and best practices for preserving the privilege.

The panel included:

Michael E. McCabe, Jr., Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. His practice encompasses all areas of intellectual property law, with a particular focus on patent litigation and related client counseling. He serves as counsel for both domestic and foreign clients involved in patent and other IP disputes. He also has experience in ex parte and inter partes trademark proceedings before the USPTO.

Gregory M. Hasley, Partner, Akin Gump Strauss Hauer & Feld, Houston. He focuses on intellectual property litigation and trial work. He also represents clients in licensing negotiations and prosecution of patents and trademarks before the USPTO. He also represents clients in appeals before the U.S. Court of Appeals for the Federal Circuit and in inter partes disputes before the Trademark Trial and Appeal Board.

Thomas J. Scott, Jr., Partner, Goodwin Procter, Washington, D.C. He focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice (especially before the Federal Circuit) and technology licensing. He chairs the firm's Intellectual Property Group and is a member of its Litigation Department.

The panel reviewed these and other key questions:

• What are the unique attorney–client privilege issues affecting patent attorneys?
• How and to what extent does the attorney–client privilege apply to patent agents?
• What privilege issues arise in communication between a client and a foreign agent?
• What key steps should patent counsel take to preserve confidentiality?

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