Preserving Attorney–Client Privilege in Patent Proceedings
Recording of a 90-minute CLE teleconference with Q&A
Conducted on Thursday, June 12, 2008
Recorded event now available
Description
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.
Outline
- Application to patent attorney communications
- Communications relating to conception, invention and patenting
- Impact of Spalding
- Before the PTO
- Impact of offshoring patent-related legal services
- Scope of waiver
- Application to patent agent communications
- U.S. agents
- Foreign agents
- Application to specific documents
- Invention disclosure forms
- Prior art (including requests and searches)
- Patent applications
- Validity opinions
- Patentability opinions
- Non-infringement opinions
- Defenses/exceptions
- Inequitable conduct defense
- Crime fraud exception
- Joint defense, community of interest or common interest doctrine
- Advise of counsel defense
- Best practices for preserving the privilege
Benefits
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?
Faculty
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 chairs the firm's Intellectual Property Group and focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice and technology licensing.
Ordering
Online CLE
Includes audio streaming of full program plus handouts (available 24 hours after live seminar).
CLE:
Pre-approved for participatory or non-traditional/alternate format credit in: CA, HI*, NY*, WV*.
Pre-approved for self-study credit in: AK, AZ, MO, MT, TX, VT, WA.
Upon request, also available in: CO, CT*, FL, GA, ID, KY, LA, ME, NC, ND, NE, NH, NM, NV, OR*, SC, TN, UT, WI*, WY. If you are applying for credit in one of these states, make sure to select those states when placing your order.
(*Indicates that Strafford must report attendance.)
Online CLE Audio $149.00
Available 24 hours after the live event
Recorded Event
Includes full event recording plus handouts (available after live seminar).
CLE: Pre-approved for self-study credit in: AK, AZ, CA, CT, HI, MO, MT, NY, TX, VT, WA, WV. Upon request, self-study credit is also available in: CO, FL, GA, ID, KY, ME, ND, NE, NH, NM, NV, OR, UT, WI, WY. If you are applying for self-study credit in one of these states, contact Strafford CLE at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.
MP3 Download (Audio Only) $49.00
Available 24 hours after the live event
CD $49.00
plus $9.45 S&H
Available ten business days after the live event
CLE Credit
Strafford's live seminars qualify for CLE in every state that accredits webinars. They offer you a high quality, cost effective, and convenient CLE option, with no lost travel time or expenses.
Customer Reviews
The teleconference contained information that was relevant, useful and up-to-date.
Mark Hegedus
Spiegel & McDiarmid
Presentations were excellent. I especially benefited from the question and answer session, as the speakers addressed actual situations that affect many of us.
Angelica Toro
Popular
Very convenient, quick and thorough, with no wasted time.
James O'Gallagher
Kopka Pinkus Dolin Eads
I found the content very useful and was impressed by the high quality of each speaker's ability to articulate his presentation.
Andrew Lillie
Hogan & Hartson
Very well-organized.
Kerin Coughlin
Constantine Cannon
Intellectual Property Law Advisory Board
Shareholder
Winthrop & Weinstine
Partner
Fulbright & Jaworski
Partner
Winston & Strawn
Partner
Antonelli Terry Stout & Kraus
Partner
Mayer Brown
Partner
Duane Morris
Partner
Reed Smith
Partner
Gibson Dunn & Crutcher
Partner
Holland + Knight
Partner
McDermott Will & Emery
Partner
Orrick