Attorney-Client Privilege in IP Due Diligence

Strategies for Preserving Confidential Communications in IP Asset Transfers

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, August 28, 2008

Course Materials


Intellectual property due diligence is critical in many business transactions as the value of IP assets are increasing. Due diligence also presents significant risks for IP owners who are called upon to share confidential and privileged information.

IP owners must carefully consider whether and what privileged information to disclose during a due diligence process. If a deal falls through, disclosing too much privileged information will have far-reaching implications.

Achieving the proper balance of disclosure requires careful forethought and a thorough understanding of the impact of the attorney–client privilege in the due diligence process.

Listen as our authoritative panel of IP law specialists provides their experienced perspectives on when, what and how much to disclose during due diligence, protecting confidential information during the process — and if the deal falls through, best practices for protecting the privilege.



  1. Information sharing — to do or not to do (and how much)
    1. Assessing the risk of waiving the privilege against the need to provide information as close the deal
    2. What privileged information should be disclosed
    3. When should privileged information be disclosed
    4. Who should or will have access to privileged information/documents
    5. Under what circumstances is privilege considered waived when the documents are shared
    6. Ethical duties to disclose information
  2. Protecting privileged and confidential information during due diligence
    1. Common interest agreements
    2. Confidentiality and non-disclosure agreements
    3. Use of third-party to provide documents
    4. Privileged communication — written v. verbal
    5. Shielding trade secrets
    6. Privacy concerns and complying with obligations to protect confidential personally identifiable private information
  3. Waiver
    1. Common interest doctrine
    2. Court treatment
    3. Avoiding inadvertent waiver
  4. If the deal falls through — protecting privileged and confidential information
    1. Information on a need-to-know basis
    2. Controlled release of information


The panel will review these and other key questions:

  • What privileged information should be disclosed during due diligence — and what is the best timing for disclosure?
  • Under what circumstances are privileges considered waived when the documents are shared?
  • What steps can a company and counsel take to protect privileged and confidential information during due diligence?
  • If a business transaction terminates during due diligence, what can IP owners do to protect privileged information that has already been disclosed?


Stephen T. Schreiner
Stephen T. Schreiner
Goodwin Procter

He focuses on all aspects of intellectual property law including patent litigation, patent prosecution, counseling and...  |  Read More

Steven J. Frank
Steven J. Frank
Goodwin Procter

He advises clients in all areas of intellectual property law and has significant experience with IP diligence. He also...  |  Read More

Hope D. Mehlman
Hope D. Mehlman
Associate General Counsel
Regions Financial

She advises on legal issues relating to intellectual property, information security and threat assessment, phishing,...  |  Read More

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