Preserving Attorney-Client Privilege in Patent Proceedings
Protecting Confidential Communications With Patent Counsel or Patent Agents
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide patent counsel in navigating the challenges of preserving and controlling the attorney-client privilege in proceedings before the U.S. Patent and Trademark Office (PTO), including both ex parte proceedings (i.e., the prosecution of patent application and reexaminations) and inter partes proceedings (i.e., inter partes review, covered business method and derivation proceedings). The panel will discuss when and how the attorney-client privilege is implicated in patent attorney and patent agent communications, as well as documents, including validity and non-infringement opinions. The panel will discuss defenses and offer best practices for preserving the privilege.
- Application to patent attorney communications
- Communications relating to conception, invention, and patenting
- Before the USPTO
- 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
- 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
The panel will review these and other key questions:
- What are the unique attorney-client privilege issues impacting 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?
Sharon A. Israel
Shook Hardy & Bacon
Ms. Israel focuses her practice on intellectual property law, with an emphasis in patent litigation. She has... | Read More
Ms. Israel focuses her practice on intellectual property law, with an emphasis in patent litigation. She has represented IP clients before trial and appellate courts, the PTAB and the International Trade Commission. Ms. Israel has litigated patents related to a variety of industries and technologies, including wireless communications, oilfield equipment, consumer electronics, chemicals and medical devices. She is a frequent speaker and writer on IP-related topics and currently serves on the Council for the American Bar Association Intellectual Property Law Section. Ms. Israel also is a Fellow of the American Bar Foundation; the Texas Bar Foundation; the Houston Bar Foundation; and the American Intellectual Property Law Association.Close
Stephen T. Schreiner
Mr. Schreiner focuses on all aspects of intellectual property law, including: patent litigation, inter partes reviews... | Read More
Mr. Schreiner focuses on all aspects of intellectual property law, including: patent litigation, inter partes reviews and other post-grant proceedings, patent portfolio development, counseling and IP due diligence. He has experience in patents in the technology space, including: networks, network security, cryptography, software, digital television, signal processing, interactive media, the Internet and other areas. Mr. Schreiner also has experience in the FinTech space for the delivery of financial services and products. He is a frequently published author on developments in patent law including patent eligibility and other topics.Close
Thomas J. Scott, Jr.
Senior Vice President and General Counsel
Personalized Media Communications
Mr. Scott is responsible for the firm’s legal and licensing activities and staff. He formerly chaired the... | Read More
Mr. Scott is responsible for the firm’s legal and licensing activities and staff. He formerly chaired the Intellectual Property Practice Groups at Goodwin Procter and Hunton & Williams. Mr. Scott focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice, and technology licensing.Close