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Preserving Attorney-Client Privilege in Patent Proceedings

Protecting Confidential Communications With Patent Counsel or Patent Agents

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, May 16, 2023

Recorded event now available

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This CLE course will guide patent counsel in navigating the challenges of preserving and controlling the attorney-client privilege in proceedings before the PTO, including both ex parte proceedings (i.e., the prosecution of the patent application and reexaminations) and inter partes proceedings (i.e., inter partes review, post grant review, 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.


In particular, ex parte patent proceedings before the PTO raise unique issues concerning attorney-client privilege. The use of non-lawyer U.S. and foreign patent agents as legal representatives in patent proceedings as well as the duty of disclosure to the PTO of certain technical information conveyed by clients to their PTO representatives raises privilege issues not typically seen in other contexts.

The PTO's own rule is applicable to trial proceedings before the Patent Trial and Appeal Board that communications between clients and U.S. patent agents or foreign patent practitioners have the same privilege protections as communications between clients and U.S. attorneys.

In addition to the general principles underlying the privilege, counsel must be sensitive to the unique disclosure issues that arise when handling ex parte patent proceedings, as well as issues that arise in inter partes proceedings and opinions, in order to protect the exchange of confidential information.

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



  1. Application to patent attorney communications
    1. Communications relating to conception, invention, and patenting
    2. Before the USPTO
    3. Impact of offshoring patent-related legal services
    4. Scope of waiver
  2. Application to patent agent communications
    1. U.S. agents
    2. Foreign agents
  3. Application to specific documents
    1. Invention disclosure forms
    2. Prior art (including requests and searches)
    3. Patent applications
    4. Validity opinions
    5. Patentability opinions
    6. Non-infringement opinions
  4. Defenses/exceptions
    1. Inequitable conduct defense
    2. Crime fraud exception
    3. Joint defense, community of interest, or common interest doctrine
    4. Advise of counsel defense
  5. 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?


Israel, Sharon
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

Scott, Thomas
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

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