Preserving Attorney–Client Privilege in Patent Proceedings

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

Conducted on Thursday, June 12, 2008

Program Materials


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.



  1. Application to patent attorney communications
    1. Communications relating to conception, invention and patenting
    2. Impact of Spalding
    3. Before the PTO
    4. Impact of offshoring patent-related legal services
    5. 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 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?


Michael E. McCabe, Jr.
Michael E. McCabe, Jr.
Oblon Spivak McClelland Maier & Neustadt

His practice encompasses all areas of intellectual property law, with a particular focus on patent litigation and...  |  Read More

Gregory M. Hasley
Gregory M. Hasley
Akin Gump Strauss Hauer & Feld

He focuses on intellectual property litigation and trial work. He also represents clients in licensing negotiations and...  |  Read More

Thomas J. Scott, Jr.
Thomas J. Scott, Jr.

Goodwin Procter

He chairs the firm's Intellectual Property Group and focuses on all aspects of intellectual property including patent...  |  Read More

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