Preserving Attorney–Client Privilege in Patent Proceedings
Recording of a 90-minute CLE webinar with Q&A
- 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
- 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 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.
Oblon Spivak McClelland Maier & Neustadt
His practice encompasses all areas of intellectual property law, with a particular focus on patent litigation and... | Read More
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.Close
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
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.Close
Thomas J. Scott, Jr.
He chairs the firm's Intellectual Property Group and focuses on all aspects of intellectual property including patent... | Read More
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.Close
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