Invention Disclosure to In-House Counsel Privileged

Is an invention disclosure submitted by an inventor to an in-house attorney for procurement of a patent covered by attorney-client privilege? The Central District of California held in The California Institute of Technology v. Bro… Read More

Supreme Court of Texas Recognizes Patent Agent Privilege

Texas now recognizes an independent patent agent privilege in Texas state courts. In re Andrew Silver, No. 16-0682 (Texas 2018). This now aligns with the Federal Circuit, which recognized patent agent privilege a few years ago, an… Read More

PTO Codifies Patent Agent Privilege at the PTAB

The U.S. Patent and Trademark Office has extended patent agent privilege to Patent Trial and Appeal Board (PTAB) proceedings. The PTO has thus resolved an ambiguity resulting from the Federal Circuit’s decision in In re Queen’… Read More

Common Interest Privilege Covers Non-Attorneys in Patent Case

The District of Massachusetts held that the common interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v.  Rolling Optics… Read More

Will State Courts Recognize Patent Agent Privilege?

A Texas Court of Appeals held that the privilege between patent agents and their clients – recognized by the Federal Circuit in In re Queen’s University, No. 2015-145 (Fed. Cir. March 7, 2016) – is not recognized by… Read More

Communications with Patent Agents and Foreign Associates – Recent Developments on Privilege

If you are, or work with, a patent agent – or if you are at one end or the other of communications between U.S. attorneys and foreign attorneys and/or patent agents – this recent presentation by my colleague Peter Kero… Read More

Federal Circuit Recognizes Privilege For Patent Agents

The Federal Circuit recently held that there is an independent patent agent privilege, explaining that because prosecuting a patent application before the US Patent and Trademark Office (USPTO) constitutes the practice of law, com… Read More

Independent Contractors Are Covered by the Attorney-Client Privilege

Use of independent contractors is common in the tech world, especially in software development.  Communications between a company’s attorneys and an independent contractor may be protected by the attorney-client privilege,… Read More

Upcoming Webinar

Functional Claiming: Pitfalls and How To’s
October 18, 2018 at 12:00 pm EDT
Recent decisions under 35 U.S.C. §§ 101, 112, and 103 come into focus when viewed through a common lens. During the October webinar, Daniel Hegner of Bejin Bieneman discusses the convergence of federal court and PTAB decisions questioning funct…Register

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