The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., I…
Read More
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
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
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
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
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
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
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
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
