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. Broadcom Limited, et al., No. CV 16-3714-GW (C.D. Cal. Mar. 19, 2018) that invention disclosures sent to in-house attorneys are covered by attorney-client privilege.

During a deposition, Plaintiff asked the deponent about Exhibit 341, a document related to an invention disclosure. The deponent answered that Exhibit 341 was sent to Defendant’s internal IP committee to determine whether a patent application could be filed on the disclosed invention. Within about a minute of this answer, Defendant clawed back Exhibit 341, stating that it was a privileged communication pursuant to the protective order because it sought legal advice on patent procurement. Plaintiff filed a motion to compel discovery of Exhibit 341.

A communication with an attorney for making a determination of patentability is covered by the attorney-client privilege. In re Spalding Sports Worldwide, 203 F.3d 800, 803-04 (Fed. Cir. 2000). Exhibit 341 was submitted to Defendant’s Patent Review Committee (PRC), which includes attorneys and engineers and determines whether patents should be pursued for invention disclosures submitted by Defendant’s employees. The disclosures and communications about the disclosures are confidential between the PRC and other company personnel. Defendant had the burden to show that Exhibit 341 was submitted to an attorney primarily for a legal purpose to show that it was covered by attorney-client privilege.

The Court denied the motion to compel, holding that Exhibit 341 was a protected communication properly clawed back according to the protective order. The deponent testified that Exhibit 341 was sent to the PFC for commissioning a patent. This qualified as a request for legal advice from an attorney, and thus fell within attorney-client privilege. While the PRC included non-attorneys, “[t]he fact that attorneys on the PRC required engineers or technical experts to assist them in evaluating the invention for purposes of determining whether to pursue a patent does not disqualify Exhibit 341 from being covered by the attorney client privilege.” Furthermore, even though Defendant allowed Plaintiff to ask another question before clawing back Exhibit 341, the Court held that Defendant had not waived attorney-client privilege because Defendant promptly clawed back Exhibit 341 upon learning of its production.

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