News & Analysis as of

United States Patent and Trademark Office Attorney-Client Privilege

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Patterson Belknap Webb & Tyler LLP

Judge Parker Finds GE’s Privileged Documents Show No Signs of Fraud in Medical Imaging Devices Misappropriation Case

On August 8, 2023, Judge Katharine H. Parker (S.D.N.Y.) denied Spectrum Dynamics Medical Limited’s (“Spectrum”) motion to compel the production of documents that it argued fell under the crime-fraud exception to the...more

Husch Blackwell LLP

Texas High Court Rules That Patent Agent-Inventor Communications Are Covered By The Attorney-Client Privilege

Husch Blackwell LLP on

On February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered...more

McDermott Will & Emery

New PTO Rule on Attorney-Client Privilege Before the PTAB

McDermott Will & Emery on

The US Patent and Trademark Office (PTO) issued a new rule on attorney-client privilege for trials before the Patent Trial and Appeal Board (PTAB) on November 7, 2017. The new rule takes effect December 7, 2017. The new rule...more

Mintz - Intellectual Property Viewpoints

USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Final Rule Establishing Patent Agent Privilege

Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more

WilmerHale

Federal Circuit Patent Updates - September 2017

WilmerHale on

Jang v. Boston Scientific Corporation (No. 2016-1575, 9/29/17) (Prost, O'Malley, Chen) - Chen, J. Affirming denial of motion for JMOL, vacatur of verdict of infringement under the doctrine of equivalents, and judgment of...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Says PTO Submissions can Waive Privilege to Future Communications

On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver. The court held that the District Court for the...more

Sheppard Mullin Richter & Hampton LLP

Proposed “Patent Agent Privilege” Promises Protection For Patent Practitioners And Clients

The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings....more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Update -- Patent Office Proposes Rule Amendment to Recognize Patent Agent-Client Privilege

When Congress created the post-issuance proceedings before the Patent Trial and Appeal Board as part of the Leahy-Smith America Invents Act ("AIA"), it did so with the recognition that they would be adjudicatory in nature. ...more

Foley & Lardner LLP

Federal Circuit Recognizes Limited Patent Agent Privilege

Foley & Lardner LLP on

In In re Queen’s University At Kingston, a divided panel of the Federal Circuit recognized a limited “attorney”-client privilege for patent agents. The majority’s decision to recognize a patent agent privilege is based...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

McDermott Will & Emery

Board to Parties: “Call Me” - FLIR Systems, Inc. v. Leak Surveys, Inc.

In an order issued after a post-conference call order, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB or Board) denied patent owner’s request to file a motion seeking sanctions, suggesting...more

Foley & Lardner LLP

USPTO Seeks Input on Patent Privilege Issues

Foley & Lardner LLP on

The USPTO is seeking public comment on patent privilege issues, regarding the legal protections afforded to communications between patent practitioners and clients in the U.S. and foreign countries. The USPTO is hosting a...more

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