A common first step in the patent filing process is the completion of an invention disclosure form. The form asks the inventors to provide basic details about the invention, including who invented it, what problem does the invention solve, and how is the invention different from the prior art.

Many businesses and research institutions with patent filing programs require their inventors to complete invention disclosure forms to help the entity decide whether to file a patent application. The form may be reviewed by an intellectual property manager, by a patent review committee, or by others who decide whether or not to pursue a patent application for the invention.

Are invention disclosures protected by attorney-client privilege?

Recent court decisions indicate that the answer depends on what happens after the inventors complete the form.

In California Institute of Technology v. Broadcom Limited, et al. (C.D. Cal. Mar. 19, 2018), the court considered a situation in which an inventor completed a form and submitted it to his company’s patent review committee via a portal on the corporate intranet. The committee was made up of attorneys and engineers who made patent filing decisions and provided legal and technical input on patent strategies. The court noted that “a communication with an attorney for purposes of making patentability determinations is covered by the attorney client privilege.” The court also found that the committee, which included attorneys, was charged with assessing whether inventions are novel and patentable. The presence of non-attorneys on the committee did not change the results because the non-attorney technical personnel “assist[ed] the legal team in reviewing the submission and assessing its patentability.”

In contrast, in Raytheon Company v. Cray, Inc. (E.D. Tex. June 5, 2017), the invention disclosure document first went to an “Invention Review Subcommittee” that evaluated the technical and business merits of the invention. If the Subcommittee found that the invention had technical and business merits, the company would pass the document to a “Patent Evaluation Committee” for a broader review of the invention’s business justification. If the Committee approved the invention for filing, it would send the invention disclosure document to outside counsel. Although both the Committee and the Subcommittee included attorneys, the court found that company’s written policies only charged these groups with assessing the invention’s business and technical merits, and not patentability or any other legal merits. Because of this, the Texas court found that the invention disclosure document was not privileged.

The California and Texas cases incorporate general concepts that the U.S. Court of Appeals for the Federal Circuit laid out in In re Spalding (Fed. Cir. 2000), in which the court noted that “the central inquiry is whether the communication is one that was made by a client to an attorney for the purpose of obtaining legal advice or services.” Although the form included technical details that were eventually published in the patent, “the inclusion of such information does not render the document discoverable, because requests for legal advice on patentability or for legal services in preparing a patent application necessarily require the evaluation of technical information such as prior art.” In other words, the form included details (such as a list or discussion of the prior art) that were provided for the purpose of obtaining legal advice.

What should businesses do if they want to maintain attorney-client privilege in their invention disclosure documents? In view of the cases described above, consider the following suggestions:

• If you use a patent review committee, ensure that the committee includes a patent attorney. If your don’t have a committee, submit invention disclosures directly to your legal department for review.
• Ensure that the committee’s responsibility includes a patentability assessment or other legal review of the invention disclosure. Document these responsibilities in a corporate policy.
• The invention disclosure form should ask the inventors to identify known prior art, as well as differences between the invention and the prior art.
• Ensure that the invention disclosure form goes directly from the inventor to the individual(s) whose function includes the legal review. Do not first route the document to other managers or committees whose role does not include or support the legal review.

[View source.]