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(Podcast) The Briefing: 2025 IP Resolutions Start With a Review of IP Assets
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Wolf Greenfield Attorneys Review 2024 and Look Ahead to 2025
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In France, unlike for instance in the United States or United Kingdom, the scope of attorneyclient privilege is restricted to attorneys-at-law registered with a bar and acting independently (within an independent law firm or...more
On November 22, 2023, United States Magistrate Judge Victoria Reznik (S.D.N.Y.) provided some rare insight into “the applicability and scope of the attorney-client privilege as it relates to patent counsel.” Op. at 1. Judge...more
ACI’s 6th Annual Life Sciences IP Due Diligence Summit is devoted to providing corporate and IP counsel with expert strategies for assessing, valuing, and commercializing IP assets when conducting strategic IP due diligence –...more
I. THE ATTORNEY-CLIENT PRIVILEGE - Historically, the attorney-client privilege developed upon two assumptions: (1) good legal assistance requires full disclosure of a client’s legal problems; and (2) a client will only ...more
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
Enforcing a patent can be expensive and time consuming. Patent litigation funding, also known as patent litigation financing, is one way patent owners can protect their rights without incurring the unwanted expense of...more
The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more
As though commercial transactions were not already fraught with enough potential pitfalls, a recent decision from the Southern District of New York highlighted yet another risk that could carry significant consequences to...more
On September 19, 2019, U.S. District Judge LaShann DeArcy Hall denied an appeal by the defendant in a litigation to correct the inventorship of patents of rulings by Magistrate Judges Gary R. Brown and Peggy Kuo that the...more
In Limestone Memory Systems LLC v. Micron Technology, Inc. et al., the Discovery Master ruled that, under 9th Circuit law, pre-suit, patent analysis documents qualified for immunity from discovery under the work product...more
A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question. The...more
Falk Pharma GMBH v. Generico, LLC, Nos. 2017-2312, 2017-2636, 2018-1320, 2018-2097, 2019 U.S. App. LEXIS 4859 (Fed. Cir. Feb. 8, 2019) - Brief Summary - The U.S. Court of Appeals for the Federal Circuit has ruled that a...more
Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors...more
A question that has vexed corporate litigants is whether communications between counsel (be it in-house or outside counsel) and a corporation’s employees are protected from discovery under the attorney-client privilege if...more
The Supreme Court of Texas held that a client’s communications with a registered patent agent, made to facilitate the agent’s provision of authorized legal services to the client, fall within the Texas attorney-client...more
In a recent opinion, the Texas Supreme Court resolved a question of interest to patent attorneys—is there a privilege for communications between a patent agent and his client? In re Silver, No. 16-0682, 2018 Tex. LEXIS 171...more
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...more
On Friday, February 23, 2018, the Texas Supreme Court overturned a lower court’s ruling that attorney-client privilege does not extend to patent agents. The ruling, bound to reverberate throughout the intellectual property...more
This year was a significant year for intellectual property cases at the Supreme Court level. In fact, the Supreme Court granted certiorari for seven patent cases, and decided five of these cases before the end of the year....more
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
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
Motions to Amend: Burden to Prove Amended Claims are Unpatentable Rests with Petitioner - On October 4, 2017, the Federal Circuit issued its long-awaited en banc opinion in Aqua Products, Inc. v. Matal, regarding the...more
Earlier this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) published a Final Rule regarding the scope of the attorney-client privilege in proceedings before the PTAB. The Rule states that...more
Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign...more
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