What’s the Purpose of it All? Determining Invention Disclosure Privilege
Liza Hadley
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 and attorneys to appreciate the boundaries of the attorney-client privilege, as applied to inventor-attorney communications, to determine which communications can be privileged, and thus sheltered from discovery, and those that will remain discoverable. As in other areas of law, the attorney-client privilege attaches to confidential communications between a client and an attorney made for the purpose of seeking legal advice or services. The Court of Appeals for the Federal Circuit (CAFC) has applied this principle to patent law and found that the privilege attaches to confidential invention disclosure communications between an inventor and an attorney made for (1) seeking advice on patentability or (2) for obtaining legal services of preparing a patent application.1 See In re Spalding Sports Worldwide, Inc., (Fed. Cir. 2000). Thus, the attorney-client privilege attaches to invention disclosures submitted or communicated to an attorney to assist the attorney in evaluating patentability or in prosecuting a patent. Additional inventor-attorney communications which may fall within the attorney-client privilege include draft patent applications prepared for or received by an attorney and communications between a named inventor and a patent attorney about patent prosecution.
In contrast, the attorney-client privilege does not cover communications—including invention disclosures—seeking business advice. This is a significant distinction to keep in mind, especially when considering communications between an inventor and in-house attorneys, where business and legal discussions are more likely to blur. As interpreted by District Courts, inventor communications made for a business purpose include communications made to an attorney for determinations of usefulness to a business of obtaining a patent in a particular field; willingness to spend a certain amount of resources to obtain a particular anticipated patent; time management of patent prosecutors; and potential future business opportunities, such as licensing deals and partnerships, stemming from a potential patent. See TCL Communs. Tech. Holdings, Ltd. (C.D. Cal. 2016) and Raytheon Co. v. Cray, Inc. (E.D. Tex. 2017).22
Volume 50, Issue 1