BarbriSFCourseDetails
  • videocam Live Webinar with Live Q&A
  • calendar_month April 20, 2026 @ 1:00 p.m. ET/10:00 a.m. PT
  • signal_cellular_alt Intermediate
  • card_travel Patent
  • schedule 90 minutes

Preserving Attorney-Client Privilege in Patent Proceedings

Protecting Confidential Communications With Patent Counsel or Patent Agents

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$347.00
$294.95
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Discount expires 4/6/26

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About the Course

Introduction

This CLE course will guide patent counsel in navigating the challenges of preserving and controlling the attorney-client privilege in proceedings before the PTO, including both ex parte proceedings and inter partes proceedings. The panel will discuss when and how the attorney-client privilege is implicated in patent attorney and patent agent communications, as well as documents, including validity and non-infringement opinions. The panel will discuss defenses and offer best practices for preserving the privilege.

Description

In particular, ex parte patent proceedings before the PTO raise unique issues concerning attorney-client privilege. The use of non-lawyer U.S. and foreign patent agents as legal representatives in patent proceedings, as well as the duty of disclosure to the PTO of certain technical information conveyed by clients to their PTO representatives, raises privilege issues not typically seen in other contexts.

The PTO's own rule that communications between clients and U.S. patent agents or foreign patent practitioners have the same privilege protections as communications between clients and U.S. attorneys is applicable to trial proceedings before the Patent Trial and Appeal Board.

In addition to the general principles underlying the privilege, counsel must be sensitive to the unique disclosure issues that arise when handling ex parte patent proceedings, as well as issues that arise in inter partes proceedings and opinions, in order to protect the exchange of confidential information.

Listen as our panel of IP attorneys examines the application of the attorney-client privilege to patent attorneys, U.S. and foreign agents, and specific documents, defenses, and exceptions to privilege, as well as best practices for preserving the privilege.

Presented By

Brian D. Coggio
Of Counsel
Fish & Richardson PC

An accomplished veteran patent litigator, Mr. Coggio combines deep experience, imagination, and skill, representing life sciences companies in high-profile and complex patent-related disputes. With a particular focus on chemical, pharmaceutical, medical device, biosimilar, and biotechnology innovations, Mr. Coggio excels in litigating infringement claims and favorably resolving other contentious patent-related disputes in and out of court. He has successfully represented clients in high-stakes, game-changing patent matters before the U.S. Patent and Trademark Office, in U.S. district courts and Courts of Appeal, and in cases before the U.S. International Trade Commission. Mr. Coggio coordinates, asserts, and defends clients’ patent-related actions around the globe, including in France, Germany, the United Kingdom, Switzerland, Italy, Spain, and the Netherlands. Handling Hatch-Waxman Act cases for decades, he has a nuanced understanding of the Act, its history, and its application; as a result, Mr. Coggio is exceptionally sought after to handle those cases. He is particularly experienced at resolving biosimilar disputes under the Biologics Price Competition and Innovation Act. For more than 20 years, he has been teaching a patent litigation course at Fordham Law School and before that at New York Law School.

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Thomas J. Scott Jr.
Senior Vice President and General Counsel
Personalized Media Communications, LLC

Mr. Scott is responsible for the firm’s legal and licensing activities and staff. He formerly chaired the Intellectual Property Practice Groups at Goodwin Procter and Hunton & Williams. Mr. Scott focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice, and technology licensing.

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Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Monday, April 20, 2026

  • schedule

    1:00 p.m. ET/10:00 a.m. PT

I. Application to patent attorney communications

A. Communications relating to conception, invention, and patenting

B. Before the USPTO

C. Impact of offshoring patent-related legal services

D. Scope of waiver

II. Application to patent agent communications

A. U.S. agents

B. Foreign agents

III. Application to specific documents

A. Invention disclosure forms

B. Prior art (including requests and searches)

C. Patent applications

D. Validity opinions

E. Patentability opinions

F. Non-infringement opinions

IV. Defenses/exceptions

A. Inequitable conduct defense

B. Crime fraud exception

C. Joint defense, community of interest, or common interest doctrine

D. Advise of counsel defense

V. Best practices for preserving the privilege

The panel will review these and other key questions:

  • What are the unique attorney-client privilege issues impacting patent attorneys?
  • How and to what extent does the attorney-client privilege apply to patent agents?
  • What privilege issues arise in communication between a client and a foreign agent?
  • What key steps should patent counsel take to preserve confidentiality?