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Patents Patent Agent Privilege United States Patent and Trademark Office

Fish & Richardson

Attorney-Client Privilege for Foreign Patent Agents and European Patent Attorneys

Fish & Richardson on

Attorney-client privilege refers to the protection of confidential communications made for the purpose of obtaining or providing legal advice. Application of and exceptions to this privilege are fact-based determinations made...more

Womble Bond Dickinson

What Patent Attorneys, Patent Agents and Law Firms Need to Know about Communications with Clients

Womble Bond Dickinson on

Originally published in IP Watchdog on February 22, 2018. Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such...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

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Mintz - Intellectual Property Viewpoints

Patent-Agent Privilege and the USPTO’s Proposed New Rule

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue....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

Quinn Emanuel

Federal Circuit Recognizes New, but Limited, Privilege for Patent Agent Communications

Quinn Emanuel on

Introduction - Patent agents are licensed to practice before the United States Patent and Trademark Office (“USPTO”), and perform the same duties as patent attorneys in proceedings before the USPTO, including preparing...more

Knobbe Martens

Federal Circuit Review | April 2016

Knobbe Martens on

Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

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