AIPLA Annual Meeting 2014 Corporate Breakfast Stephen E. Bondura Dority & Manning, P.A. October 23, 2014 Preserving Privilege in Prosecution Matters 1

 Historically, Privilege did not extend to Patent Attorneys  “not engaged in real legal work” (United Shoe, D. Mass 1950)  Sperry (S.Ct. 1963)  “the preparation and prosecution of patent applications for others constitutes the practice of law”  The Conduit Theory: (Zenith Radio Corp, D. Del 1954)  Privilege does not apply because attorney is merely a conduit between applicant and USPTO  Spalding Sports (Fed. Cir. 2000): rejected Conduit Theory We’ve come a long way! 2

 Fed. Cir. has not weighed in on this issue  Work Product doctrine does not apply to Agents  Privilege: Two lines of reasoning at District Court level  The In re Ampicillin Line (D.DC 1978): Privilege does extend to Agents  The majority rule  C. D. Cal.; E. D. NY; N.D. Ill; E.D. Mich; E. Div. of N.D. Ohio  The Agfa Corp. Line (D. Mass 2002): Privilege does not extend to Agents  “there is a clear distinction between a non-lawyer patent agent and a lawyer formally admitted to practice before a state bar”  S.D.NY; W.D. NY; E. Div. of N.D. Ill; D. NJ; S.D. Cal; S.D. NY;  Be Prudent: Always have Agents work under the authority or control of a lawyer 3

 Privilege does not apply  Be Prudent: Communications should not involve legal advice; business decision communications are not protected per se  Be Prudent: If communications may include legal advice, always have Admins work under the authority or control of a lawyer 4

 Contacts and Choice of Law Analysis are generally applied  U.S. agent/attorney Foreign agent/attorney re US application  U.S. Law applies; Privileged  U.S. agent/attorney Foreign agent/attorney re Foreign application  Law of foreign country applies; If law of foreign country does not recognize Privilege, then neither will U.S. court  Foreign agent/attorney Foreign agent/attorney re Foreign application  Law of foreign country applies; If law of foreign country does not recognize Privilege, then neither will U.S. court 5

 Invention Disclosure Forms  Generally are Privileged  Should not include business considerations (e.g., Does this invention fit into our business plan?”  Draft Applications  Generally are Privileged  Don’t send to business group for their comments  Purge!  Attorney Checklists (e.g., Prior art cited? Best mode disclosed?)  Generally are Privileged to the extent they represent communications with client 6

 Attorney Notes  Generally are Privileged  Why are they in the file? --- Purge the files!  Review Committee Notes  Generally are not Privileged  Are primarily business purpose documents  Can be privileged if conducted under direction/control of a lawyer and reflect legal advice, not business advice  Validity and Infringement Opinions  Privileged unless waived 7

 History  Who was Kovel? (296 F.2d 918 (2nd. Cir. 1961)  Purpose  Generally used by US attorney to bring an accountant, translator, or other non- attorney advisor within the attorney-client privilege  Requirements  Used when the presence of the advisor is necessary for effective consultation between client and attorney  Attorney need not be present  Client must seek attorney’s advise, not the advisor’s advice  Separate billing arrangement by the advisor 8

 When to use in patent prosecution  Complicated subject matter  E.g., Software, pharmaceuticals  Testing to beat prior art references or devices  Rule 132 Declarations to overcome obviousness  See Sample Kovel letter for accountants 9

10 THANK YOU Stephen E. Bondura Dority & Manning, Attorneys At Law, P.A. Post Office Box 1449 Greenville, South Carolina Tel: (864) Fax: (864)