Is Your Patent Counsel’s Work Privileged?

(The author is an associate in the Intellectual Property group at Sheppard Mullin Richter & Hampton LLP in downtown Los Angeles. A registered patent attorney, he specializes in intellectual property matters, including patent, trademark, and copyright litigation.)

The attorney-client privilege protects communications with patent attorneys, just like other attorneys. This includes a patent attorney hired to write an opinion about whether an existing patent is valid and might be infringed by his or her client. Companies seek these opinions to counter later claims of willful patent infringement—failing to get a written patent opinion supports a finding that a party willfully infringed a patent, leading to increased damages of up to three times actual damages. 35 U.S.C. Sec. 284. Thus, in patent litigation, the alleged willful patent infringer commonly presents a written patent opinion to show its good faith belief that it was not committing infringement.