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). [1]

Communications Must Be For Seeking Advice on Patentability or Patent Prosecution Services

The CAFC has set forth two categories of communications “seeking legal advice” in the context of communications between inventors and attorneys: (1) seeking advice on patentability and (2) obtaining legal services of preparing a patent application. A party asserting the privilege must establish that a communication was for a legal purpose, rather than a business purpose, by making more than a general assertion that a communication “aid[s] in patent prosecution efforts.”[2] In The California Institute of Tech. v. Broadcom, the court provided guidance on what can be shown to sufficiently establish a communication for a legal purpose:

• A communication made for purposes of preparing a patent application or seeking a patentability determination;
• A communication made to an attorney, or review committee with attorneys, whose responsibility includes making patenting decisions on specific inventions and/or providing legal input regarding patent procurement strategy;
• The format of the communication conforms to a standard format used for invention disclosures for making patentability determinations; and
• Technical information, including prior art disclosure, present in the communication enables an attorney to provide accurate legal advice on patentability or aid in preparing a patent application. [3]

Inventor-Attorney Communications Must Be Confidential To Be Privileged

The attorney-client privilege attaches only to confidential communications between a client and an attorney. Accordingly, communications between an inventor and an attorney, including invention disclosure submissions, must either have an explicit or implied understanding of confidentiality. Implied confidentiality can be found where it is policy and practice that invention disclosure submissions to an internal patent review committee were kept confidential and required authorization for release. Moreover, while confidentiality is required, non-attorneys viewing and/or commenting on an invention disclosure submission or communication does not itself destroy confidentiality if the non-attorney is assisting a legal team or enabling an attorney to make a patentability assessment. As such, it is important to include confidentiality in any invention disclosure procedure for the sake of maintaining attorney-client privilege.

Conclusion

Confidential communications made by an inventor to an attorney can fall within the attorney-client privilege, provided that the communications are for the purpose of securing legal advice or services. In other words, invention disclosures and other inventor-attorney communications can be privileged if they are made to an attorney for the purpose of seeking advice on patentability or for preparing or prosecuting a patent application. An invention disclosure should be submitted to a patent attorney, or a review committee including a patent attorney, whose responsibility entails making patentability determinations, and be distinct from evaluation of business aspects of an invention, to support a showing of a legal purpose for the invention disclosure.

[1] See TCL Communs. Tech. Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson, 2016 WL 6921123, *2 (C.D. Cal. May 3, 2016); Raytheon Co. v. Cray, Inc., 2017 WL 2426266, *3–4 (E.D. Tex., June 5, 2017).

[2]  See TCL Comm. Tech., at*2.

[3]  See The California Institute of Tech. v. Broadcom Ltd., 2018 WL 1468371 (C.D.Cal., March 19, 2018).