Attorney-Client Privilege: Application of the Community of Interest Doctrine Exception to Third Party Communications for Licensor-Licensee and Similar Relationships

December 2011Intellectual Property University

Abstract

Attorney-client privilege is usually waived if privileged information is disclosed to a third party. Corporations and universities face complicated privilege issues because of a need to sometimes share privileged information with other entities. The community of interest doctrine is an exception to the general attorney-client privilege in that it allows for disclosure of confidential information to a third party without waiving privilege. However, the doctrine has limited applicability and generally only covers situations where the third party has sufficient community of legal interest with the disclosing party. This article provides a description for in-house counsel as to situations where the community of interest exception can be applied to a third party, particularly regarding patent preparation and prosecution, patent litigation, licensing discussions and negotiations, and intellectual property due diligence for licensing and mergers and acquisitions. The article further provides suggestions for protecting privileged information to reduce the risk that the community of interest doctrine will not be applied.

Subscribe to reador

The United States International Trade Commission (ITC) is a federal administrative agency with investigative and legal powers over trade. It protects the domestic industry of the United States of America...Read more

Rodney Sparks

Senior Biotechnology Patent Counsel, University of Virginia Licensing & Ventures Group, USA

Unintended Negative Consequences of Joint Ownership of a Patent

When one entity is a joint owner of a patent or pending patent application with another entity, there are many potential negative ramifications as to licensing, ability to enforce a...Read more

Rodney Sparks

Senior Biotechnology Patent Counsel, University of Virginia Licensing & Ventures Group, USA

Who Owns the Innovation? IP Title, Start-Up Formation Failures, and the Hidden Cost of Defective Ownership in Investment and Exit Transactions

For in-house counsel advising start-ups, intellectual property is often the principal source of value. Software, technical know-how, inventions, brands, data, content and confidential processes may be more important than physical...

Attorney-Client Privilege: Application of the Community of Interest Doctrine Exception to Third Party Communications for Licensor-Licensee and Similar Relationships

Abstract

Related Papers