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

Daniel Sharpe, III, , University of Virginia Patent Foundation, USA

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.

Daniel T. Sharpe, III is a law student at the University of Virginia, class of 2012. He is also a registered patent agent with the United States Patent and Trademark Office. Dan obtained his bachelor’s degree in Mechanical Engineering from Princeton University. While at Princeton he spent a summer as an engineer designing a V-8 engine and developing a procedure for measuring valve train dynamics on competitive engines. Following graduation from Princeton, Dan worked as a Patent Examiner at the United States Patent and Trademark Office and as an instructor teaching classes for the Law School Admissions Test. Following his stint as a patent examiner, Dan entered law school. While in law school, Dan has served as a legal and business intern at Silver Starr Art Studios in Alexandria, Virginia and as a research assistant for law school faculty. Dan has also taken both Patent Law and Licensing Clinics at the law school. Dan spent the summer of 2011 as a summer associate with the prominent intellectual property law firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP and upon graduation in 2012 will become an associate at that firm.

The University of Virginia Patent Foundation is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university. The University of Virginia is a nationally ranked state university founded by Thomas Jefferson in 1819.