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Judge Stark on Privilege for Patent Agents

In a Memorandum Order unsealed on February 19, Chief Judge Stark addressed disputes over Plaintiff Onyx’s privilege log. Before making rulings on specific documents reviewed in camera, Judge Stark ruled generally as to the extent of the applicable privilege. Judge Stark first recognized that the Federal Circuit has recognized a privilege between non-attorney patent agents and their clients, but that such a privilege is narrow. Onyx Therapeutics, Inc. v. Cipla Limited, C.A. No. 16-988-LPS, Memo. Or. at 3 (D. Del. Feb. 15, 2019) (citing In re Queen’s U at Kingston, 820 F.3d 1287, 1301-02 (Fed. Cir. 2016)). Although it is clear that privilege attaches only to communications that are “reasonably necessary and incident to the prosecution of patents,” the caselaw on this point is “sparse.” Id. “In the instant case, the circumstances the Court confronts appear to involve scientists who identified potential alternative formulations and – before finalizing a research plan, before undertaking testing or viability studies, before reducing their ultimate invention to practice, and well before they committed to having claims drafted so a patent application could be prosecuted – consulted a patent agent for guidance, evidently for assistance in understanding the patent landscape in order to direct their efforts toward results that were not already the subject of prior art claims. In the Court’s view, based on the record before it, such communications with a patent agent are not ‘reasonably necessary and incident to’ the ultimate patent prosecution. While such communications would almost certainly be within the scope of attorney-client privilege, here they are not protected by the narrower patent-agent privilege.” Id.

Onyx Therapeutics, Inc. v. Cipla Limited, C.A. No. 16-988-LPS, Memo. Or. (D. Del. Feb. 15, 2019).

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