US patent law and the attorney-client privilege.

1Vedder Price PC, 1633 Broadway, NY 10019, USA 2Hoffmann-La Roche Inc., 340 Kingsland Street, Nutley, NJ 07110, USA *Author for correspondence: E-mail: dlu@vedderprice.com The attorney–client privilege protects confidential communication between a client and his or her attorney from public disclosure. The US Supreme Court refers to the attorney-client privilege as the “oldest of the privileges for confidential communications known to the common law” [1]. The privilege protects communications both to and from the attorney as long as the communication is related to the giving or receiving of legal advice. The US Supreme Court characterized the work of patent attorneys as the practice of law and, therefore, extends the attorney–client privilege to patent attorneys [2]. The Federal Circuit ruled that if an invention record was prepared and submitted primarily for the purpose of obtaining legal advice on patentability and legal services in preparing a patent application, it was privileged in its entirety [3]. Therefore, technical information conveyed from an inventor to a patent attorney is protected under the attorney–client privilege, as long as the purpose is to obtain legal advice and services: