Chief Judge Stark Rules that Patent Agent-Client Privilege Not Applicable to Documents Withheld from Production

March 29, 2019

Publication| Intellectual Property

In Onyx Therapeutics, Inc. v. Cipla Ltd., No. 16-988-LPS (D. Del. Feb. 15, 2019), Chief Judge Stark rejected the plaintiff’s claim that certain documents withheld from production were protected by the patent agent-client privilege. The ruling followed the Court’s review in camera of documents identified in privilege log entries selected by the parties as representative of their disputes. The Court found that the disputed communications appeared to involve scientists who sought guidance from a patent agent as to what areas may have been previously patented so as to guide their further research. Chief Judge Stark stated that, for the patent-agent privilege to apply, the communication must be “reasonably necessary and incident to” patent prosecution. Because the scientists had not yet “finaliz[ed] a research plan,” undertaken any studies, reduced an invention to practice, or “committed to having claims drafted,” the Court ruled that the communications fell outside the privilege.

Key Point: The Court concluded that the patent agent-client privilege does not protect communications made to seek guidance for development of a formulation, as opposed to those made to seek patent protection of a developed formulation.

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