What Your Adversary Gets to Read: Privilege, Work Product, and the Waivers That Happen in IP Matters
By Casey Scott McKay ·
IP matters generate more privilege problems than most litigation because the same people do legal and technical work, the same documents serve prosecution and litigation, and the willfulness defense trades privilege for a damages argument. This article works the doctrine as it actually applies: what Upjohn protects inside a corporation, why in-house counsel's business advice is the most commonly lost claim, and how the Federal Circuit's recognition of patent-agent privilege in Queen's University changed prosecution files. It sets out the advice-of-counsel waiver and its scope after EchoStar and Seagate, the effect of Section 298, and the common interest doctrine's real limits. It closes with Rule 502 clawback practice and the habits that prevent waiver rather than litigating it afterwards.
IP and Technology > General IP | Article | Published 21 September 2023 - Updated 27 March 2026 | Casey Scott McKay - marksy.us
Summary. IP matters generate more privilege problems than most litigation because the same people do legal and technical work, the same documents serve prosecution and litigation, and the willfulness defense trades privilege for a damages argument. This article works the doctrine as it actually applies: what Upjohn protects inside a corporation, why in-house counsel's business advice is the most commonly lost claim, and how the Federal Circuit's recognition of patent-agent privilege in Queen's University changed prosecution files. It sets out the advice-of-counsel waiver and its scope after EchoStar and Seagate, the effect of Section 298, and the common interest doctrine's real limits. It closes with Rule 502 clawback practice and the habits that prevent waiver rather than litigating it afterwards.
Keywords: attorney client privilege · work product doctrine · Upjohn warnings · patent agent privilege · In re Queen's University · invention disclosure records · In re Spalding · advice of counsel defense · EchoStar waiver scope · Seagate trial counsel · section 298 · Halo willfulness · common interest doctrine · joint defense agreements · crime fraud exception · inequitable conduct · Rule 502 clawback · inadvertent production · privilege logs · in-house counsel business advice
This is premium Marksy content — the full document is available to subscribers.