Protecting Privilege in an IP Matter: A Practitioner's Guide to Patent Agents, Common Interest, Opinions, and Clawback
By Casey Scott McKay ·
This guide builds a privilege programme for an IP practice and then runs it through the situations that break it. It starts with communication hygiene - separating legal from business advice, Upjohn warnings, and the legend discipline that keeps a privilege log credible - and then structures the clearance and freedom-to-operate workflow so that search results and analyses are created inside protection rather than argued into it afterwards. It covers patent agent file segregation after Queen's University, the opinion counsel separation that preserves the Seagate boundary, and how to make the advice-of-counsel election deliberately. It sets out common interest agreement drafting, transaction staging, and clean teams, then the discovery mechanics: Rule 502(d) orders, clawback protocols, categorical logs, and litigation holds.
IP and Technology > General IP | Guide | Published 17 February 2024 - Updated 18 June 2026 | Casey Scott McKay - marksy.us
Summary. This guide builds a privilege programme for an IP practice and then runs it through the situations that break it. It starts with communication hygiene — separating legal from business advice, Upjohn warnings, and the legend discipline that keeps a privilege log credible — and then structures the clearance and freedom-to-operate workflow so that search results and analyses are created inside protection rather than argued into it afterwards. It covers patent agent file segregation after Queen's University, the opinion counsel separation that preserves the Seagate boundary, and how to make the advice-of-counsel election deliberately. It sets out common interest agreement drafting, transaction staging, and clean teams, then the discovery mechanics: Rule 502(d) orders, clawback protocols, categorical logs, and litigation holds.
Keywords: privilege program · Upjohn warnings · dual purpose communications · patent agent files · clearance workflow · opinion counsel separation · advice of counsel election · EchoStar subject matter waiver · common interest agreement drafting · transaction staging · clean teams · Rule 502(d) orders · clawback protocol · categorical privilege logs · litigation holds · forensic investigation structure · Kovel engagements · prosecution bars · cross border privilege · training program
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