Attorney-Client Privilege: Application of the Community of Interest Doctrine Exception to Third Party Communications for Licensor-Licensee and Similar Relationships

Rodney Sparks, Senior Biotechnology Patent Counsel, University of Virginia Patent Foundation

Attorney-client privilege is usually waived if privileged information is disclosed to a third party. Corporations and universities face complicated privilege issues because of a need to sometimes share privileged information with other entities. The community of interest doctrine is an exception to the general attorney-client privilege in that it allows for disclosure of confidential information to a third party without waiving privilege. However, the doctrine has limited applicability and generally only covers situations where the third party has sufficient community of legal interest with the disclosing party. This article provides a description for in-house counsel as to situations where the community of interest exception can be applied to a third party, particularly regarding patent preparation and prosecution, patent litigation, licensing discussions and negotiations, and intellectual property due diligence for licensing and mergers and acquisitions. The article further provides suggestions for protecting privileged information to reduce the risk that the community of interest doctrine will not be applied.

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USA Intellectual Property University December 2011 Vol. 5, No. 17, Autumn 2011

Rodney Sparks

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Rodney L. Sparks, J.D., Ph.D. joined the University of Virginia Patent Foundation in 2004 from the well known intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in the cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he graduated from the evening program of the Loyola University School of Law. Dr. Sparks’ current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Patent Foundation and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law, where he is also a Lecturer. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the Biotechnology, Inter Partes Patent Proceedings Committee, Licensing and Management of IP Assets, and Patent-Relations with the PTO committees of that organization. He also is a member of the Licensing Executives Society and of the Association of University Technology Managers. Dr. Sparks has served in various consulting capacities for several agencies of the U.S. government. He also recently served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org.

University of Virginia Patent Foundation

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The University of Virginia Patent Foundation is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university. The University of Virginia is a nationally ranked state university founded by Thomas Jefferson in 1819.

USA Intellectual Property University December 2011 Vol. 5, No. 17, Autumn 2011