Recently, the Court of Appeals for the Federal Circuit decided to recognize a limited attorney-client type of privilege for non-attorney patent agents. Because there’s an existing statute permitting patent agents to practice before the US Patent and Trademark Office, and a ruling by the Supreme Court that prosecuting patent applications constitutes the practice of law, the majority if the Federal Circuit concluded that patent agents should enjoy similar privilege with their clients.
The question over patent agent-client privilege stemmed from the patent litigation case between Queen’s University at Kingston, and Samsung Electronics Co., Ltd, and Samsung Telecommunications America, LLC. During fact discovery in the case, Queen’s University refused to allow access to certain documents on the grounds that they contained privileged information resulting from communications between patent agents and representatives of the university. Of note is that the majority describes the communications as having involved no “counsel”, and instead were strictly between employees of Queen’s university and registered, non-lawyer patent agents.
While Samsung argued that communications of this nature should not be protected, and was granted a motion to compel by the district court, the majority at the Federal Circuit decided to apply its own law. In doing so, they used Rule 501 of the Federal rules of Evidence, which gives a general description of what is privileged. With no strict ruling found in the United States Constitution, a federal statute, or rules prescribed previously by the Supreme Court, the majority found that authorized patent agents “engage in the practice of law before the Patent Office”, and should be granted a patent-agent privilege.
The scope of this privilege was determined to include “communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or ‘which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate’ receive the benefit of the patent-agent privilege.”
Communications that would outside the patent agent-client privilege include any that aren’t “reasonably necessary and incident” within the context of prosecuting a patent before the Patent Office. For example, a patent agent offering an opinion on an existing patent when considering litigation, infringement, or the potential sale or purchase of a patent.
At Brown Patent Law, PLLC, we have answers to your questions. By keeping up with current rulings, we’re able to offer you the latest expertise and recommendations regarding patents, copyrights, trademarks and licensing. Contact us at 918-615-3357.