Patent Agent Privilege

Should attorney-client privilege extend to communications between clients and patent agents?  In March earlier this year, a split decision by the Federal Circuit answered this question in the affirmative. This is a unique extension of the attorney-client privilege due to the nature of the patent agent profession.  Patent agents are not required to go to law school; to practice as a patent agent, one must have a scientific education and pass the patent bar examination. Passage of the patent bar examination allows a patent agent to prepare, file, and prosecute patents with the United States Patent and Trademark Office (“USPTO”).

In January, 2014, Queen’s University filed a patent infringement lawsuit against Samsung.  During discovery, Queen’s University refused to produce documents containing communications between their employees and non-lawyer patent agents.  A federal magistrate judge refused to recognize a “patent agent-client” privilege and granted Samsung’s motion to compel the documents.  Queen’s University’s objection was overruled, and the Federal Circuit took the question through a writ of mandamus. In a 2-1 decision, the Federal Circuit recognized the patent agent-client privilege stating that “patent agents engage in the practice of law when representing clients . . . [and] the patent-agent privilege furthers the same important public interests as that of the attorney-client privilege.”  However, the majority limited the patent agent-client privilege to communications that fall within the scope of the patent agent’s ability to practice law—such as preparing, prosecuting, and filing patent applications.   For instance, a conversation with a patent agent about the validity of someone else’s patent in preparation for litigation would not be protected under the patent agent-client privilege.

The Federal Circuit’s recognition of the patent agent-client privilege is potentially beneficial to patent applicants needing patent preparation and prosecution services.  Patent agents can perform preparation and prosecution services much cheaper than patent attorneys.  Knowing communications will be protected may incentivize patent applicants to save costs by hiring patent agents as opposed to patent attorneys.  However, relying on the patent agent-client privilege could be a risky proposition due to its limited nature.  Communications falling outside the patent agent’s ability to practice law will not be privileged, and the precise scope of the privilege is yet to be defined.  Patent applicants should be mindful of this limitation moving forward to ensure their communications will be privileged.

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