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...