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Federal Circuit Holds (Some) Patent Agent-Client Communications Are Privileged

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The United States Court of Appeals for the Federal Circuit held this week in In re Queen’s University that some communications between patent applicants and non-attorney patent agents are legally privileged, recognizing, for the first time by that court, a “patent-agent privilege.”  The court overturned the Eastern District of Texas’s order compelling production of communications between Queen’s University employees and non-attorney patent agents.

Patent agents are not licensed patent attorneys but, after qualifying, they are admitted to practice before the United States Patent and Trademark Office (USPTO).  The Federal Circuit reasoned that the unique role of patent agents and the “current realities of patent litigation” favor recognizing a “patent-agent privilege.”  Congress recognizes their authority, the USPTO allows qualified non-attorney United States citizens to register as patent agents, and the Supreme Court has characterized patent agent activities as the practice of law.

But the Federal Circuit noted limitations to the “patent-agent privilege.”  First, the burden of determining privileged and non-privileged communications falls on the party asserting privilege.  Second, the scope of the “patent-agent privilege” includes only those tasks specified by the USPTO under 37 C.F.R. § 11.5(b)(1) as within the scope of a patent agent’s authority to practice before the USPTO, including:

preparing and prosecuting patent applications;

consulting with or giving advice to a client in contemplation of filing a patent application or other document with the USPTO;

drafting the specification or claims of a patent application;

drafting an amendment or reply to a communication from the USPTO;

drafting a communication for any proceeding before the Patent Trial and Appeal Board; and

those tasks which are “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the [USPTO] involving a patent application or patent in which the practitioner is authorized to participate.”

This decision from the Federal Circuit should increase protection of communications between patent agents and their clients.  Future disputes are likely to focus on the privilege’s scope, considering the limitations noted by the court.