Divided Federal Circuit Panel Creates Patent Agent Privilege

[W]e find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court's characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege.

Litigators - put your discovery pencils down. Inventors -pick up the phone and call your patent agent. The Federal Circuit is continuing the Jaffee1 "evolutionary development of testimonial privileges" by way of creating a new patent agent-client privilege.

On March 7, 2016, the Federal Circuit resolved a split in the district courts over whether a patent agent-client privilege exists independent from the attorney-client privilege. The majority held it does. "Indeed, if we hold otherwise, we frustrate the very purpose of Congress's design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office."

Creating new privileges is actually no small matter, and this new protection of inventor confidences to a patent agent will likely be a very narrow privilege. What makes this case interesting is its unique spot in the crossfire of Congressional authority to act, powers of the federal courts, and the current realities of patent litigation counsel.

In In re: Queen's University at Kingston, No. 15-145, 2016 U.S. App. LEXIS 4259 (Fed. Cir. March 7, 2016), the U.S. Federal Circuit (Lourie, O'Malley,* Reyna) reversed and remanded the district court's order compelling the production of communications Queen's University had been withholding as privileged. Not one of these communications involved counsel but rather a patent agent. Samsung therefore argued that where counsel is not involved in communications, the court should "neither expand the scope of the attorney-client privilege nor recognize an independent patent-agent privilege" to protect such communications. The Federal Circuit disagreed.

In its opinion, the Federal Circuit reasoned that decades ago, in Sperry v. State of Florida ex rel. Florida Bar,2 the Supreme Court found that patent agents perform a service that "constitutes the practice of law." This practice is only for the performance of services "reasonably necessary and incident" to the preparation and prosecution of patent applications before the Patent Office - but the practice of law nonetheless. Sperry acknowledged this agent practice may translate into an equally strong need for candor with, and protection for, patent agent communications. But regardless, it held Florida could not regulate patent agent practice, as Congress dictated this to be the job of the Patent Office.

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