US Court Of Appeals Recognizes Existence Of Patent-Agent Privilege

On March 7, 2016, the US Court of Appeals for the Federal Circuit issued its decision on a petition for a writ of mandamus in In re Queen's Univ. at Kingston, in which the Federal Circuit recognized a patent-agent privilege extending to non-attorney patent agents relating to their authorized practice before the US Patent & Trademark Office (PTO or Office). In granting the petition, the Federal Circuit reversed an order from the US District Court for the Eastern District of Texas compelling Queen's University to produce employee communications with its non-attorney patent agents.

The discovery dispute began when Queen's University (which had filed a complaint alleging patent infringement against Samsung) refused to produce certain documents it contended contained privileged communications, including some between Queen's University's employees and non-lawyer patent agents registered to practice before the PTO discussing the prosecution of the patents-in-suit. Samsung filed a motion to compel, which the magistrate judge granted on the basis that the communications were not subject to the attorney-client privilege and that a separate patent-agent privilege did not exist. Queen's University ultimately filed its petition for writ of mandamus, and the district court stayed production of the subject documents pending the petition.

In deciding that mandamus review of the discovery order was appropriate, the court noted that whether a patent-agent privilege exists is an issue of first impression for the Federal Circuit, and district courts had been split on the issue. The Federal Circuit began its analysis with Federal Rule of Evidence 501, which authorizes federal courts to define new privileges by interpreting common law principles "in light of reason and experience." While the Federal Circuit acknowledged that there is a presumption against the recognition of new privileges, and that courts have refused to recognize a privilege applicable to communications with other non-attorney client advocates (such as accountants), the court found 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."

In support of its finding, the Federal Circuit cited Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963)...