The Patent-Agent Privilege: Progress Meets Continued Uncertainty

By: James Carlson

Recently, a federal court in the United States recognized a patent-agent privilege in regard to communications between a non-attorney patent agent and the patent agent’s client.  While the ramifications of the patent-agent privilege are being felt by U.S. federal courts, a state court in Texas refused to extend the patent-agent privilege to emails in a contract dispute.  These contrasting outcomes illustrate the continued uncertainty of patent-agent privilege inside the United States and other countries.  Moreover, determining the existence of a patent-agent privilege creates uniquely difficult legal questions that involve the interplay between common law, statutes, and the preexisting attorney-client privilege.

In the U.S. federal court case, In re Queen’s University at Kingston, 820 F.3d. 1287 (Fed. Cir. 2016) (hereinafter “Queen’s University”), the court found that the patent-agent privilege is limited to situations that satisfy certain legal requirements.  First, the Queen’s University court determined whether the potential patent-agent privilege communication involved a legal issue that relates substantively to patent law.  Patent validity and infringement are such examples that courts have found to be substantively patent law issues.  On the other hand, if the communication relates to a legal issue primarily outside patent law, the law of the local jurisdiction may apply.  Accordingly, the local jurisdiction may or may not recognize the existence of a patent-agent privilege.  For example, a Texas appellate court found that when Texas law applies, no patent-agent privilege exists for patent agent communications.  See In re Andrew Silver, No. 05-16-00774-CV (Tex. App.-Dallas 2016).

Assuming that U.S. patent law governs a particular legal issue, privileged communications must still fall within the scope of the patent-agent privilege.  In particular, the Queen’s University court defined this scope to include communications that are in furtherance of tasks which are reasonably necessary and incident to the preparation and prosecution of patent applications before the USPTO.   Likewise, the Queen’s University court also defined the scope to include other proceedings before the USPTO involving a patent application or patent, such as reexamination proceedings.  In determining the scope of the patent-agent privilege, the court looked to those activities that are authorized by congress of patent agents before the USPTO.   Traditional legal activities that are typically performed by lawyers, such as licensing agreements and litigating lawsuits, will likely fall outside the patent-agent privilege even if the activities relate substantively to U.S. patent law.

As with much judicial guidance, uncertainty remains whether the patent-agent privilege applies to communications with respect to many patent-related activities.  For example, would a freedom-to-operate study in preparation of a possible patent application qualify for the patent-agent privilege?  In relation to inter-partes review or post-grant review proceedings before the USPTO, how much of the patent-agent communications would fall under the scope of the patent-agent privilege?  In the United States at least, there are many legal areas of patent law where courts will need to decide whether the patent-agent privilege applies.

In light of the above, it is important to ensure that when patent agents are used in the United States, the scope of their work is limited only to the patent-related work they are specifically authorized to do by Congress.  Other “traditional” law work must be done or supervised by an attorney at law to protect the privilege.   From the U.S.  perspective looking outward, the same thing can be said about using non-attorney-at-law patent attorneys in other countries.  For example, a European patent attorney who is overseeing patent litigation of a U.S. patent in a U.S. court is not acting within the scope of his or her license and thus likely would not be afforded privilege by a U.S. court.   Even when this guidance is followed, the Texas appeals decision above shows that the patent-agent privilege may not apply in litigation that based on issues not related to substantive patent law.  We expect more decisions in this area in the future.