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IP Alert: Client Communications with Patent Agents May Be Privileged

March 7, 2016

Today the Court of Appeals for the Federal Circuit issued a significant decision under the law of privilege. The decision, In re: Queen’s University at Kingston, PARTEQ Research and Development Innovations, holds that a client’s communications with its non-attorney patent agents are privileged, provided that these communications pertain to matters relating to patent prosecution. Today’s case resolves a split in the district courts on this question and is an issue of first impression for the Federal Circuit.

The case came to the Federal Circuit on a rare petition for a writ of mandamus to the U.S. District Court for the Eastern District of Texas. The petitioners, Queens University and PARTEQ, are engaged in a patent infringement act against two Samsung entities. The district court ordered the production of certain documents that constituted communications between Queens University employees and registered non-lawyer patent agents, these communications allegedly discussing the prosecution of the patents in suit. In the Texas court, a magistrate judge ordered the documents to be produced, and the district court subsequently affirmed this order. Petitioners sought a writ of mandamus.

The court began its analysis by holding that Federal Circuit law, rather than the law of the regional circuit, should apply to the dispute. The court then determined whether consideration of the extraordinary relief of mandamus was warranted. Answering this in the affirmative, the court relied on two grounds: first, that the issue was an issue of first impression for the Federal Circuit and one that has split the district courts, and second, that failure to grant the writ might result in an irrevocable detriment to the petitioners.

Turning to the merits of the petition, the court concluded that the work performed by patent agents can be characterized as the type of “practice of law” that warrants patent-agent privilege. The court first reviewed Sperry v. State of Florida, a 1963 case where the U.S. Supreme Court had commented similarly. To further support this conclusion, the court pointed to 35 U.S.C. § 2(b)(2)(D), which grants the U.S. Patent and Trademark Office (USPTO) the authority to regulate practitioners, and to the USPTO’s rules of professional conduct, which are analogous to the model rules of professional conduct promulgated by the American Bar Association.

Having found that a privilege between a client and a patent agent does exist, the court then addressed the scope of that privilege. The court reviewed 37 C.F.R. § 11.5(b)(1), which provides as follows:

Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.

The court concluded that this rule is instructive in defining the bounds of the privilege, holding “Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks [specified in the rule]” are privileged. The court further held that communications which are “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” similarly are privileged.

On the other hand, “[c]ommunications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege.” As examples of the latter, the court indicated that communications relating to the validity of another patent in contemplation of litigation or for sale or purchase, or communications relating to patent infringement, would be outside the scope of the agent-client privilege.

Based on the foregoing analysis, the court granted the writ of mandamus. The court instructed the district court to withdraw its blanket order compelling the production of the documents, and to assess whether any particular claim of privilege is justified in light of the opinion.

The panel decision was 2–1, with Judge Reyna dissenting. Judge Reyna disagreed that the court should “create a new agent-client privilege,” pointing out that it hadn’t been shown that public interest would be served in doing so or that there was a real need for such a privilege. He further opined that the patent agents’ practice before the USPTO was not the type of “practice of law” sufficient to warrant application of the privilege.

Somewhat curiously, while the majority’s opinion alludes generally to the USPTO Rules of Professional Conduct, neither the majority opinion nor Judge Reyna’s dissent cites 37 C.F.R. § 11.106, which provides in pertinent part that a “practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation [or is otherwise authorized or required].” This rule applies to “practitioners,” defined elsewhere in the rules as including both lawyers and non-lawyers. Rule 11.106 would appear to lend support to the majority’s reasoning.

Unless overturned via en banc review or by the Supreme Court, today’s decision will resolve a significant question under the law of privilege. The case will be significant in patent litigation in regard to the scope of discovery available from a prosecuting patent agent. The decision did, however, leave certain questions unanswered. For example, the court did not address the scope of the privilege that attaches when a patent agent is working under the direction or control of an attorney. The court also did not touch on the privilege that may be applicable to communications with foreign patent attorneys.

For more information on today’s decision, please contact Fitch Even partner Allen E. Hoover, author of this alert.

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