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IP Alert
IP Alert: State Court Holds Communications with Patent Agents Are Privileged

February 23, 2018

As previously reported, in 2016 the Federal Circuit, in In re: Queen’s University at Kingston, PARTEQ Research and Development Innovations, held that a client’s communications with its non-attorney patent agents can be privileged. This decision is not binding on the state courts. Today, however, the Supreme Court of Texas agreed with the Federal Circuit and concluded that under Texas law, patent agents count as “lawyers” for purposes of the Texas lawyer-client privilege. The decision, one of the first state court decisions to follow Queen’s University, may signal broader recognition of attorney-client privilege for patent agents.

The case is In re Andrew Silver. The underlying Texas state court lawsuit involves a claim for breach of contract involving the “Ziosk,” a stand-alone tablet device that is designed to allow customers at restaurants to order food and pay their checks. The plaintiff, Andrew Silver, claims that he invented the technology involved and that the manufacturer of the Ziosk failed to pay him for it. When Silver brought a breach-of-contract action against the manufacturer of the Ziosk, the manufacturer sought production of email messages between Silver and his non-attorney patent agent. The trial court granted a motion to compel production of the emails. Silver then sought mandamus relief in the court of appeals, and subsequently in the Texas Supreme Court.

The Texas Supreme Court, while noting that Texas law provided for a lawyer-client privilege, concluded that a patent agent is a “lawyer” for purposes of Texas law. Accordingly, the court held, Silver was entitled to a writ of mandamus, and to an in camera review of the emails for privilege under the appropriate Texas procedure. The court’s analysis largely followed the logic of Queen’s University.

For more information, please contact Fitch Even partner Allen E. Hoover, author of this alert.

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