Should attorney-client privilege extend to communications between clients and patent agents? In March earlier this year, a split decision by the Federal Circuit answered this question in the affirmative. This is a unique extension of the attorney-client privilege due to the nature of the patent agent profession. Patent agents are not required to go to law school; to practice as a patent agent, one must have a scientific education and pass the patent bar examination. Passage of the patent bar examination allows a patent agent to prepare, file, and prosecute patents with the United States Patent and Trademark Office (“USPTO”).
The Federal Circuit’s recognition of the patent agent-client privilege is potentially beneficial to patent applicants needing patent preparation and prosecution services. Patent agents can perform preparation and prosecution services much cheaper than patent attorneys. Knowing communications will be protected may incentivize patent applicants to save costs by hiring patent agents as opposed to patent attorneys. However, relying on the patent agent-client privilege could be a risky proposition due to its limited nature. Communications falling outside the patent agent’s ability to practice law will not be privileged, and the precise scope of the privilege is yet to be defined. Patent applicants should be mindful of this limitation moving forward to ensure their communications will be privileged.

Proposed “Patent Agent Privilege” Promises Protection For Patent Practitioners And Clients

The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings.

The proposed rule would recognize a privilege for certain communications between clients and non-attorney U.S. patent agents and foreign patent practitioners (“Patent Practitioners”). The proposed privilege would only apply in PTAB proceedings, and then only “where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices. Notably, the proposed privilege would not extend to communications relating to district court litigation.

A Privileged Place for Patent Agents

When preparing communications with U.S. or foreign agents involving U.S. prosecution or litigation, it is still probably best practice to include U.S. attorneys on the correspondence Should client communications with U.S. patent agents have the same protection against discovery afforded to communications with attorneys? That was the question recently addressed by the Federal Circuit on a writ of mandamus from the Eastern District of Texas. In re Queen’s Univ. at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016). Pointing to the inconsistent treatment of patent agent communications in prior district court cases, and the legal nature of a patent agent’s work, the Federal Circuit held that communications with patent agents were indeed privileged, but only in the limited context of “obtaining legal advice on patentability and legal services in preparing a patent application.”