Federal Circuit Recognizes Patent “Agent”PrivilegeMarch 9, 2016

The attorney-client privilege has not previously been extended to cover communications between U.S. patent applicants and non-attorney patent agents. That is about to change. In a recent decision, In re: Queen’s University at Kingston, the Federal Circuit recognized that communications between U.S. patent applicants and non-attorney patent agents should receive some degree of privilege.

In recognizing a privilege for non-attorney patent agents, the Federal Circuit looked to Rule 26(b)(1) of the Federal Rules of Civil Procedure and Rule 501 of the Federal Rules of Evidence. Rule 26(b)(1) states, in part, that “parties may obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case ‚¬¦ Information within this scope of discovery need not be admissible in evidence to be discoverable. However, the scope of such discovery is limited to non-privileged matters. Rule 501 of the Federal rules of Evidence addresses when there is a privilege. “Rule 501 of the Federal Rules of Evidence authorizes federal courts to define new privileges by interpreting common law principles.’‚¬Jaffee v. Redmond, 518 U.S. 1, 8 (1996).

In Sperry the Supreme Court recognized that “the preparation and prosecution of patent applications for others constitutes the practice of law.‚¬Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379, 383 (1963). In reaching that conclusion, the Supreme Court examined the history of patent agents and patent attorneys and the provisions adopted by Congress regulating patent practice. While provisions were adopted to prevent “agents”from labeling themselves as “patent attorneys‚¬, the court reasoned that Congress “did not intend to hinder the Patent Office’s right to allow non-attorney agents to prosecute patents before it, but only to prevent them from improperly holding themselves out as attorneys‚¬.

Pursuant to 35 U.S.C. § 2(b)(2)(D), the U.S. Patent Office (USPTO) may establish regulations to govern the conduct of agents and attorneys representing U.S. patent applicants before the USPTO. Based on this, the court held that to “the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application”will be kept privileged.See In re Spalding Sports World Wide, Inc., 203 F.3d 800 (Fed. Cir. 2000).

In defining the scope of the privilege, the court held that “[c]ommunications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or ‚¬Ëœwhich are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding[s] before the Office involving a patent application or patent in which the practitioner is authorized to participate’ receive the benefit of the patent-agent privilege.”While this may appear to be narrow, it does offer non-attorney patent agents the ability to protect communications with a client relating to the prosecution of a patent, a privilege that has always been extended to patent attorneys.

The recognition of this new privilege should be exciting news for non-attorney patent agents. In prior decisions by the courts, they have traditionally refused to recognize a privilege related to other non-attorney client advocates.

The full opinion can be read here.