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." Id. at 18.

Background

Queen's University at Kingston (Queen's) and its innovation arm PARTEQ own three patents directed to "Attentive User Interfaces" for monitoring when to turn off display screens based on eye movement. Id. at 2. Queen's filed suit in the Eastern District of Texas in 2014, alleging that Samsung infringed the patents in several of their mobile devices. Id.

During discovery, Samsung sought to obtain correspondence between Queen's and their patent agents discussing prosecution strategy for the patents-in-suit, contending that U.S. law did not afford a privilege for patent agents. Id. at 3. Queen's acknowledged that a patent attorney was not involved in the communications sought by Samsung, but argued that a similar privilege should extend to patent agents. Id. The district court disagreed and issued a motion to compel disclosure. Id. Queen's subsequently sought and obtained a stay of the district court proceeding pending a petition to the Federal Circuit for a writ of mandamus to address the issue. Id.

Federal Circuit Decision

In a split panel decision, the majority granted the writ of mandamus and then extended a limited prosecution privilege to patent agents. The majority emphasized that Rule 501 of the Federal Rules of Evidence authorized federal courts to define privilege under the common law unless barred by the Constitution, a federal statute, or rules prescribed by the Supreme Court. Id. at 11. At the same time, the court acknowledged a general presumption against recognizing new privileges because "the public ... has a right to every man's evidence." Id. at 11-12 (internal citations omitted). For instance, the court noted the refusal to extend privilege to "non-attorney client advocates, such as accountants." Id. at 12, citing Couch v. United States, 409 U.S. 322, 335 (1973); see also United States v. Arthur Young & Co., 465 U.S. 805, 817 (1984).

Despite these reservations, however, the court concluded that a patent agent privilege should exist, relying heavily on the Supreme Court's decision in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963). In Sperry, the Supreme Court held that Florida could not regulate the practice of patent agents because (1) those agents practiced patent law, (2) Congress authorized patent agents to practice that law, and (3) Congress delegated the authority to regulate patent agents to the U.S. Patent and Trademark Office. Id. at 13-15. Based on Sperry's guidance, the Federal Circuit majority concluded that "[t]o 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." Id. at 18.

In support of their newfound privilege, the majority emphasized that 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." Id. at 18-19 (internal citations omitted). And since patent agents practice law, according to Sperry, the expectation reasonably extends to them as well. Id. The court also highlighted public policy considerations, analogizing the patent agent privilege to attorneyclient and spousal privileges, which are similarly "rooted in the imperative need for confidence and trust," in this case, the trust that patent legal advice will be privileged. Id. at 22. In contrast, denying a patent agent privilege would "undermin[e] the real choice Congress and the Commissioner have concluded clients should have between hiring patent attorneys and hiring non-attorney patent agents." Id. Indeed, in a footnote, the Federal Circuit highlighted how clients had been copying patent attorneys on all correspondence with patent agents because of the uncertainty regarding agent privilege, which "is unsuitable for a system designed to give a real choice between selecting a non-attorney patent agent and a patent attorney," and indeed, "prejudices most of those independent inventors who may not have the resources to hire a patent attorney to maintain the privilege." Id. at 22, n.7.

Turning to the dissent's points that (1) a privilege is not needed and (2) the Federal Circuit is not the proper venue to create a new privilege, the majority rebutted both arguments. First, the majority pointed to Sperry's explanation that patent agents practice law as evidence of the need for a corresponding privilege. Id. at 25. Second, the majority noted that Congress granted federal courts authority to "prescribe rules to govern the practice and procedure in civil actions at law," and under Rule 501 of the Federal Rules of Evidence, the court was merely exercising its authority to recognize a patent agent privilege. Id. at 26.

While the majority concluded that a patent agent privilege did exist, it took steps to clarify the narrow boundaries of the privilege. Only those 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 receive the benefit of the patent-agent privilege." Id. at 25 (internal citations omitted). Indeed, the court cautioned that "communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not reasonably necessary" (id.) and "likely would constitute the unauthorized practice of law." Id. at 25, n.8.

Thus, while the decision in Queen's University addressed some of the ambiguity surrounding the existence of a U.S. patent agent privilege, caution should still be taken to ensure that agent communications remain within the boundaries defined by the court.

Foreign Patent Attorneys and Agents

A related question that Queen's University did not address is the scope of privilege afforded by U.S. courts to correspondence involving foreign patent attorneys and foreign patents. While there has not been a recent Federal Circuit decision on that point, a review of the available district court decisions suggests that U.S. courts will generally afford privilege to foreign patent attorneys and patent agents under U.S. rules where they are assisting in U.S. patent matters, but only to the extent a foreign country's law provides for privilege where the correspondence at issue involves foreign patent matters.

For instance, the District Court for the Southern District of New York held in Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., 208 F.R.D. 92 (S.D.N.Y. 2002) that communications touching on U.S. patent issues were controlled by U.S. privilege law, while communications solely or predominantly involving a foreign patent were governed by that country's rules. Where foreign law governs, courts generally assess whether the foreign nation extends privilege to a particular person (for example, a patent agent or a barrister) and whether that person was acting in their privileged capacity with respect to the document or communication being sought in discovery. 2M Asset Mgmt., LLC v. Netmass, Inc., 2007 WL 666987 (E.D. Tex. Feb. 28, 2007).

Of note, while most countries in Europe afford at least some type of privilege, until recently the European Patent Office (EPO) did not expressly offer privilege for registered European Patent Attorneys. Recent changes to the European Patent Convention have added a privilege against disclosure for European Patent Attorneys acting in their representative capacity "in proceedings before the European Patent Office." European Patent Convention, Rule 153. While this rule would likely prevent a U.S. court from ordering disclosure of European patent-related correspondence with a European Patent Attorney, it is possible that the court might not extend the privilege to correspondence addressing questions of infringement or litigation in European national courts, where the EPO lacks regulatory authority.

Thus, 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. Likewise, if the communication relates to foreign prosecution or litigation matters, it may be beneficial to check which types of attorneys or agents are afforded privilege in that foreign country and to include them on the correspondence.