The Federal Circuit recently held that there is an independent patent agent privilege, explaining that because prosecuting a patent application before the US Patent and Trademark Office (USPTO) constitutes the practice of law, communications with non-attorney patent agents are privileged. In re: Queen’s University at Kingston, No. 2015-145, 2016 U.S. App. LEXIS 4259 (Fed. Cir. Mar. 7, 2016).

In re Queen’s Univ. resolved a petition for a writ of mandamus in a pending district court case in the Eastern District of Texas. See, e.g., Queen’s Univ. v. Samsung Elecs. Co., No. 2:14-CV-53-JRG-RSP, 2015 U.S. Dist. LEXIS 62527 (E.D. Tex. May 13, 2015) (claim construction order). Queen’s University at Kingston (“Queen’s University”), a Canadian research university, is the assignee of U.S. Patent Nos. 7,762,665; 8,096,660; and 8,322,856, which are directed toward user interfaces for smartphones. Queen’s University sued Samsung Electronics Co. (“Samsung”) for patent infringement. During discovery, Queen’s University refused to produce certain documents, asserting a privilege between Queen’s University and the non-attorney patent agent who drafted the documents. Samsung won a Motion to Compel the documents in district court, finding that the patent agent privilege does not exist. Queen’s University then filed the petition for a writ of mandamus.

Because patent agent privilege is an issue of substantive patent law, the Federal Circuit applied its own law. The court considered Sperry v. State of Florida ex rel. Florida Bar, a U.S. Supreme Court decision holding that the activities of patent agents constituted the practice of law and that the state of Florida could not regulate those activities. 373 U.S. 379 (1963). That is, patent agents “are not simply engaging in law-like activity, they are engaging in the practice of law itself.” In re Queen’s Univ at *14. As a result, the panel majority reasoned, “the lack of a patent-agent privilege would hinder communications and their clients, undermining the real choice Congress and the Commissioner have concluded clients should have between hiring patent attorneys and hiring non-attorney patent agents.” Id. at *22. That is, Congress’s intent for two avenues of prosecuting patents “confers a professional status on patent agents that justifies our recognition of the patent-agent privilege.” Id. at *23.

Judge Reyna’s dissent argued that no such privilege exists, and the court should not create a patent agent privilege. Specifically, Judge Reyna argued that a “need for confidence and trust alone is an insufficient reason to create a new privilege,” and that there is “no pressing need for an agent-client privilege.” Id. at 30-32. Furthermore, Judge Reyna distinguishes Sperry, noting that “the [Supreme Court] did not hold that patent agents practice law,” but rather that under Florida law, patent prosecution is the practice of law, and that Florida could not bar patent agents from practicing before the USPTO as the unauthorized practice of law. Id. at *52-53.

The main takeaway from this case is the clear recognition of  a patent agent privilege. While the scope of the privilege remains unclear, and will remain unclear until district courts sort out specific boundaries, law firms  and corporations can still take measures with the privilege in mind. In particular, patent agents should be educated on the concept of privileged communications; steps should be taken to conduct patent agent communication like attorney communications, i.e., taking care not to destroy the privilege.