In the UK, client/patent attorney communications benefit from privilege (the entitlement for a party to withhold evidence from production to a third party or the court). The position in the United States (where patent attorneys are called patent agents) is less clear-cut. A recent decision of the Federal Circuit has gone some way towards clarifying the position.

The case concerned patent infringement proceedings brought by Queen’s University against Samsung. During discovery, Queen’s refused to produce certain communications concerning the prosecution of the asserted patents that had been exchanged between its employees and patent agents. The issue of whether the communications were or were not covered by privilege was heard by the Federal Circuit.

The Court was divided. The majority considered that the communications were protected. While acknowledging that there was a presumption against recognising the existence of new forms of privilege (as this could be detrimental to the public’s general right to information), the Court considered that the unique role of a patent agent and the current realities of US patent litigation pointed towards recognising the existence of an independent patent agent privilege. In particular, the Court held that the preparation and prosecution of patent applications constituted the practice of law and, just as attorney-client privilege was justified by the need for clients to be able to have complete confidence that their communications with their attorneys would not be disclosed to anyone, the same privilege would be justified in relation to client communications with patent agents. It was reasonable for a client to expect that all communications relating to obtaining legal advice on patentability and legal services in preparing a patent application would be kept privileged. This conclusion was reinforced by the recognition that Congress had permitted patent agents to practise law when appearing before the US Trademark and Patent Office.

In the absence of patent agent/client privilege, the practice has developed of copying in attorneys on all communications to ensure that the communications remain privileged. The Court considered that this was both impractical and expensive.

The Court, however, placed an important restriction on patent agent/client privilege. This was that it is restricted to communications that are “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent in which the practitioner is authorised to participate”. For example, the provision of an opinion on validity or infringement regarding another party’s patent in connection with possible litigation would not be in furtherance of patent preparation and prosecution and would therefore not attract privilege.

This restriction considerably limits the scope of patent agent/client privilege yet this was not the ground upon which the third judge’s dissent was based. That dissent was based on the judge’s opinion that there was no basis at all for rebutting the presumption against the creation of a new category of privilege for patent agents and their clients.

Given the dissenting opinion in this case, a further appeal to the Supreme Court is not inconceivable. Unless and until that happens, however, communications between a patent applicant and their patent agent that are directly related to the preparation and prosecution of a patent are entitled to privilege. The difficulty will be in recognising when the line is crossed and, in grey areas, it is very likely that we will continue to see attorneys copied into correspondence.