On March 7, 2016 the Federal Circuit recognized a patent-agent privilege for “communications with non-attorney patent agents” that relate to “the agent’s authorized practice of law before the Patent Office.” That ruling came in a 2-1 decision addressing a petition for mandamus in In re Queen’s University at Kingston.

The underlying litigation started when Queen’s University sued Samsung for infringing three patents relating to user interfaces, e.g., for smartphones. During discovery, Samsung sought communications between Queen’s University and registered non-attorney patent agents that discussed the prosecution of the patents in suit. The district court decided that the attorney-client privilege did not apply to those communications and ordered Queen’s University to produce them. But the court agreed to stay production of those communications pending resolution of the petition for mandamus.

When considering the petition, the Federal Circuit concluded that its law should control, rather than regional-circuit law, because the question concerning the existence of a patent-agent privilege implicated “substantive issues of patent law.” The court noted that it had “not addressed whether a patent-agent privilege exists” and that the question had “split the district courts.”

In recognizing that such a privilege does exist, the Federal Circuit pointed out that the Supreme Court in Sperry v. Florida concluded that the preparation and prosecution of patent applications before the Patent Office constitutes the practice of law. The Federal Circuit then noted that Congress has endorsed a system where patent applicants can choose between patent attorneys and patent agents when seeking representation before the Office.

The Federal Circuit observed that the attorney-client privilege exists to “encourage full and frank communication” between counselor and client and “thereby promote broader public interests in the observance of law and administration of justice.” The court reasoned that distinguishing between attorney-client communications and agent-client communications would frustrate Congress’s intent to afford clients the freedom to choose between a patent attorney and a patent agent for matters before the Patent Office. According to the court, “[T]he patent-agent privilege furthers the same important public interests as that of the attorney-client privilege.”

After determining that a patent-agent privilege exists, the Federal Circuit addressed the scope of that privilege. In particular, the court explained that the regulation regarding practice before the Patent Office in patent matters—37 C.F.R. § 11.5(b)(1)—helps define the scope of communications covered by the patent-agent privilege. According to the court, that privilege covers communications “reasonably necessary and incident to the preparation and prosecution of patent applications and other proceedings before the Office involving a patent application or patent in which the practitioner is authorized to participate.”

The Federal Circuit cautioned, however, that “[c]ommunications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege.” As an example, the court said that the privilege would not cover “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.”
As support for that example, the court cited, among other things, an August 2008 Federal Register notice. That notice distinguished a litigation from a reexamination, saying, “Due to registration to practice before the Office in patent cases, a practitioner [e.g., a patent agent] may issue a validity opinion in contemplation of filing a request for reexamination.”

As the Federal Circuit acknowledged, district courts disagreed regarding the existence of a patent-agent privilege. That divide created uncertainty among patent owners and patent agents. In January 2015 and again in August 2015, the Patent Office requested public comments concerning privilege issues, including a patent-agent privilege.

The Federal Circuit’s decision Queen’s University should resolve many of the questions that concerned stakeholders.