Queen’s University (Queen) sued Samsung for patent infringement in the Eastern District of Texas.  During discovery, Queen refused to produce certain communications from the prosecution of the asserted patents that had been exchanged between its employees and non-attorney patent agents registered to practice before the US Patent and Trademark Office (USPTO).  The district court granted Samsung’s motion to compel, finding that such communications were not covered by the attorney-client privilege and that there was no separate patent-agent privilege.  Rather than produce the documents, Queen filed a petition for writ of mandamus in the Federal Circuit. 

Judge O’Malley authored the majority opinion, joined by Judge Lourie.  Whether a patent agent privilege exists was an issue of first impression for the court and was deemed appropriate for mandamus review of the district court’s order.  While acknowledging the presumption against recognizing new privileges, which impede the public’s general right to information, the court concluded that “unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege.”  The court identified various policy and practical reasons that supported a patent agent privilege: 

  • The Supreme Court has held that the preparation and prosecution of patent applications for others constitutes the practice of law.  Just as the traditional attorney-client privilege is justified on the need for candor between a client and his or her legal professional, such justification applies with equal force to patent agents.
  • Congress has authorized and continues to permit the practice of law by patent agents when appearing before the USPTO.
  • It is reasonable for a client to expect that all communications relating to obtaining legal advice on patentability and legal services in preparing a patent application will be kept privileged. 
  • Many parties include a licensed attorney on any and all communications with a patent agent to maintain a claim to attorney-client privilege.  The court found such arrangements “unsuitable” for a system designed to give inventors a real choice between selecting a patent agent or a patent attorney.  Moreover, the added expense of including a patent attorney prejudices many inventors. 

The court expressly limited the scope of the new patent-agent privilege to communications between a patent applicant and a non-attorney that 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.”  According to the court, other communications with a patent agent, such as providing a validity or infringement opinion regarding another party’s patent in connection with possible litigation or a patent sale or purchase are not in furtherance of patent preparation and prosecution and are not privileged. 

In his dissent, Judge Reyna argued that there is no need for a patent-agent privilege, and if there were, Congress should create it.  In his view, “[t]he presumption against the creation of new privileges has not been overcome by any showing that the public interest will be served or that there is a real need for such a privilege,” and “[a]n attorney-client-like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency.”

PRACTICE TIPS:            

  • Communications between a patent applicant and their non-attorney patent agent that are directly related to preparation and prosecution are entitled to the patent-agent privilege.  The added effort and expense to include patent attorneys in such communications in order to preserve a claim of privilege are no longer necessary.    
  • It remains to be seen how broadly courts will apply the privilege.  Parties are advised to ensure that privileged communications regarding preparation and prosecution are kept separate from communications on topics that are not directly related to obtaining a patent.  Parties should also observe the formalities appropriate for claiming privilege, such as labeling written communications and excluding non-parties from privileged discussions.