In In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. March 7, 2016), the Federal Circuit recognized—on a petition for writ of mandamus—the existence of a new patent agent privilege, extending to communications with patent agents when those agents are acting within the scope of their authorized practice of law before the Patent Office.29

This petition arose from a district court litigation filed in the Eastern District of Texas by Queen’s University at Kingston and PARTEQ (“Petitioners”) alleging that Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Respondents”) were infringing patents relating to user interfaces that change their behavior according to the attentiveness of a user. During fact discovery, Petitioners asserted privilege over communications between Queen’s University employees and registered non-lawyer patent agents discussing the prosecution of the asserted patents.

In response, Respondents moved the district court to compel the production of these documents. The magistrate judge granted Respondents’ motion to compel, finding that the communications were not privileged because non-attorney patent agents are not subject to the attorney-client privilege and no separate “patent-agent privilege” exists. After Petitioners’ objection was overruled and the district court declined to certify the issue for interlocutory appeal, Petitioners petitioned the Federal Circuit for a writ of mandamus directing the district court to withdraw its order compelling production of the documents.

The Federal Circuit granted mandamus review after finding that: (1) patent-agent privilege is an issue that splits the district courts, (2) the issue is one of first impression for the Federal Circuit, and (3) the issue involves a detrimental potential loss of confidentiality.30

 The parties did not appear to seriously dispute the court’s authority to create testimonial privileges, and so the Federal Circuit’s analysis focused on whether this particular new privilege comports with the common law, as interpreted in view of the court’s “reason and experience.”31 In this regard, the court examined the unique role of patent agents and the history and treatment of the profession by Congress and the Supreme Court. From this examination, the court concluded that the agent-client relationship is virtually indistinguishable from the lawyer-client relationship.

As a frame of reference to the role of patent agents, the Federal Circuit relied heavily on Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963). In Sperry, the Supreme Court considered patent agent activities and found that “the preparation and prosecution of patent applications for others constitutes the practice of law.” Id. at 383. Accordingly, the Federal Circuit found justification in extending privilege to patent agents on the basis that patent agents do not simply engage in law-like activity, but the practice of law itself.32

The court left no legislative stone unturned in tracing, largely through Sperry, the profession’s evolution since 1861. The court acknowledged that Congress designed a dual-path system that provided applicants with freedom of choice––patent agents versus patent attorneys––and to hold against creating a privilege would “frustrate the very purpose of Congress’s design.”33

Indeed, this dual-path design appeared to heavily influence the court’s reasoning, which culminated in the conclusion that Congress intended no difference between patent agents and patent lawyers with respect to representation before the Patent Office. The court reasoned: “[t]o the extent, therefore, that the traditional attorney-client privilege is justified based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent, that justification would seem to apply with equal force to patent agents.”34 The court also stressed the potential harm to clients by not extending privilege: “a lack of privilege would hinder communications between patent agents and their clients and undermine the Congressionally-designed freedom of choice between agents and attorneys.”35

This decision was not made by a unanimous panel, however. The dissent concluded that the majority failed to overcome a presumption against creating a new privilege by showing that the privilege either (1) advances a public interest or (2) solves a particularly pressing need for the privilege.36 Further, the dissent reasoned that agents hold no professional status akin to lawyers and instead likened patent agents to tax advisors or accountants.37 The majority provided a direct response to the dissent on this last point, noting: (1) the Supreme Court’s characterization of patent agents’ activities in Sperry; (2) Congress’s clear intent to establish a dual track for patent prosecution; (3) the Patent Office’s requirement that patent agents have a technical or scientific degree and pass an extensive examination on patent laws and regulations; and (4) the Patent Office’s imposition of specific ethical obligations on agents, including the duties of candor, good faith and disclosure.38 In this last regard, the majority emphasized the Patent Office’s requirement of an agent’s compliance with the Patent Office’s Rules of Professional Conduct––which conforms to the Model Rules of Professional Conduct of the American Bar Association.39