Recently, in In re Queen’s University, the Court of Appeals for the Federal Circuit held that communications between a client and its non-lawyer patent-agents can be entitled to the same protections as attorney-client communications.The specific issue in In re Queen’s University was whether Queen’s University at Kingston could withhold the production of certain documents during discovery on the basis of patent-agent privilege. In acknowledging the existence of a patent-agent privilege for non-lawyer patent agents, the Federal Circuit determined that the prosecution of patents before the United States Patent and Trademark Office (USPTO) constituted the practice of law and since non-lawyer patent agents are allowed to engage in this practice before the USPTO under federal law, these document could be withheld from production by Queen’s University on privilege grounds since it related to the work of those non-lawyer patent agents before the USPTO.
The practical implications of the Court’s ruling means that foreign, non-attorney patent agents may assert privilege in limited circumstances. It is important to note that the scope of the patent agent privilege is not as broad as the scope of the attorney-client privilege. The Federal Circuit expressed caution on the scope of the patent-agent privilege and held that the privilege may only be asserted on communications that are within the scope of activities authorized by Congress may receive privilege. For guidance, 37 C.F.R. § 11.5(b)(1) articulates activities a patent agent may engage in at the USPTO. Consequently, the scope of the patent-agent privilege will only apply to communications that are in furtherance of the performance of these tasks or that are reasonably necessary and incident to the preparation and prosecution of patent applications or any other proceedings before the USPTO.
One important consideration in deciding whether privilege may be asserted over a communication with a non-lawyer patent agent is the purpose of the communication. Privilege may not be asserted over, for example, a non-attorney patent agent’s opinion on the validity of another party’s patents in contemplation of a Federal District Court lawsuit or for the sale or purchase of a patent. However, privilege may be asserted if the opinion on validity was provided in the context of a reexamination or inter partes review before the USPTO.
To be sure, the existence of the patent-agent privilege and the scope of the privilege will continue to be tested in subsequent cases. But for now, determining whether communication between a non-lawyer patent agent the client is privileged depends in part on the scope of activities the USPTO permits the agent to engage in as well as the underlying reason for the particular communication.