The United States Patent and Trademark Office ("PTO") limits the prosecution of patents and related activities to Patent Attorneys or Patent Agents. A Patent Attorney is a U.S. licensed attorney with an approved technical degree who has passed the patent bar. A Patent Agent is a non-attorney with an approved technical degree who has passed the patent bar. While Patent Agents can practice before the PTO, they cannot represent clients outside of PTO proceedings. Because Patent Agents are not attorneys, there has been a split between district courts as to whether privilege applies to a client's communications with a Patent Agent. Some courts have held that there is no Patent Agent privilege. Other courts have found a Patent Agent privilege. And yet some courts have held that a Patent Agent privilege only applies if the Patent Agent is working with and at the discretion of a licensed attorney.

In a matter of first impression, the Federal Circuit held that Patent Agent privilege exists. In re: Queen's University, 2015-145 (Fed. Circ. Mar. 7, 2015). In this case, the plaintiff designated as privilege all of the communications with its Patent Agent relating to prosecution of patents; no attorney was involved with these communications. The defendant moved to compel production of the communications with the Patent Agent arguing that there is no such things as Patent Agent privilege. The district court agreed with the defendant and ordered the plaintiff to produce all communications between itself and its Patent Agent. The plaintiff then appealed to the Federal Circuit. The Federal Circuit reversed the district court's decision. The U.S. Supreme Court has previously held that Patent Agents, when prosecuting patents, are functioning as attorneys for their clients. Furthermore, the Patent Agent is functioning an accordance with activities that have been authorized by Congress. Because the defendant was unable to identify any statute, rule, or provision that prohibited applying a privilege in this case, the Federal Circuit held that Patent Agent Privilege exists and protects communications between clients and their Patent Agents relating to prosecution of patents from discovery or disclosure.

The Federal Circuit noted, however, that the privilege only extends to activities that Congress has authorized Patent Agents to perform, i.e., prosecution of patents. The Patent Agent privilege would not extend to other legal activities, such as offering an opinion on invalidity or infringement related to a litigation or valuation of patents, because those activities are not "reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the [PTO]."

Before this decision, there was uncertainty as to whether Patent Agent privilege existed. The Federal Circuit's ruling has now brought clarity and should give clients confidence that communications with their Patent Agents regarding prosecution will be protected as privilege.