In In re Queen’s University at Kingston, Appeal No. 2015-145, the Federal Circuit held that the patent-agent privilege narrowly protects communications between clients and non-attorney patent agents.
Queen’s University sued Samsung for patent infringement. During discovery, Queen’s University produced a privilege log asserting that certain communications with its patent agents were privileged under the patent-agent privilege. Samsung moved to compel production of these documents. The district court determined that there is no privilege for communications between a client and its non-attorney patent agents, and ordered the patentee to produce the requested documents. Queen’s University filed a petition for writ of mandamus with the Federal Circuit, which was granted.
The Federal Circuit held that a patent-agent privilege exists due to the unique roles of patent agents, congressional recognition of patent agents’ authority to act, and the Supreme Court’s characterization of their activities as the practice of law. This privilege, however, is narrow and the burden is on the party invoking the privilege to prove that the communications at issue “are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding” before the Patent Office.