In a matter of first impression, the Federal Circuit recently recognized a patent-agent privilege. In re Queen's University at Kingston, No. 2015-145 (Fed. Cir. March 7, 2016). This protection extends to communications with non-attorney patent agents acting within the agents' authorized practice before the United States Patent and Trademark Office (Patent Office). Id. at 13. Consistent with Rule 501 of the Federal Rules of Evidence, the Court found the "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" in favor of this independent patent-agent privilege. The Court also advised caution regarding the breadth of the patent-agent privilege.

In light of this holding, and the in-house counsel should be able to allocate resources more efficiently, and inventors should be able to engage patent agents with fewer worries about privilege in future litigation.

The Unique Roles of Patent Agents

To be granted the right to practice before the Patent Office, a patent agent must have a technical or scientific degree and pass a comprehensive examination on patent laws and regulations. Once licensed, the patent agent's practice before the Patent Office "includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal or any other proceeding before the Patent Trial and Appeal Board, or other proceeding." 37 C.F.R. §11.5(b)(1).

In many ways, a patent agent's practice before the Patent Office is not different from that of a patent attorney. Both patent attorneys and patent agents must abide by specific ethical obligations imposed by the Patent Office, which conform to the Model Rules of Professional Conduct of the American Bar Association. See 37 C.F.R. §11.100 et seq.

Congressional Recognition of Patent Agents' Authority to Practice before the Patent Office

In support of its decision, the Federal Circuit noted that Congress authorized non-attorney patent agents to engage in the practice of law before the Patent Office. Because of this, the Court indicated that "reason and experience compel us to recognize a patent agent privilege that is coextensive with the rights granted to patent agents by Congress." In re Queen's, at 18. The Court further determined that "[a] client has a reasonable expectation that all communications relating to 'obtaining legal advice on patentability and legal services in preparing a patent application' will be kept privileged." Id.

Addressing the attorney/patent agent distinction, the Court explained that whether "communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment. Indeed, if we hold otherwise, we frustrate the very purpose of Congress's design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office." Id. Moreover, the Court held that "the lack of a patent-agent privilege would hinder communications between patent agents and their clients, undermining the real choice Congress and the Commissioner have concluded clients should have between hiring patent attorneys and hiring non-attorney patent agents." Id.

Notably, the Federal Circuit dismissed the need to include a licensed attorney on all communications, a well-used work-around that inevitably increased patent costs. "We recognize that many parties, in order to accommodate the long-standing ambiguity in the law of privilege between patent agents and their clients, include a licensed attorney on any and all communications to ensure that at least some privilege is maintained. This work-around is unsuitable for a system designed to give a real choice between selecting a non-attorney patent agent and a patent attorney. Indeed, it prejudices most of those independent inventors who may not have the resources to hire a patent attorney to maintain the privilege." Id. at 22.

The Supreme Court's Characterization of Patent Agent Activities as the Practice of Law

The Federal Circuit also discussed 1963 Supreme Court precedent recognizing that, unlike accountants, registered patent agents are not simply engaging in law-like activities. Rather, "the preparation and prosecution of patent applications for others constitutes the practice of law." Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379, 383 (1963).

 Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U.S.C. §101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under state law. It also involves his participation the drafting of the specification and claims of the patent application, 35 U.S.C. §112, which this Court long ago noted "constitutes one of the most difficult legal instruments to draw with accuracy." 

Id. (citations omitted).

Agent-Privilege Limitations

The Federal Circuit did limit the patent-agent privilege to communications that fall within an agent's scope of practice as "authorized" by Congress. In other words, communications "that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege." In re Queen's, at 25. Importantly, these communications include, but are not limited to, opinions on infringement of or the validity of another party's patent. Indeed, patent agents need to be mindful when performing these tasks, because, as noted by the Court, not only would such "communications fall outside the scope of patent-agent privilege, they likely would constitute the unauthorized practice of law." Id.