In In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016), the Federal Circuit recognized the patent-agent privilege. The appellate court noted that this was a matter of first impression for the Federal Circuit and the issue had split the district courts that had addressed it. The appellate court explained that 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 counsel in favor of recognizing an independent patent-agent privilege.” Where a client chooses a patent agent to obtain legal advice on patentability and legal services in preparing a patent application, the client has a reasonable expectation that its communications will be kept privileged. Because patent agents are not attorneys, and are not authorized by the bar of any state to practice law, the patent-agent privilege applies only to communications that are within the scope of activities authorized by Congress. Communications that are not reasonably necessary and incident to the prosecution of a patent before the Patent Office fall outside the scope of the patent-agent privilege.
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Federal Circuit Recognizes Patent-Agent Privilege
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