On Friday, February 23, 2018, the Texas Supreme Court [1] overturned a lower court’s ruling that attorney-client privilege does not extend to patent agents. The ruling, bound to reverberate throughout the intellectual property industry, may bring relief to entities utilizing patent agents.  

At issue was whether patent agents can assert attorney-client privilege to protect their communications with clients made in the context of patent prosecution. The issue arose in a dispute between inventor Andrew Silver and Tabletop Media LLC, which markets a tablet device known as the Ziosk used to order food, play games, and pay for meals at restaurants. Tabletop won a trial court ruling compelling production of more than 300 emails between Silver and his non-lawyer patent agent.

Silver urged the trial court justices to review the discovery rulings, arguing the plain language of Texas Rule of Evidence 503 exempts from disclosure communications between a client and a “lawyer” — with that term defined to mean “a person authorized to practice law in any state or nation.” Silver argued that definition is not limited to licensed attorneys, but includes registered patent agents who practice law by preparing and prosecuting patents before the U.S. Patent and Trademark Office.

Federal courts protect from discovery communications about patent prosecution between patent agents and their clients, [2] but a panel of Dallas’ Fifth Court of Appeals previously determined [3] a Federal Circuit ruling [4] on the issue does not apply in state court. This left open the possibility that entities utilizing patent agents to prosecute patents could encounter the prospect of confidential information being produced in court.     

The Texas Supreme Court recognized “patent-agent privilege” as a form of attorney-client privilege. The court writes:

[B]ecause patent agents are authorized to practice law before the USPTO, they fall within [Texas Rules of Evidence] Rule 503’s definition of “lawyer,” and, as such, their clients may invoke the lawyer-client privilege to protect communications that fall within the privilege’s scope.

In Rule 503 of the Texas Rules of Evidence, the rule defines “lawyer” as “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.”  

The trial court had concluded that a party’s communications with a patent agent were only privileged to the extent that the patent agent was acting under an attorney’s direction. The Texas Supreme Court reversed that judgment concluding that no supervision is necessary. However, the court acknowledged that communications outside of the patent agent’s authorized practice area might not be protected:

The client’s communications with a registered patent agent regarding matters outside the agent’s authorized practice area might not be protected because these communications are not necessarily made to facilitate the rendition of professional legal services.

The ruling was in agreement with standards set at the United States Court of Appeals for the Federal Circuit and Patent Trial and Appeal Board holding that communications with patent agents are protected. This may indicate an emerging consensus as the Texas court’s ruling will likely be influential when other courts around the country confront the issue in the future.

This decision supports the position that patent agents are able to provide advice to clients and maintain attorney-client privilege.  

[1] In re Silver, 61 Tex. Sup. Ct. J. 394 (Tex. Feb. 23, 2018)
[2] In re Queen's Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016)
[3] In re Silver, 500 S.W.3d 644 (Tex. App. 2016), subsequent mandamus proceeding, No. 16-0682, 2018 WL 1022470 (Tex. Feb. 23, 2018)
[4] In re Queen's Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016)

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