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The Supreme Court of Texas held that a client’s communications with a registered patent agent, made to facilitate the agent’s provision of authorized legal services to the client, fall within the Texas attorney-client...more
In a recent opinion, the Texas Supreme Court resolved a question of interest to patent attorneys—is there a privilege for communications between a patent agent and his client? In re Silver, No. 16-0682, 2018 Tex. LEXIS 171...more
On Friday, February 23, 2018, the Texas Supreme Court 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...more
Originally published in IP Watchdog on February 22, 2018. Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such...more
In reversing an appellate court decision that had caused concerns throughout the patent world, the Texas Supreme Court recognized that communications between patent agents and clients could be covered by the attorney-client...more
Earlier this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) published a Final Rule regarding the scope of the attorney-client privilege in proceedings before the PTAB. The Rule states that...more
Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign...more
Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
As the calendar turns the page from 2016 to 2017, we take the opportunity to review Canadian IP law and practice highlights from the past year....more
Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue....more
When Congress created the post-issuance proceedings before the Patent Trial and Appeal Board as part of the Leahy-Smith America Invents Act ("AIA"), it did so with the recognition that they would be adjudicatory in nature. ...more
Finding that Texas state courts lacked authority to recognize common-law discovery privileges, the Texas Court of Appeals for the Fifth District refused to recognize the US Court of Appeals for the Federal Circuit’s recently...more
Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more
In a significant ruling, the U.S. Court of Appeals for the Federal Circuit has recognized a new privilege shielding communications between patent applicants and their non-lawyer patent agents. The issue was one of first...more
Are communications between a patent agent and a client privileged? Up until last week, the Federal Circuit had not addressed the subject, although there had been a split with the district courts that had considered the...more
[W]e find 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...more
On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized...more