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 (Tex. Feb. 23, 2018).

An inventor sued Tabletop Media, which sells tablets designed to allow customers at restaurants to order food and pay their check without a waiter or waitress, claiming it failed to pay him for his patent. During discovery, Tabletop sought discovery of emails between the inventor and his patent agent. The inventor refused to produce the emails, claiming that they were covered by the attorney-client privilege even though the patent agent was not a licensed attorney.

When the trial court ordered production, the inventor sought mandamus relief. The court of appeals denied relief because it is “not the role of intermediate courts of appeal to declare new common law discovery privileges.”  500 S.W.3d at 645. Foreshadowing its ruling, the Texas Supreme Court framed the issue differently: “The issue is not the creation of a new patent-agent privilege but rather whether the existing lawyer-client privilege extends to communications between a registered patent agent and the agent’s client.”

The Supreme Court held that it did.

The Court first turned to Texas Rule of Evidence 503 to determine who is a “lawyer.”  The rule defines “lawyer” as “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.”  TEX. R. EVID.  503(a)(3).  That definition requires a determination of what it means to practice law.

The court next consulted the Government Code, in which the “practice of law” is defined as:

the preparation of a pleading or other document incident to an action or special proceeding or the management of the action or proceeding on behalf of a client before a judge in court as well as a service rendered out of court, including the giving of advice or the rendering of any service requiring the use of legal skill or knowledge, such as preparing a will, contract, or other instrument, the legal effect of which under the facts and conclusions involved must be carefully determined.

TEX. GOV’T CODE § 81.101(a).

The Court then sought guidance about what the “practice of law” encompasses from Black’s Law Dictionary which provides:

[A] broad range of services such as conducting cases in court, preparing papers necessary to bring about various transactions from conveying land to effecting corporate mergers, preparing  legal opinions on various points of law, drafting wills and other estate-planning documents, and advising clients on legal questions.  The term also includes activities that comparatively few lawyers engage in but that require legal expertise, such as drafting legislation and court rules.

BLACK’S LAW DICTIONARY (10th ed. 2014).

Reasoning that registered patent agents perform the same services as patent attorneys in the application and prosecution of patents before the USPTO, the Court concluded that “within the scope of their practice before the USPTO, patent agents practice law.”  And because patent agents are authorized to practice law before the USPTO, they are “authorized to practice law in [a] . . . nation,” within the meaning of Rule 503.  Therefore, their clients may invoke the lawyer-client privilege to protect communications that fall within the privilege’s scope.

It will be interesting to see if the privilege applies in other settings in which persons not licensed as lawyers are authorized to represent clients before administrative agencies.  It remains to be seen whether this is a unique application of a settled rule, or the first step down a slippery slope.