HIGHLIGHTS:

• In a 2-1 decision, the U.S. Court of Appeals for the Federal Circuit has recognized "a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent's authorized practice of law before the Patent Office."
• The majority opinion reasoned that while patent agents are not licensed attorneys, they are specifically authorized by Congress to represent applicants before the U.S. Patent and Trademark Office, the activity of which has been characterized by the Supreme Court as the practice of law since at least 1963.
• However, in recognizing a new patent-agent privilege, the majority expressly limited its protection to communications within the scope of the patent agent's congressionally authorized activity.

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 impression in the federal appellate court, but had split the nation's district courts. In a 2-1 decision in In re: Queen's University at Kingston, et al. (No. 2015-145), 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 practice of law before the Patent Office."

The Federal Circuit's opinion arose from a patent infringement case in the U.S. District Court for the Eastern District of Texas between Queen's University at Kingston and Samsung Electronics. In the course of a discovery dispute in that action, the district court ordered Queen's University, a Canadian university in Kingston, Ontario, to produce communications with its non-attorney patent agents, finding that a patent-agent privilege protecting such communications did not exist. Queen's University then petitioned the Federal Circuit for a writ of mandamus to stop production of the communications.

Federal Circuit Decision

The Federal Circuit disagreed with the district court and recognized the patent-agent privilege. The majority opinion reasoned that while patent agents are not licensed attorneys, they are specifically authorized by Congress to represent applicants before the U.S. Patent and Trademark Office, the activity of which has been characterized by the Supreme Court as the practice of law since at least 1963. The majority further noted that a patent applicant has a reasonable expectation that communications relating to legal advice on patentability and preparing a patent application are privileged, and concluded that "whether those communications are directed to an attorney or to his or her legally equivalent patent agent should be of no moment."

However, in recognizing a new patent-agent privilege, the majority expressly limited its protection to communications within the scope of the patent agent's congressionally authorized activity. The majority noted that the privilege would extend only to those communications "reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the [Patent] Office involving a patent application or patent in which the practitioner is authorized to participate."

The dissent argued that the circumstances did not reveal a need for an independent patent-agent privilege, and that the majority had overstepped in electing to recognize it.

This decision has significant ramifications for patent applicants and their patent agents, as well as for attorneys practicing in this area of the law.