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The Federal Circuit Now Recognizes a Limited Patent-Agent Privilege

By Jonathan R. Tung, Esq. on March 17, 2016 | Last updated on March 21, 2019

A split Federal Circuit just recognized a limited privilege enjoyed by patent agents citing a number of factors including "reason and experience" of the current litigation realities.

Although patent agents already enjoy a higher level of intimacy with clients, this will be the first time intellectual property courts have come out and said that anyone besides a patent attorney may refuse to reveal confidential information about client patents.

Impetus for Recognition

It is already taken for granted that non-attorney patent agents practice law in helping to file or prosecute patent applications. Additionally, non-attorney patent agents already practice law before the USPTO. Therefore, the age old song about "only lawyers can practice law" is technically incorrect. For these reasons, the Federal Circuit decided the way it did.

In the case of In Re Queen's University at Kingston, Queen's University refused to produce certain documents they claimed were protected under attorney-client privilege even though it was made clear that no attorney was ever involved in the subject communications.

Majority Opinion, Dissent's Opinion

The majority started from the beginning and explored the impetus for attorney-client privilege. Privilege facilitates honest communication between the client and the lawyer, thereby allowing the lawyer to represent his client more effectively. Privilege is governed by common law unless it is preempted by the Constitution, Federal Statute, or SCOTUS case law (rules).

Generally, there has been resistance by the courts to expand privilege. However, the Federal Circuit took into account the case of Sperry v. State of Florida ex rel Florida Bar and the Patent Act. It found that despite misgivings, "reason and experience" compelled it to recognize a limited patent-agent privilege that was given blessings by Congressional intent.

However, the ruling does not grant patent-agents the power to confer advice as to the validity of a patent. This is a fine line, and it is almost assuredly tested and infringed every day.

The dissent felt that the additional expansion of privilege was needless because clients already are under a duty of "candor and good faith" with the USPTO when submitting their patent petitions. In communicating with her agent, the client cannot asset privilege. However, it perhaps just glosses over the fact that communications between clients and patent-agents also include information about competitor's products that are "material to patentability" and that such communications at least need some protection because they skirt closely to strategic advice.

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