Federal Circuit Recognizes New, but Limited, Privilege for Patent Agent Communications -
Introduction -
Patent agents are licensed to practice before the United States Patent and Trademark Office (“USPTO”), and perform the same duties as patent attorneys in proceedings before the USPTO, including preparing and prosecuting patent applications and rendering opinions on whether certain inventions are patentable. Paul R. Rice, et. al., Attorney-Client Privilege in the U.S. § 3:19 (2015 ed.). However, patent agents, who are not members of the bar, are not considered attorneys. See Robert A. Matthews, Jr., Annotated Patent Digest § 42:24 (2016). Whether communications with patent agents should be protected under the attorney-client privilege has long been an open question for the courts, and one that, until recently, did not have a clear answer.
In March 2016, in a case of first impression, the Federal Circuit recognized a “patent-agent privilege,” which protects communications between a non- attorney patent agent and his or her client during the course of the patent agent’s authorized practice before the USPTO. Before the Federal Circuit’s decision in In re Queen’s University at Kingston, 2016 WL 860311, —F.3d— (Fed. Cir. Mar. 7, 2016), district courts were divided as to whether patent agent communications were privileged.
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