Attorney-client privilege refers to the protection of confidential communications made for the purpose of obtaining or providing legal advice. Application of and exceptions to this privilege are fact-based determinations made...more
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
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
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
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...more
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...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
[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