Patent-agent privilege exists for patent prosecution related communications
The Federal Circuit held, in In re: Queens’s University (Fed. Cir. March 7, 2016) that a patent-agent privilege exists but that privilege extends only to communications with the agent related to the agent’s representation of the client before the United States Patent and Trademark Office (USPTO). The Queen’s University case only relates to the existence of a patent-agent privilege and not to quality of their work product.
Background of Queen’s University case
The issue arose out of patent infringement litigation between Queen’s University (patent owner) and Samsung (alleged infringer). During prosecution of the patent at issue, Queen’s University utilized the services of a patent agent to prepare and file the patent application that resulted in the patent-in-suit. Samsung sought disclosure of the communications between the patent owner and the patent agent. Queen’s University refused and sought relief from an order to produce the communications by asserting that such communications are privileged under a patent-agent privilege.
Patent-agent privilege issue
Whether a patent-agent privilege existed was an issue of first impression for the Federal Circuit in the Queen’s University case.
Reasoning behind creating a patent-agent privilege
The Federal Circuit in recognizing the patent-agent privilege based its reasoning on the fact that the Supreme Court characterized the activities of a patent agent as the practice of law. The Federal Circuit held that:
To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. (emphasis added).
Communications within the patent-agent privilege
This statement begs the question: What are the activities authorized by Congress that patent agents perform before the USPTO?
The Patent Office, under authority delegated by Congress, enacted regulations found in 37 C.F.R. § 11.5(b)(1) and those regulations provide that a patent agent’s practice before the USPTO includes but is not limited to:
- Preparing and prosecuting any patent application,
- consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office (e.g., , patentability opinions or novelty search opinions),
- drafting the specification or claims of a patent application;
- drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention;
- drafting a reply to a communication from the Office regarding a patent application; and
- drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.
Communications between non-attorney patent agents and their clients that are in furtherance of the performance of the tasks listed above or which are reasonably necessary and incident to the prosecution of the patent application or other USPTO proceeding receive the benefit of the patent-agent privilege.
Communications outside the patent-agent privilege
Conversely, communications which are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege.
Examples that fall outside of the patent-agent privilege include and is not limited to:
- rendering an opinion on validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent;
- opinions on infringement.
The above tasks represent a small subset activities that patent attorneys perform for their clients. The role of a patent attorney involves more and is not necessary and incident to communicating with the patent office. For example, preparing a license agreement for a patent application or patent does not appear to be related to the prosecution of a patent application. Preparing an internal invention disclosure system wherein engineers would submit ideas for vetting and submission to the USPTO does not appear to be within the scope of the patent agent privilege. These tasks were not decided by Queen’s University case but would have to be litigated in order to know whether these activities are included in the patent-agent privilege. Nevertheless, the standard presented in the Queen’s University case is indicative as to whether associated communications fall outside the scope of the patent-agent prilege.
No recognized state based patent agent privilege
Moreover, be aware that no state bar has recognized a patent-agent privilege. As such, in the event that litigation finds its way into the state court, communications with patent agents may be in jeopardy.
The Queen’s University opinion presented a standard to determine whether a communication with a patent agent is protected under the patent-agent privilege. Please note that a confidentiality agreement (non-disclosure agreement) between the patent agent and client cannot prevent none privileged communications from being discovered during litigation. Moreover, this case only relates to whether a patent-agent privilege exists. It does not go to the quality of the work product of a patent-agent. The existence of a privilege should be one of the considerations as to whether you would want to hire a patent agent versus a patent attorney.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.