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Patent Agent Communications Privileged

Appeals court ruling:
Patent agent privilege
Constitutional

In an important ruling, the Federal Circuit has recognized “attorney-client privilege” for patent agents.

Patent agents are not attorneys.  They have a background in science or engineering, have training in patents, and are registered with the US Patent and Trademark Office to prepare and submit patent applications. Patent agents may work on their own, or they may be part of a law firm.

“Attorney-client privilege” can be very important if there is patent litigation. Information and communications (such as emails) that are protected by attorney-client privilege do not have to be shared with the other side in discovery proceedings. This protection allows attorneys and clients to be very honest with each other and to consider all kinds of ideas without worrying that their communications might be later used against them in court.

Until now, it has been unclear whether communications between patent agents and clients are protected by attorney-client privilege; after all, patent agents are not formally “attorneys.”

In Re: Queens University at Kingston, Parteq Research and Development Innovations, the Federal Circuit ruled that patent agents do enjoy a limited attorney-client privilege.  It is important to note, however, that not all communications between a patent agent and his or her clients are privileged: only those that relate to practice before the patent office have this protection.

A majority of the judges on the panel that heard the case found it logical to assume there would be privilege for relevant communications of patent agents:

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.

It is possible that this decision will be subject to further appeal – there was a dissenting opinion, and Samsung, the party that lost the decision, could appeal for an “en banc” ruling of the entire Federal Circuit.

In his dissent Judge Reyna said such privilege is not necessary becausethe client owes a “duty of candor and good faith” in patent applications: you’re not allowed to hide stuff from the patent office.

Unless overturned on appeal, however, this ruling is good news for patent agents and their clients.

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