Home > Intellectual Property > Fed. Circ. Recognizes Non-Lawyer Patent Agent Privilege

Fed. Circ. Recognizes Non-Lawyer Patent Agent Privilege

In a case over smartphones, a split Federal Circuit ruled that communications between U.S. patent applicants and their non-attorney patent agents should be afforded some degree of privilege.

For the first time, the appeals court recognized a patent agent privilege, affording the same type of protections in attorney-client privilege to communications between registered patent agents and their clients.

Patent agents are not licensed attorneys, but they are certified to prepare and prosecute patent applications before the U.S. Patent and Trademark Office.

“We 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 litigation counsel in favor of recognizing an independent patent-agent privilege,” Circuit Judge Kathleen McDonald O’Malley wrote on behalf of the majority panel.

The scope of this privilege is limited to exclude communications that are not “reasonably necessary and incident to the prosecution of patents before the Patent Office.” For example, an opinion about the validity of someone else’s patent is something that would not be protected.

The ruling comes from a case between Queen’s University at Kingston, a research university in Ontario, Canada, and Samsung Electronics Co. Ltd.

Queen’s University sued Samsung, claiming Samsung’s Galaxy S4 and Galaxy Note 3 smartphones infringe its patents for technology that allows humans to communicate with computers with their eyes. Samsung the year before had unveiled its SmartPause feature, which enabled users to pause a video simply by looking away from the screen.

During the course of discovery, Queen’s University refused to hand over certain documents, including communications between university employees and registered patent agents talking about the prosecution of the disputed patents.

After Samsung protested, the district court ordered Queen’s University to produce the communications, finding they were not protected by attorney-client privilege and that a separate patent agent privilege did not exist. The ruling was stayed until the Federal Circuit could hear the university’s mandamus petition.

The Federal Circuit said an applicant has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be privileged.

“Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment,” the judge wrote. “Indeed, if we hold otherwise, we frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.”

For more information, see Law360.



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