Federal Circuit Recognizes Patent-Agent Privilege

Author: Jennifer M. Vein
Editor: Aaron Gleaton Clay

In In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. March 7, 2016), the Federal Circuit acknowledged a patent-agent privilege covering client communications with non-attorney patent agents in the course of agents’ authorized practice before the USPTO.

During discovery in a patent infringement suit with Samsung, Queen’s University asserted privilege over communications with its patent agents. The district court granted Samsung’s motion to compel those documents because the agents were not attorneys and thus not protected by the attorney-client privilege. Queen’s University petitioned the Federal Circuit for a writ of mandamus, and the Court granted review on the issue of whether a patent-agent privilege existed.

Overcoming the presumption against recognizing new privileges, the Court justified an independent patent-agent privilege. The Court reasoned that the privilege should be recognized in part because patent agents hold unique roles whose activities the Supreme Court has construed as constituting the practice of law, Congress has authorized that practice, and current realities of patent litigation support the privilege. However, the Court held that the privilege extends only to communications reasonably necessary and incident to prosecuting patents before the USPTO. The Court remanded for the district court to assess the asserted privilege claims under the scope of the privilege set forth in the Court’s opinion.


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