June 2016
CIPA Journal
Authored by Erin M. Sommers, Ph.D. and Anthony C. Tridico, Ph.D.
In the United States, the attorney-client privilege is one of the most guarded evidentiary privileges. It allows clients to confidentially share information with their counsel to obtain legal advice without fear that those communications will be discovered in subsequent litigation. Patent applicants expect that same level of freedom when consulting with their prosecuting attorneys to obtain strong patent protection. Until recently, however, U.S. district courts were split on whether communications between U.S. patent agents–non-lawyer professionals registered to prosecute patents before the U.S. Patent and Trademark Office (USPTO)–and their clients were privileged and immune from discovery.1 This disparate treatment for rigorously qualified patent agents left some to wonder: what are we, chopped liver?
In March, the Federal Circuit responded with a resounding "No!" when it recognized an independent U.S. patent agent-client privilege in In re Queen’s University at Kingston.2 There, Queen’s University asserted that Samsung Electronics Co., Ltd. infringed three of its patents.3 During discovery, Queen’s University asserted privilege over and withheld communications with its U.S. patent agents.4 Samsung challenged Queen’s University’s actions and moved the district court to compel the disclosure of those communications.5 The district court for the Eastern District of Texas granted that motion.6 The district court reasoned that because the U.S. patent agents were not attorneys, the communications were not protected by the attorney-client privilege and that no separate patent agent privilege existed.7 Queen’s University petitioned the Federal Circuit for a writ of mandamus directing the district court to withdraw its order compelling the production of the patent agent-client communications.8
The Federal Circuit granted Queen’s University’s petition and held that several factors outweighed the presumption against the recognition of new privileges. The Court reasoned that the privilege should be recognized in part because:
Notably, that privilege, however, extends only to communications reasonably necessary and incident to prosecuting patents before the USPTO.10
For companies who choose to engage U.S. patent agents instead of patent attorneys to prosecute their U.S. patents, this decision should offer comfort that their confidential communications will not be subject to discovery should any downstream patent litigation occur in U.S. courts. Yet patent applicants must remain cognizant of limitations on that privilege. In particular, the Federal Circuit circumscribed the scope of the patent agent-client privilege to include only communications that are in furtherance of Congressionally mandated tasks:
"which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding[s] before the Office involving a patent application or patent in which the practitioner is authorized to participate."11
Thus, to the extent that a client’s correspondence with its patent agents veers away from those areas, both the client and patent agent should take care not to reveal any information the client may not want to be discovered in a later litigation.
It is rational to argue that the Court’s reasoning in In re Queen’s University also provides a basis to protect foreign practitioner-client communications that have historically been subject to discovery. For example, the Federal Circuit relied on the "unique roles of patent agents" and Supreme Court precedent indicating that "patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself."12 IP stakeholders have similarly recognized that non-attorney, IP practitioners provide legal advice and have practices akin to attorneys.13 In particular, WIPO acknowledged that patent law "is a unique field where legal understanding and technical/scientific understanding go hand in hand."14 Because not all attorneys have the requisite technology background, a separate profession for patent agents or IP advisers has arisen.15 Those practitioners "give advice and [] assist inventors and applicants to obtain and maintain patents."16 They may also assist a patentee "to maintain and enforce his right." Such tasks appear to be within the ambit of the practice of law that the Supreme Court specifically recognized and the Federal Circuit used as a basis to support a separate patent agent-client privilege.17
In addition, the Federal Circuit also relied on Congress’s authorization of patent agents to practise before the USPTO. By analogy, European and other IP professionals are authorized to practise either before the EPO or within their own countries. Such professionals are often required to submit to extensive examinations to become registered European patent attorneys or patent agents in their native countries.18 And many countries have formal registration processes, and registered practitioners must comply with ethical obligations. Such requirements are comparable to those that the Federal Circuit cited in support of its patent agent–client privilege.19
Perhaps the most compelling reason to recognize a foreign practitioner-client privilege based on In re Queen’s University is the Federal Circuit’s recognition that:
"[a] client has a reasonable expectation that all communications relating to ‘obtaining legal advice on patentability and legal services in preparing a patent application’ will be kept privileged."20
In the increasingly global landscape of IP protection, stakeholders have consistently recognized the need to be able to have frank discussions with their IP professionals to secure strong IP protection and effectively enforce those IP rights.21 To allow a U.S. patent agent-client privilege but not a similar foreign practitioner-client privilege undermines a global client’s ability to freely share information to secure strong global IP rights from the very practitioners who are best suited to assist in obtaining those rights. Thus, U.S. district courts could find a foreign practitioner-client privilege based on the same policy considerations undergirding the Federal Circuit’s analysis in In re Queen’s University.
1 In re Queen’s Univ. at Kingston, No. 2015-145, 2016 WL 860311, at *3 n.1 (Fed. Cir. Mar. 7, 2016).
2 Id. at *13.
3 Id. at *1.
4 Id. at *1.
5 Id.
6 Id.
7 Id.
8 Id.
9 Id. at *6.
10 Id. at *12.
11 In re Queen’s Univ., 2016 WL 860311 at *11-12.
12 Id. at *6-7.
13 World Intellectual Property Organization Standing Committee on the Law of Patents, The Client-Attorney Privilege, SCP/13/4, ¶ 29 (Feb. 25, 2009), ¶¶ 46-53.
14 Id. ¶ 47.
15 Id.
16 Id.
17 Compare id., with In re Queen’s Univ., 2016 WL 860311, at *6–quoting Sperry v State of Fla. ex rel. Florida Bar, 373 U.S. 379, 383 (1963).
18 Regulation on the European qualifying examination for professional representatives–Official Journal EPO 2/2014–http://www.epo.org/law-practice/legal-texts/official-journal/2014/etc/se2/2014-se2.pdf.
19 In re Queen’s Univ., 2016 WL 860311, at *8-9, *11.
20 Id. at *9.
21 WIPO, supra note 13, ¶ 5; Summary of Roundtable and Written Comments: Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients, USPTO, http://www.uspto.gov/sites/default/files/documents/Summary%20of%20Privileged%20Communication%20Roundtable.pdf (last visited Apr. 26, 2016) at 5.
Originally printed in CIPA Journal in June 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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