Patent Agent Privilege
In Re: Queen’s University at Kingston, PARTEQ Research and Development Innovations (Fed. Cir. Mar. 7, 2016)
Queen’s University and its partner in commercializing university-developed IP, PARTEQ R&D, are involved in patent litigation in the Eastern District of Texas against Samsung Electronics. The district court had ordered Queen’s University to produce all communications with its non-attorney patent agents. Queen’s University sought a writ of mandamus directing the district court to withdraw its order on the ground that the communication between a client and non-attorney patent agents is privileged.
Looking at precedent and relying heavily on the logic about the status of patent agents in the legal system found in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), the Federal Circuit Court of Appeals held 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.” The scope of the privilege is not unlimited, as the Court held that only communications that are in furtherance of the tasks of a patent agent outlined in 37 C.F.R. § 11.5(b)(1) are covered, but tasks incidental to those goals, such as assessing the validity of a competitor’s patent in contemplation of litigation or sale are not privileged.
For an interesting discussion of the implications and limits of this ruling (and perhaps advice on IPRs not covered), Dennis Crouch’s article on this ruling and the commentary provides good reading. Paul Ackerman over at National Law Review also provides an interesting look at the limits of the ruling.