Georgetown Law
Technology Review

On February 23, 2018, the state of Texas became the most recent state to recognize an evidentiary privilege for patent agent communications with clients. The Supreme Court of Texas, in In re Silver, extended the existing attorney-client privilege doctrine to include communications with a patent agent, reasoning that patent agents, acting within the scope of their practice before the U.S. Patent and Trademark Office (USPTO), are practicing law.1See In re Silver, No. 16-0682, 2018 WL 1022470, at *6 (Tex. Feb. 23, 2018).

Patent agents are authorized to practice before the USPTO, and, for purposes of prosecuting patents for clients before the USPTO, patent attorneys and patent agents can provide all the same services.2See 37 C.F.R. § 11.5, 11.6 (2012). Moreover, the use of patent agents instead of patent attorneys has become more popular as the cost for lawyers has risen. Patent agents are also required to pass the patent registration exam, just as patent attorneys must.3See id. § 11.7. Thus, patent agents offer similar qualifications at a lower cost, and clients are welcome to hire them to prosecute their patents at the USPTO.

Because of a patent agent’s role in prosecuting patents, communications between a patent agent and a client can be highly revealing. In In re Silver, the trial court granted the motion to compel production of all the communications, unless they were a result of the patent agent acting under an attorney’s direction.4See In re Silver, 2018 WL 1022470, at *1. The trial court’s ruling, if left intact, would have been extremely problematic, chilling recorded conversations between patent agents and clients and forcing patent agents to enlist the help of an attorney when desiring confidential communications.5See id. Treating patent agents the same as patent attorneys therefore makes sense, given their unique role in the patent system.

The In re Silver ruling falls in line with that of other courts. The U.S. Court of Appeals for the Federal Circuit—the appeals court for those cases where patent issues fall at the heart of the matter—recently spoke on the issue as well. In In re Queens University at Kingston, the Federal Circuit recognized a patent agent-client communications privilege for those times when the patent agent is acting in the scope of their duties as defined by 37 C.F.R. § 11.5, or those communications which are “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the USPTO” in which the agent is authorized to participate.6See In re Queens University at Kingston, 820 F.3d 1287, 1301 (Fed. Cir. 2016). The Federal Circuit reasoned that patent agents play a unique role in the patent system, one that is recognized and characterized by Congress and the Supreme Court of the United States as the practice of law, and whose current realities favor recognizing this new privilege.7See id. at 1295.

Prior to this decision by the Federal Circuit, many district courts were split as to whether a patent agent privilege existed under the Federal Rules of Evidence. For instance, in the United States District Court for the Central District of California, the court found that a patent-agent privilege existed, noting that without such a rule, the role of patent agents would be greatly frustrated.8See Buyer’s Direct Inc. v. Belk, Inc., No. SACV 12–00370–DOC, 2012 WL 1416639, at *3 (C.D. Cal. Apr. 24, 2012). But, the United States District Court for the District of Massachusetts found otherwise, only protecting patent-agent communications with clients if they were made to obtain legal advice from an attorney.9See Agfa Corp. v. Creo Products, Inc., No. Civ.A. 00-10836-GAO2002, WL 1787534, at *3 (D. Mass. Aug. 1, 2002).

However, this split remains in the states, and not every state has ruled on the matter, and there are still some states that do not recognize the privilege; because the majority of cases involving patents, and patents agents, fall under the jurisdiction of the Federal Circuit, not every state has had the opportunity to speak on the matter and its application within their evidence laws. In fact, In re Silver only reached the Texas Supreme Court because the patents played a tangential role in the contract dispute between the parties.10See In re Silver, 2018 WL 1022470, at *1. This case nevertheless represents the rising role that patent agents play in the USPTO and another step forward in continuing their ability to perform their attorney-like role with a veil of privilege, at least in Texas.