Federal Circuit Recognizes Patent Agent Privilege

by Dennis Crouch

In re Queens University (Fed. Cir. 2016)

In an interesting and important mandamus ruling, the Federal Circuit has ordered the district court to withdraw its order compelling discovery of communications with non-attorney patent agents.  The decision here recognizes “patent agent privilege”

[W]e 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.

The court, however, includes the important limitation that the privilege only extends to the extent that communications fall within the patent agent’s scope-of practice as “authorized by Congress.”  On this point, the appellate panel quotes 37 C.F.R. § 11.5(b)(1):

Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.

On remand, the parties in the dispute will likely now fight over whether the agent-in-question’s activities fell within these limits on practice.

Going forward, this case also offers an important next step in the continued rise of stature of patent agents both within law firms and corporate structures.

This is an important case and I’m betting that David Hricik will write further on the topic

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

32 thoughts on “Federal Circuit Recognizes Patent Agent Privilege

  1. On page 6 of Reyna’s dissent he asserts: “Further, any purported need for an agent-client privilege is greatly minimized by the fact that patent agents and their clients have the opportunity to delete and destroy emails and other correspondence in the period of time between when they are exchanged and when they would be sought in litigation.”

    He may not be aware of the SOL in 37 CFR 11.34(d) concerning complaints by anyone to the PTO that might institute a disciplinary proceeding, namely, “No complaint shall be filed more than ten years after the date on which the misconduct forming the basis for the proceeding occurred.” Worse, this could be tolled until the misconduct is discovered.

    A few years ago in a public forum, Mr. Covey, director of the PTO OED advised patent attorneys to keep files for ten years to be able to defend themselves.

    Does anyone have any contrary advice?

    1. Don’t Attorneys and their clients have the same ample time period to destroy evidence that Reyna suggests Patent Agents and their clients have?

      1. Les,

        Yes they do, but Mr. Covey suggests they don’t until 10 years after any activity that might give rise to a complaint (same applies to agents).

  2. Interesting that the list of proceedings to which the privilege extends does not include IPRs. Now why?

    I assume is that an agent is not qualified to give an opinion on the validity or infringement of an issued patent.

    Moreover, consider that one really has to understand the law of infringement in order to draft good claims. Also consider that validity and patentablity are indistinguishable.

    What kind of lines are we drawing here? They make no sense. In day to day practice, an agent will be asked by their client about infringement or validity issues, especially in corporate practice.

    We need to go all in and make an agent competent to give opinions on validity or infringement, or not recognize any privilege at all. If they are authorized to handle IPRs, their representation needs to be privileged.

    1. Ned – I am compelled to remind you that once a granted patent has been initiated, it no longer has the status (nor all of the sticks in the bundle of property rights) of a granted patent.

      You are back into the realm of the Office.

      1. anon, you do know that a patent remains enforceable while in reexamination and in an IPR, and that patent term is wasting.

        You cannot be serious when you suggest that a patent become a non patent when a reexamination is invoked. At this shows to me is that you might be gullible and really buy into the pablum put out by the PTO and its ally the Federal Circuit.

        BTW, there is no way to rescue the Federal Circuit by better appointments. We desperately need to deauthorize that court from having exclusive jurisdiction over patent matters.

        1. IPR, Ned – please pay attention.

          And note too the “deal” that is there for those who allow publication prior to grant in the normal course of prosecution – your attempt to draw a line fizzles.

          And your “de-authorization” won’t help, as it does not address the problem of the brow beatings from above.

          1. anon, I think the Supreme Court could do a better job, of course. They are helped by a genuine split in the circuits such that arguments pro an con are fleshed out. Now, at times they get real debate from the Federal Circuit, but only when that court takes issues en banc. But on a daily the Feds commit mistakes and when they do, it is generally not in favor of patent owners. It is amazing that we even have jobs anymore.

            The Supreme Court does not have the time in the day to deal with this problem child. We need to fix this.

            1. The Supreme Court trades off its “genuine split” with the fact that it itself feels no compunction about the separation of powers or ig noring the plain words of Congress.

            2. Further Ned – a simple and direct question for you:

              After the initiation step of an IPR, does the granted patent still have all of the sticks in its bundle of property rights?

              We BOTH know the answer to that question, and yet, it is only you (of us two) that has steadfastly REFUSED to accept the impact of that answer.

                  1. Dennis, the argument seems to center on whether patents are privileges or property (vested rights.) A privilege can be revoked by the government without a trial in a court — as a administrative matter. A vested right cannot, except upon proof in a court of law that the right was issued in excess of the statutory authority, where there is right to a jury trial on disputed facts.

                    In California, driving licenses are revoked on authority of a police officer without his even being required to give a reason. The driver has recourse only to an administrative hearing.

                    In contrast, if the court wants to fine the driver for an infraction of a statute, the driver has a right to a day in court and to a jury.

                    Privileges vs. Legal Rights.

                    Now if a patent was a revocable privileged, the government would not even be required to give the patentee compensation for a taking. Thus, the government could infringe with impunity.

                    There are consequences to a holding that patents are public rights.

                  2. Or maybe the good Professor will answer the simple and direct question:

                    After the initiation step of an IPR, does the granted patent still have all of the sticks in its bundle of property rights?

                    I just checked again: the AIA did not change the status of property rights for a granted patent.

                    (your “vesting change” is far too big an elephant to hide in the mouse hole of what a patent as property means by statute.)

                  3. No answers from either Ned or Prof. Crouch….

                    Why am I not surprised?

                    (This is a really easy question, but has some rather important consequences)

                  4. anon, before we look at whether a stick is no longer there, what stick, what exclusive right, is no longer in the bundle if the IPR is instituted?

                  5. Ned,

                    Perhaps the most prominent is the clear and convincing presumption of validity.

                    After that, the point that you have no amendment of right and yet the BRI (as if you are undergoing examination “fresh”) is in play.

                    As I have mentioned to you (without you bothering to respond In a meaningful way), after initiation, you are back in the Office. You really need to focus on that critical moment before you are back int he Office. After that point, you really do not have a patent property anymore.

            3. “But on a daily the Feds commit mistakes and when they do, it is generally not in favor of patent owners.”

              Lol wut?

              “It is amazing that we even have jobs anymore.”

              Lol wut?

  3. The decision doesn’t state so explicitly, but from the file history of the lowest-numbered patent at issue, it appears that the agents in question are domiciled in Canada but licensed before the USPTO. Whether or not they are licensed directly before the USPTO as US citizens, or were allowed to take the USPTO exam as “foreigners” on the basis of licenses to practice before CIPO is unknown (CIPO’s site does not provide a complete list of licensed practitioners) but of no import. What *is* clear is that they’re not licensed as lawyers in Canada or in the USA.

    Consequently, this panel decision establishes that there is an patent agent privilege for US patent agents representing clients before the USPTO, to the limited extent set forth by the panel. Several interesting questions remain open, however:

    (1) Would it matter if the individuals were also licensed as lawyers in Canada, but not in the USA, so that they are recognized by the USPTO as agents but not attorneys? In such a case, would the broader privilege accorded to lawyers be recognized, given that the individuals’ communications with their clients in Canada would be protected by attorney-client privilege under Canadian law?

    (2) Will the CAFC be willing to take the next step and recognize privilege for communications between foreign patent practitioners, who in their own jurisdictions are often referred to as attorneys and are according such privilege? IIRC, the district courts have split on this question, with some taking the mistaken and myopic view that the rest of the world uniformly operates under the US model and therefore there’s no privilege and shouldn’t be any privilege for any foreign patent practitioner who isn’t a lawyer.

    1. Re (1) – I don’t know about attorneys from foreign jurisdictions in US litigation [if they do get attorney-client privilege, im sure the two privileges would overlap; since attorney-client is broader in scope – it will be more robust].

      Re (2) I dont think the CAFC is willing to go that far because it would be outsode the statute on this one – the privilege is derived by congressional action (statute) authorizing patent agents to practice law before the PTO (and only to that).

      However, that said – it probably depends on (1) above because if foreign jurisdictions decisions as to who are considered attorney’s are respected in US courts then maybe they should receive attorney-client privilege [but not under the patent agent – client privilege doctrine].

      That said, I’m sure someone can answer (1) for us.

      1. The only problem with that is that well over 90% of foreign patent attorneys are not considered to be lawyers in their home countries.

    2. Dan,

      Along the same lines, one argument in favor of extending privileges is comity. At the time there was no agent-client privilege in Canada, but I saw no mention of this.

      For an update (the latest I can find), from Oyen Wiggs Green & Mutala LLP (http://www.patentable.com), a 9 October 2015 article by Roni M. Jones, “Bill C-59 provides statutory privilege for confidential communications between patent and trademark agents and their clients. Bill C-59 received royal assent on June 23, 2015 and comes into effect June 23, 2016. The new statutory privilege will also apply retroactively to protect communications that are made before June 23, 2016 but will not apply in actions or proceedings commenced before June 23, 2016.”

    3. Whether or not they are licensed directly before the USPTO as US citizens, or were allowed to take the USPTO exam as “foreigners” on the basis of licenses to practice before CIPO is unknown

      Canadian patent agents can represent Canadian clients before the USPTO. I believe that it is a consequence of NAFTA.

      MPEP 402: A power of attorney or authorization given to a registered Canadian patent agent, to be valid, must be given by the applicants, all of whom are located in Canada. See 37 CFR 11.6(c).

      See also the OED bulletin on general requirements for admissibility
      link to uspto.gov :

      An applicant who is not a United States citizen and does not reside in the U.S. is not eligible for registration except as permitted by 37 CFR § 11.6(c). Presently, the Canadian Intellectual Property Office is the only patent office recognized as allowing substantially reciprocal privileges to those admitted to practice before the USPTO. The registration examination is not administered to aliens who do not reside in the United States.

      Regarding the patent-attorney / client privilege, the EPC 2000 introduced a new Rule 153 link to epo.org implementing Art. 134(1)(d) EPC:

      (1) Where advice is sought from a professional representative in his capacity as such, all communications between the professional representative and his client or any other person, relating to that purpose and falling under Article 2 of the Regulation on discipline for professional representatives, are permanently privileged from disclosure in proceedings before the European Patent Office, unless such privilege is expressly waived by the client.
      (2) Such privilege from disclosure shall apply, in particular, to any communication or document relating to:
      (a) the assessment of the patentability of an invention;
      (b) the preparation or prosecution of a European patent application;
      (c) any opinion relating to the validity, scope of protection or infringement of a European patent or a European patent application.

      Whether an EPO implementing regulation could actually be determinant on foreign authorities, let alone European ones, remains to be seen. It appears that it was introduced with US jurisdiction in mind. Dirk Visser mentions as a source for the language used Bristol-Myers-Squibb v. Rhône-Poulenc-Rorer case (Southern District of New York, 19 April 1999).

  4. “Going forward, this case also offers an important next step in the continued rise of statute of patent agents both within law firms and corporate structures.”

    Is “statute” the word you meant to use?

  5. Hricik was quoted in footnote 5 on page 10 of Reyna’s (Newman-esque) 27 page dissent:

    See, e.g., David Hricik, Patent Agents: The Person You Are, 20 Geo. J. Legal Ethics 261, 269 (2007) (“Patent agents are often employed by law firms that do not limit their practice to patent prosecution.”). Query whether a patent agent may direct a patent lawyer, or own an enterprise limited to USPTO practice that employs patent lawyers? Does not this new privilege create a slippery slope toward the practice of law being treated not as a profession, but as a mere trade? These questions have not been explored by the court, but should they be?

    Maybe U.S. patent agents should consider requesting a salary increase to reflect their new status.

    1. Some states allow patent agents to be partners in law firms, whilst others do not. Moreover, there are often conditions attached, and those also vary by state. It is self evident that where a patent agent can be a partner he or she can also direct attorneys.

      Specifically, in the Washington DC metro area, i.e. the area that surrounds the PTO, a patent agent can be a law firm partner in DC and Virginia, but not in Maryland. And yes, DC imposes entirely different conditions from Virginia.

      In DC any professional can be a partner, but all partners must sign an agreement binding over the non-attorney to obey the DC bar rules, PLUS the business of the firm must be the practice of law. Note that it does not have to be limited to a PTO practice.

      It would seem to me that the only other professionals who could provide services to outside clients under this rule ought to be those who also practice law, i.e. patent agents. I am aware of at least one such firm, although there the patent agent was also registered in Korea, so presumably brought in Korean clients.

      What is more puzzling to me is that some firms have used this same rule for multidisciplinary law/accounting practices. I have difficulty understanding how that could be legal, as the rule does NOT say that the business of the firm can be accounting?

      As to Virginia, the firm has to be limited to PTO practice if any of the partners is a patent agent and not an attorney. I have come across this too.

      For full disclosure, I am a patent agent and live in Maryland (where I could not be a law firm partner), but work in DC and used to work in Virginia. And no, I am not a partner. The main thing needed is still a book of work, when all said and done.

      1. Oh, and Mickey Mouse, or whatever your name is, surely you ought to realise that patent agents are bound by a code of professional responsibility that is almost identical to most state bar rules. But, of course, you only consider us to be tradesmen.

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