Federal Circuit Asked on Mandamus to Recognize Patent Agent Privilege

In In re Queen’s University at Kingston (App. No. 2015-0145), the court yesterday heard oral argument on whether to recognize the patent agent privilege.  The oral argument is here.

Judges Lourie and O’Malley (if I’m recognizing their voices by memory correctly) seemed to believe that the court should recognize the privilege, but judge Reyna was skeptical of using mandamus to reach the issue.

This issue does need resolution by the court.  The amount of money cost fighting over whether this privilege exists is money spent not addressing the merits, and whether this privilege exists comes up fairly frequently (and will more so in future cases, since patenting has become more of an international endeavor since the mid-1990s).  I’ve written about this issue (and other patent agent ethics issues) here.  The petitioner pretty much echoed my argument in the paper!  Hopefully Judge O’Malley will quote me in her decision.

The USPTO also held some roundtables on the privilege (see here).

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

4 thoughts on “Federal Circuit Asked on Mandamus to Recognize Patent Agent Privilege

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    I skim read your 2007 article. I hope you update it someday. What is the status of a patent attorney with out of state clients? I assume they are not quite on par with patent agents, but assignments, for example, could be a problem from a UOPL standpoint. At one time, the PTO did provide an assignment form and one could hide behind that, but no longer. Maybe your next article could include that situation.

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    First, my recollection of US law is that there is a split, with perhaps a majority holding that, if the patent agent is working within the scope of Sperry, there is a privilege. But there is a split and I don’t think it was a huge majority.

    I’m not sure comity would always be the justification — do all foreign countries recognize patent-agent privilege? I don’t know.

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      My question at 1 below also asked about patent attorney-client privilege. More specifically, is the Jack Winter (conduit to the Patent Office) line of cases alive and well?

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    Queens College resides in Ontario, Canada. Samsung’s counsel mentioned international homogenization in passing, but I heard no discussion of comity. I understand that, in Canada, there was no agent-client privilege at least until June this year. Do US courts extend attorney-client privilege based on comity? What about agent-client privilege; I think it exists in Germany?

    From what I know, patent attorney-client privilege in the US is no sure thing. Are there any recent trends?

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