by David Hricik, Mercer Law School
In Luv N’ Care, Ltd. v. Williams Intellectual Prop., Civil Action No. 18-mc-00212-WJM-KLM, 6-7 (D. Colo. Jun. 12, 2019) (here) the court addressed a claim of privilege over communications between client and a patent agent. The case is a reminder that, while the privilege exists, its scope is limited.
Specifically, the court stated that, although federal courts had uniformly followed the Federal Circuit’s 2-1 decision recognizing the privilege exists, they had also recognized it had substantial limitations. The court stated that the scope of the privilege was limited to communications within the concept of “practice before the Office,” which it then defined:
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. Registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding
before the Office involving a patent application or patent in which the practitioner is authorized to participate.
Thus, the court reasoned, “communications which are not ‘reasonably necessary and incident to the preparation and prosecution’ of patent proceedings before the USPTO are not protected by the patent-agent privilege. For example, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not reasonably necessary and incident to the preparation and prosecution of patent applications, and thus are not protected by the privilege.” Id.
In my experience, the limitations on “practice before the Office” that often get overlooked include: (1) non-infringement or validity opinions — as the court recognized — but also (2) assignments. Another limitation is that a state court may not follow the Federal Circuit’s lead and the Luv N’ Care court even suggested that regional circuit law, not Federal Circuit law, would control.