Patent Agent Privilege: Another Case Recognizes its Limited Scope

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.

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.

15 thoughts on “Patent Agent Privilege: Another Case Recognizes its Limited Scope

  1. 2

    Inasmuch as communications related to a validity opinion might reasonably be in contemplation of a petition to the Patent Trial and Appeal Board (PTAB) for Post Grant Review (PGR) or Inter Partes Review (IPR), perhaps those communications should also be within the scope of patent agent privilege.

    1. 2.1

      Well, to be picky, it wouldn’t be validity it would be patentability. You raise an interesting point though — if I recall correctly patent agents as “practitioners” can practice before PTAB but I don’t recall a precise ruling or case holding the privilege applies there. I’d think it would but don’t recall that.

  2. 1

    [L]imitations on “practice before the Office” that often get overlooked include… non-infringement… opinions…

    Hopefully this issue does not come up often in the context of patent agents. Assessing infringement is the practice of law, and would thus constitute an instance of practicing law without a license if a patent agent did it.

      1. 1.1.1

        Infringement is a question of fact. Even infringement under DOE is a question of fact. Are you practicing the law when you assess a question of fact? For example, are experts practicing the law without a license if they are assessing a question of fact in a testimony?

        1. 1.1.1.1

          Claim construction is a question of law, and one cannot get to infringement without first passing through claim construction. More to the point, however, I was responding specifically to Prof H’s mention of noninfringement opinions. A patent agent signing such an opinion letter is setting up for an unauthorized-practice-of-law problem. If you doubt me, call the loss prevention dept at your malpractice insurance carrier and ask what they think about patent agents signing noninfringement opinions.

          1. 1.1.1.1.1

            Greg, I doubt that the problem of a patent agent signing a non infringement opinion is unauthorized practice of law. It is not for a court, and it is not an instrument. However, it is a useless opinion. I have no idea why a client would want one.

            1. 1.1.1.1.1.1

              Maybe Greg can supply a proper citation for his insistence that any ‘practice of law’ is somehow de facto improper for a patent agent.

              Clearly, Greg does not know that patent agents are authorized TO practice certain items of law.

              The question is NOT whether an item IS a “practice of law.”
              The question is whether an item, being a “practice of law,” is nonetheless an item concerned with whether or not the action is related enough to actions to which the patent office is concerned with.

              Mind you, I am not saying that clearance opinions or non-infringement opinions qualify or not — all that I am pointing out is that Greg is being far too glib in his edicts.

              For someone on the other side of the blog that is mouthing that certain posters are too glib, Greg’s hypocrisy is directly at point.

            2. 1.1.1.1.1.2

              In Florida Bar v. Sperry, 140 So. 2d 587, 596 (Fla. 1962) the Florida Supreme Court enjoined patent agents against the following, as each constituting the unauthorized practice of law in Florida:

              1. using the term “patent attorney” or holding himself out to be an attorney at law in this state in any field or phase of the law (we recognize that the respondent according to the record before us has already voluntarily ceased the use of the word “attorney”);

              2. rendering legal opinions, including opinions as to patentability or infringement on patent rights;

              3. preparing, drafting and construing legal documents;

              4. holding himself out, in this state, as qualified to prepare and prosecute applications for letters patent, and amendments thereto;

              5. preparation and prosecution of applications for letters patent, and amendments thereto, in this state; and

              6. otherwise engaging in the practice of law.

              Sperry obtained certiorari review of the Florida ruling, arguing that the Florida injunction intruded on Congress’ power to regulate practice before the USPTO. The Supreme Court agreed ( Sperry v. Florida Bar, 373 U.S. 379, 404 (1963)) that Florida had a right to regulate in this area, but the injunction’s breadth did indeed intrude on areas that belong exclusively to federal jurisdiction. The Court remanded the case back to Florida to craft a narrower injunction.

              On remand, the Florida Supreme Court concluded

              In conformity with the opinion and mandate of the Supreme Court of the United States entered in this cause the opinion and decision of this Court is vacated and its effect modified so as not to prevent the respondent Sperry from (a) advising, assisting and representing applicants before the United States Patent Office in the preparation and prosecution of their applications for patents, and performing and doing all acts and things to the full extent permitted to be done by registered agents as provided under the Rules of Practice of the United States Patent Office in patent cases; (b) rendering opinions as to patentability insofar as the giving of such opinions may be necessary to advise and assist applicants in the preparation and prosecution of patent applications and amendments thereto; and (c) holding himself out to the public as qualified to perform the acts set forth in (a) and (b) above.

              Except as modified by this order the opinion and decision of this Court heretofore rendered in this cause shall remain undisturbed.

              Florida Bar v. Sperry, 159 So. 2d 229, 231 (Fla. 1963)

              In other words, the Florida injunction against patent agents opining on infringement as a species of unauthorized practice of law remains in effect. Obviously, each state is permitted to set its own standards on this point, but I am not aware of any state that has affirmatively disagreed with Florida’s determination on this point.

              1. 1.1.1.1.1.2.1

                You have assumed your own conclusion and glibly presumed (without evidence) that the ‘opinion’ piece is untethered to the portion that the Supreme Court DID overturn.

                One might view that as a misrepresentation of the holding of the case that you cite to.

              2. 1.1.1.1.1.2.2

                Greg, do you realize the number of books, publications, or podcasts would be deemed unlawful practice of the law if this injunction was still good law? Do you realize how silly the extension of this definition of unlawful practice of law to journalists or political commentators would be? Do you realize that, according to this injuction, witness experts would routenely engage in the unlawful practice of law? If you want to convince me, show me a case where a non attorney has been enjoined not to express how a patent claim would be interpreted, or that a device infringes a patent claim.
                That being said, I agree that an opinion letter from an agent is not considered a qualified opinion by a court (regardless of the content), and such an opinion has no use or value in a court.

                1. PiKa,

                  Your post does recall a tangent view (mirrored in some recent comments on the main blog), in that even postings ON a blog — by attorneys engaging in advocacy may be deemed to be actual practice of law (and in those other discussions, the focus then is on the ethical considerations of such practice of law and active advocacy in the modern day foes of blogging).

                2. Very good point. Advocacy is not even about the law as it stands. That cannot be confused with practice of the law.

                3. PiKa, obviously “modern day foes” has a type – it should read “modern day fora.”

                  Notwithstanding that, whether or not advocacy is about the law as it stands MISSES the point about just WHO is doing the advocating.

                  There is a HUGE difference and — point blank — if you are an attorney AND you are advocating ON legal matters, then you have ethical constraints that non-lawyers simply do not have.

                  As attorneys – precisely because we are attorneys – there are limits on our advocacy.

                  THIS BLOG attempted to liberate this ethical constraint to some degree by having a rule that one must only post in their personal opinions.

                  That rule applies to ALL posters (even if an possible reason was to liberate attorneys).

                  The problem of course, is that it is a toothless rule.

                  I myself personally affirmed directly to Prof. Crouch and on this blog that ALL of my posts conform to that rule.

                  Note that such as Greg “I Use My Real Name” DeLassus purposefully misrepresents a factual situation in his attempt to besmirch me.

                  The ethical mishap – on the part of Greg – should be abundantly clear.

                  But as I have said, the rule of this forum has long been toothless.

                  Say “le Vee.”

    1. 1.2

      Assessing infringement is the practice of law,

      As a blanket statement, this – in and of itself – is NOT enough to preclude the practice by a patent agent.

      I AM surprised that Prof. Hricik may think otherwise.

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