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.