United States: Texas Supreme Court Holds Patent Agent Communications May Be Privileged

Communications between a client and registered patent agent who is doing authorized legal work for the client may be protected as privileged, the Texas State Supreme Court recently ruled on a petition for writ of mandamus.1 Registered patent agents qualify as "lawyers" for purposes of Tex. R. Evid. 503 because they are authorized to practice law within the scope of their practice before the United States Patent and Trademark Office (USPTO). Accordingly, Texas' lawyer-client privilege extends to a patent agent's communications with a client relating to USPTO activities.

In the underlying contract dispute about a patent purchase agreement, Defendant sought production of 300 emails between the Plaintiff inventor and his registered patent agent (not a licensed attorney) who represented him before the USPTO. The inventor refused to produce the emails, claiming protection under the lawyer-client privilege in Tex. R. Evid. 503 ("Rule 503"). The state trial court compelled production, and after the court of appeals denied relief, the Plaintiff appealed to the Texas Supreme Court which vacated the trial court's order.

The Texas Supreme Court first made clear that its ruling does not create a new patent-agent privilege. Instead, the Court framed the inquiry as determining whether a registered patent agent is a "lawyer" for purposes of the existing lawyer-client privilege under Texas Rule 503(a)(3). Understanding what it means to be a "lawyer" for purposes of Rule 503 required determining: (1) what it means to "practice law" and (2) how one is "authorized" to do so.2

First, the Court stated that the "practice of law" encompasses a "broad range of services" according to its ordinary meaning, and includes exactly the types of activities that the USPTO says patent agents can perform. This includes "preparing... any patent application", "representing a client" in various matters before the USPTO, and giving advice to clients including "the advisability of relying upon alternative forms of protection which may be available under state law." Thus, patent agents participate in many activities that make up the practice of law. To conclude that a patent agent's work is something other than the practice of law when independently performed by a registered patent agent (as opposed to the same services being performed by a patent attorney) would be anomalous, according to the Court.

Second, the Court analyzed the aspect of Rule 503 requiring that the individual practicing law must be "authorized" to do so by a state or nation.3 The Court found that a patent agent, who does not have a license to practice law, is nevertheless engaged in the authorized practice of law before the USPTO by virtue of being registered by the USPTO as a patent agent. By definition, "authorized" conveys a broader meaning than license, and thus, a license is not a prerequisite to a person being classified as a "lawyer" under Texas Rule 503. Because patent agents are authorized to practice law before the USPTO, they fall within Rule 503's definition of "lawyer." As such, patent agent clients may invoke the lawyer-client privilege to protect communications that fall within the scope of patent agent USPTO activities.

The In re Silver holding is consistent with a recent 2016 Federal Circuit holding which recognizes a "patent-agent privilege" to protect communications between a client and a patent agent who is not an attorney during the course of the patent agent's authorized practice before the USPTO.4 Given this, there is a reasonable chance that the numerous states that have an attorney-client privilege rule similar to the Texas rule will, like Texas, recognize some privilege for patent agents performing patent agent activities at the USPTO. However, it is important to realize that thus far the patent agent privilege has been limited to practice before the USPTO, i.e., preparing and prosecuting patent applications and consulting or advising clients in connection with same. Tasks which are not related to USPTO patent prosecution may not fall within the patent agent privilege. Thus, clients that have patent agents involved in, for example, infringement analyses, litigation activities, or licensing should beware that communications involving these tasks may not fall within the privilege. Similarly, communications between a patent agent and a foreign agent relating to foreign patent applications might arguably fall outside the privilege. Therefore, until there is more certainty as to what the privilege does and does not cover, clients relying on patent agents for activities that are not related to U.S. patent prosecution might be best served to ensure that such patent agent communications are conducted under the control or supervision of a licensed attorney.

Footnotes

1. In re: Andrew Silver, Case No. 16-0682 in the Supreme Court of Texas.

2. Rule 503 is entitled ""Lawyer-Client Privilege" and states in part: "A 'lawyer' is a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation." Tex. R. Evid. 503(a)(3).

3. Id.

4. In re Queen's University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

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