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Federal Circuit Recognizes Patent Agent Privilege for Non-Attorneys

On March 7, 2016, the Court of Appeals for the Federal Circuit issued a mandamus decision that recognized a “patent agent privilege” protecting communications with non-attorney patent agents. In re Queens University, No. 15-145 (Fed. Cir. March 7, 2016).

[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.

This patent-agent privilege, however, only extends to "communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office" which may include, but is not limited to, preparing and prosecuting patent applications, drafting an amendment or response to an Office action, and appeals or any other proceeding before the Patent Trial and Appeal Board. See 37 C.F.R. § 11.5(b)(1). Communications between non-attorney patent agents and their clients in furtherance of the performance of these tasks, or “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” receive the benefit of the patent-agent privilege.

A dissent by Judge Reyna noted a presumption against the creation of new privileges, and concluded that an attorney-client-like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency.