EvidenceProf Blog

Editor: Colin Miller
Univ. of South Carolina School of Law

Tuesday, March 22, 2016

Federal Circuit Creates New Patent-Agent Privilege In Samsung Case

On March 7th, the United States Court of Appeals for the Federal Circuit issued a groundbreaking opinion: In Re Queen's University at Kingston, 2016 WL 860311 (Fed. Cir. 2016). In that opinion, the Federal Circuit created a brand new privilege: the patent-agent privilege

According to the opinion,

Queen's University founded PARTEQ Innovations in order to commercialize intellectual property arising from university-generated research. Queen's University is the assignee of U.S. Patent Nos. 7,762,665; 8,096,660; and 8,322,856 (the “patents-in-suit”), and PARTEQ is the exclusive licensee. The patents-in-suit are directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user-for example, pausing or starting a video based on a user's eye-contact with the device.


Queen's University filed a complaint alleging patent infringement in the Eastern District of Texas against Samsung. In particular, Queen's University alleged that Samsung's SmartPause feature—which is in many of Samsung's newest devices—infringed the patents-in-suit.

During discovery, Queen's University refused to produce certain documents, claiming that they related to communications with its patent agents. Subsequently, however,

the magistrate judge granted Samsung's motion to compel, finding that the communications between Queen's University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist.

The Federal Circuit disagreed, primarily because non-attorney agents can engage in the practice of law before the United States Patent and Trademark Office. According to the court,

To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to "obtaining legal advice on patentability and legal services in preparing a patent application" will be kept privileged....Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment. Indeed, if we hold otherwise, we frustrate the very purpose of Congress's design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.

Later in the opinion, the court fleshed out the scope of the privilege by reference to a dichotomy:

Communications between non-attorney patent agents and their clients that are 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....

Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, 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 or other proceeding before the Office."




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Now that I know the difference between patent prosecution and patent litigation, this case makes a lot more sense. thank you Google.

Posted by: Elm | Mar 23, 2016 5:45:37 AM

Now O'Conner's dissent in Swidler & Berlin is prophetic. Because the attorney-client privilege becomes a one-way ratchet. It can be expanded anytime that Congress wants to expand it simply by creating an "attorney equivalent" but if the Executive wants to diminish the privilege that is error.

The majority said in Swidler that "uncertain privileges are disfavored." I can't see how allowing Congress(!!) to expand the privilege willy nilly makes it more certain.

Posted by: Daniel | Mar 23, 2016 9:22:09 AM

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