Patent Agent-Client Privilege: A SmartClause?

By Annie Dike, Esq.

Turns out, you can now tell your patent agent anything. Well, almost anything. In a recent 2-1 split opinion from the Federal Circuit, a new attorney-client-like privilege has been created between a patent applicant and his patent agent.

Interestingly, the opinion arises out of a closely-watched smartphone patents case between Queen’s University, a research facility in Ontario, Canada, and Samsung involving “SmartPause”─a technology that can actually sense when your eyes leave the screen of your phone and pause the video you were watching until your eyes return ─ a kind of creepy yet cool feature. Many patent attorneys’ eyes were on this opinion, however, not for a ruling on the patent issue but, more specifically, for a ruling on the privilege issue. Prior to this opinion, the District Courts had been split as to whether a privilege existed between registered patent agents and their clients. When Queen’s University refused to turn over some documents that contained communications between its employees and its patent agent, the District Court found no privilege existed and ordered Queen’s to turn over the records. But Queen’s wasn’t having it. A mandamus petition followed and all eyes were on the Federal Circuit as they took on this debated privilege issue as a matter of first impression.

In the majority opinion, the Federal Circuit analogized patent agents to attorneys based on their unique ability to present patent cases before the USPTO, Congress’s recognition of their authority to act, as well as SCOTUS’s characterization of their activities at the practice of law. The Court also noted a finding of no privilege would undermine the intent of Congress in affording patent applicants the seemingly equivalent choice of going before the USPTO with an attorney or a registered patent agent. For this reason, the Federal Circuit fell in favor of finding a privilege, but with a catch. The privilege only applies to those communications that are “reasonably necessary and incident to the prosecution of patents before the Patent Office.” The court gave an example of a patent agent discussing the validity of another patent as a communication that would not fall under the privilege. We have to wonder whether this “reasonably necessary and incident” test will prove to be a murky standard over time.

In a dissenting opinion, one Justice expressed concern over the majority’s opinion, finding none of the factors that support creation of a privilege to be present in this matter. Rather, Justice Jimmie V. Reyna explained, “In the absence of a showing that there is a real need for a new privilege to be created, the need to ascertain the truth should prevail.”

A freshly created patent agent privilege has just emerged and will begin to fight its way into being before the District Courts. The first test of this new patent agent privilege will likely occur in the Queen’s University v. Samsung case as the Federal Circuit did not find the privilege applied in that matter. The privilege itself was simply recognized and rudimentarily defined. The Federal Circuit left the task of determining whether the privilege actually applies to Queen’s University’s communications with its patent agent to the District Court below on remand. Many eyes will remain on this case as it will mark first scrutiny of the new patent agent-client privilege.

Soon we will see whether this freshly sculpted privilege will prove to be a muddy mess or a SmartClause. Where do you stand? Are you in favor of the Federal Circuit’s newly defined privilege? Blink once for yes. Twice for no.



Annie Dike, Esq.

As a former trial and litigation attorney, Annie Dike has a keen eye for expert evidentiary issues and a clear voice for practical solutions.  Annie is a published author of both fiction, non-fiction, and a comprehensive legal practitioner's guide to hourly billing published by LexisNexis. Annie graduated from the University of Alabama School of Law cum laude.  While in law school, she served as Vice President of both the Bench and Bar Legal Honor Society and the Farrah Law Society and was a member of the Alabama Trial Advocacy Competition Team as well as Lead Articles Editor of The Journal of the Legal Profession.  Ms. Dike has published articles in The Alabama Lawyer and DRI MedLaw Update and has spoken on numerous legal issues at various conferences nationwide.

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