Federal Circuit Recognizes Patent-Agent Privilege Blakely Patent Agent... · 725 S. BROADWAY #10,...
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725 S. BROADWAY #10, DENVER, CO 80209 | 303–292–1212 | WWW.LAW WEEK ONLINE.COM VOL. 14 | NO. 12 | $6 | MARCH 21, 2016 The Federal Circuit defined the scope of patent-agent privilege as the agent’s ability to practice before the Patent Office. According to 37 C.F.R. § 11.5(b)(1), that scope 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 Patent Office; • Drafting the specification or claims of a patent application; • Drafting an amendment or reply to a communication from the Patent Office that may require written argument to establish the patentability of a claimed invention; • Drafting a reply to a communication from the Patent 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. PATENT AGENT SCOPE OF PRACTICE BY DOUG CHARTIER LAW WEEK COLORADO O n an issue where federal courts have shown some unpredictability, com- panies now have more clarity as to whether certain communications with patent agents are privileged. On March 7, the Federal Circuit Court of Appeals issued a majority opinion recognizing attorney-client privilege as it pertains to com- munications with non-attorney patent agents. The decision turned on the U.S. Supreme Court precedent holding that the act of prosecuting patents counts as a legal practice. The Federal Circuit also cited congressional intent and “the current realities of patent litigation counsel” as reasons to recognize an independent patent- agent privilege. The Federal Circuit defined the scope of the privilege as the patent agent’s ability to prac- tice before the U.S. Patent and Trademark Of- fice. In light of Rule 501 of the Federal Rules of Evidence, the court “recognize(d) a patent- agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office,” ac- cording to the majority opinion penned by Judge Kathleen O’Malley. In trimming costs, companies have increas- ingly relied upon patent agents as opposed to patent attorneys in prosecuting patents at the Patent Office. Generally, most courts have determined privilege applies to communica- tions with a patent agent only if the agent is supervised by a licensed attorney. But some courts have honored the privilege even when the patent agent is unsupervised, but as long as the communications are related to practice before the Patent Office. The Federal Circuit seemed to have signaled a shift toward expanded privilege protection as of late, particularly with its 2000 decision on In Re Spalding Sports Worldwide. But the Federal Circuit had not directly addressed patent-agent privilege prior to its recent ruling on In Re Queen’s University at Kingston. Ontario-based Queen’s University at Kingston sued Samsung in January 2014 over the latter’s SmartPause feature, which the uni- versity said infringed on its patented research in attentive user interfaces. During discovery, the university refused to produce certain documents, claiming privi- leged communication between its employees and non-attorney patent agents. The university didn’t present evidence that the patent agents worked under the supervision of a licensed attorney during those communications. A magistrate judge in district court compelled the university to produce the documents, holding that a separate patent-agent privilege didn’t exist. The Federal Circuit took up the issue after Queen’s University petitioned for writ of mandamus. Integral to the appellate court’s analysis was the Supreme Court’s language in Sperry v. State of Florida ex rel. Florida Bar, where the high court found “the preparation and prosecution of patent applications for others constitutes the practice of law.” Just as open and necessary communications between attorneys and clients would be hampered by a lack of protection, so would communications between patent agents and their clients, according to the majority opinion. “To the extent … that the traditional attorney-client privilege is justified based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent, that justification would seem to ap- ply with equal force to patent agents,” accord- ing to the majority opinion. Whether patent-agent privilege was a hot- button issue depended on whom one asked, said Gene Bernard, managing partner of Kilpatrick Townsend & Stockton in Denver. While litigators have perceived the issue as complicated, it has had less discussion among patent prosecutors. “The nice thing now about this opinion is, whether people were thinking about it or not… they now have more clarity from the Federal Circuit at least from the idea that patent-agent privilege can exist,” Bernard said. But even though the court established that the privilege exists, it could give rise to additional questions about the scope of that privilege. The majority opinion gives examples of scenarios that likely wouldn’t be covered, including opinions on validity or infringement “that are not reasonably necessary and incident to the prosecution of patents before the Pat- ent Office.” But with the topic of patent-agent privilege brought into the spotlight, there could be future adjudication over where the lines are, Bernard said. As for future developments, In Re Queen’s University at Kingston was not a unanimous opinion, which gives rise to the slim possibility the Federal Circuit could revisit the privilege is- sue en banc. And patent-agent privilege isn’t as high a congressional priority as patent trolls and other issues, so any legislated clarity could be a ways off, Bernard said. Todd Blakely, co-president of Sheridan Ross in Denver, said he has come across is- sues with patent-agent privilege on occasion and that the Federal Circuit’s endorsement of the privilege, while not earth-shattering, is “the right decision.” He added that even with the recognition of the privilege, companies — particularly those with in-house patent agents — should mind the patent agent’s scope of practice if they want to keep those communications protected. “Where I think the trap is, is getting too comfortable with your patent agent,” Blakely said. Even if clients think their patent agent is sharp enough to discuss questions outside pat- entability, those discussions could present sig- nificant exposure in terms of privilege if there isn’t an attorney participating. “Don’t turn your patent agent into a lawyer where you can talk to them about everything,” Blakely added. • — Doug Chartier, [email protected] Federal Circuit Recognizes Patent-Agent Privilege But to limit exposure, companies should still rein in patent agent communications accordingly, attorneys say
Transcript of Federal Circuit Recognizes Patent-Agent Privilege Blakely Patent Agent... · 725 S. BROADWAY #10,...
725 S. BROADWAY #10, DENVER, CO 80209 | 303–292–1212 | www.LAW WEEK ONLINE.com VOL. 14 | NO. 12 | $6 | MARCH 21, 2016
The Federal Circuit defined the scope of patent-agent privilege as the agent’s ability to practice before the Patent Office. According to 37 C.F.R. § 11.5(b)(1), that scope 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 Patent Office;• Drafting the specification or claims of a patent application;• Drafting an amendment or reply to a communication from the Patent Office that may require written argument to establish the patentability of a claimed invention;
• Drafting a reply to a communication from the Patent 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.
PATENT AGENTSCOPE OF PRACTICE
BY DOUG CHARTIERLAW WEEK COLORADO
On an issue where federal courts have shown some unpredictability, com-panies now have more clarity as to
whether certain communications with patent agents are privileged.
On March 7, the Federal Circuit Court of Appeals issued a majority opinion recognizing attorney-client privilege as it pertains to com-munications with non-attorney patent agents. The decision turned on the U.S. Supreme Court precedent holding that the act of prosecuting patents counts as a legal practice. The Federal Circuit also cited congressional intent and “the current realities of patent litigation counsel” as reasons to recognize an independent patent-agent privilege.
The Federal Circuit defined the scope of the privilege as the patent agent’s ability to prac-tice before the U.S. Patent and Trademark Of-fice. In light of Rule 501 of the Federal Rules of Evidence, the court “recognize(d) a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office,” ac-cording to the majority opinion penned by Judge Kathleen O’Malley.
In trimming costs, companies have increas-ingly relied upon patent agents as opposed to patent attorneys in prosecuting patents at the Patent Office. Generally, most courts have determined privilege applies to communica-tions with a patent agent only if the agent is
supervised by a licensed attorney. But some courts have honored the privilege even when the patent agent is unsupervised, but as long as the communications are related to practice before the Patent Office.
The Federal Circuit seemed to have signaled a shift toward expanded privilege protection as of late, particularly with its 2000 decision on In Re Spalding Sports Worldwide. But the Federal Circuit had not directly addressed patent-agent privilege prior to its recent ruling on In Re Queen’s University at Kingston.
Ontario-based Queen’s University at Kingston sued Samsung in January 2014 over the latter’s SmartPause feature, which the uni-versity said infringed on its patented research in attentive user interfaces.
During discovery, the university refused to produce certain documents, claiming privi-leged communication between its employees and non-attorney patent agents. The university didn’t present evidence that the patent agents worked under the supervision of a licensed attorney during those communications. A magistrate judge in district court compelled the university to produce the documents, holding that a separate patent-agent privilege didn’t exist. The Federal Circuit took up the issue after Queen’s University petitioned for writ of mandamus.
Integral to the appellate court’s analysis was the Supreme Court’s language in Sperry v. State of Florida ex rel. Florida Bar, where the high court found “the preparation and prosecution of patent applications for others constitutes
the practice of law.” Just as open and necessary communications between attorneys and clients would be hampered by a lack of protection, so would communications between patent agents and their clients, according to the majority opinion.
“To the extent … that the traditional attorney-client privilege is justified based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent, that justification would seem to ap-ply with equal force to patent agents,” accord-ing to the majority opinion.
Whether patent-agent privilege was a hot-button issue depended on whom one asked, said Gene Bernard, managing partner of Kilpatrick Townsend & Stockton in Denver. While litigators have perceived the issue as complicated, it has had less discussion among patent prosecutors.
“The nice thing now about this opinion is, whether people were thinking about it or not… they now have more clarity from the Federal Circuit at least from the idea that patent-agent privilege can exist,” Bernard said.
But even though the court established that the privilege exists, it could give rise to additional questions about the scope of that privilege. The majority opinion gives examples of scenarios that likely wouldn’t be covered, including opinions on validity or infringement “that are not reasonably necessary and incident to the prosecution of patents before the Pat-ent Office.” But with the topic of patent-agent privilege brought into the spotlight, there could
be future adjudication over where the lines are, Bernard said.
As for future developments, In Re Queen’s University at Kingston was not a unanimous opinion, which gives rise to the slim possibility the Federal Circuit could revisit the privilege is-sue en banc. And patent-agent privilege isn’t as high a congressional priority as patent trolls and other issues, so any legislated clarity could be a ways off, Bernard said.
Todd Blakely, co-president of Sheridan Ross in Denver, said he has come across is-sues with patent-agent privilege on occasion and that the Federal Circuit’s endorsement of the privilege, while not earth-shattering, is “the right decision.”
He added that even with the recognition of the privilege, companies — particularly those with in-house patent agents — should mind the patent agent’s scope of practice if they want to keep those communications protected.
“Where I think the trap is, is getting too comfortable with your patent agent,” Blakely said. Even if clients think their patent agent is sharp enough to discuss questions outside pat-entability, those discussions could present sig-nificant exposure in terms of privilege if there isn’t an attorney participating. “Don’t turn your patent agent into a lawyer where you can talk to them about everything,” Blakely added. •
— Doug Chartier, [email protected]
Federal Circuit Recognizes Patent-Agent Privilege
But to limit exposure, companies should still rein in patent agent communications accordingly, attorneys say
