US Agent Privilege

Today, the United States Court of Appeals for the Federal Circuit issued a decision in Re: Queen’s University relating to non-attorney patent agent privilege. The Court concluded that such privilege should be recognized.

The decision (PDF) arose in a patent infringement action brought by Queen’s University and PARTEQ against Samsung relating to three patents directed to Attentive User Interfaces. Queen’s resisted the production of communications with its non-attorney patent agents. The CAFC granted the mandamus petition.

A majority concluded:

For the reasons we explain, we 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.

In dissent, Circuit Judge Reyna disagreed that the court should create a new agent-client privilege:

The presumption against the creation of new privileges has not been overcome by any showing that the public interest will be served or that there is a real need for such a privilege. Congress recognized that agents would not have the same privileges as attorneys, and no appellate court or legislature has created an agent-client privilege. An attorney-client-like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency.

In Canada, recognition of patent agent privilege has been controversial (see for example,Lilly Icos LLC v. Pfizer Ireland Pharmaceuticals, 2006 FC 1465) but resolved now that sections of Bill C-59, passed in June 2015, will come into force in a few months, on June 23, 2016.