January 07, 2020 Top Story

Patent Agent Privilege Expands Its Reach

Communications necessary for patent agent prosecution are privileged

By Laura W. Givens

A U.S. district court has expanded the reach of the patent agent privilege, which protects some communication between non-attorney patent agents and their clients. However, the court held that a robust privilege log is necessary when a party asserts the patent agent privilege. ABA Section of Litigation leaders warn litigators that they should pay careful attention to the contours of the patent agent privilege in their privilege logs or risk waiver.

Subpoena seeks to compel waiver of privilege from patent agent

Subpoena seeks to compel waiver of privilege from patent agent

Photo illustration by Genuine Pyun / iStockphoto by Getty Images

Party Subpoenas Documents from Opponent’s Patent Agent

In Luv N’ Care v. Williams Intellectual Property, Luv N’ Care sought an order from the U.S. District Court for the District of Colorado to compel a patent agent, a non-party to the suit, to produce documents and a privilege log responsive to a subpoena. The underlying litigation involved a patent dispute between Luv N’ Care and Eazy-PZ, LLC, which was pending in the U.S. District Court for the Western District of Louisiana. Eazy-PZ hired the patent agent to prosecute two patents, and Luv N’Care subpoenaed the patent agent in Colorado.

In response to the subpoena, the patent agent produced a privilege log and, shortly before a hearing on a motion to compel, an amended privilege log. At the hearing, the court ordered the patent agent to amend its privilege log for a third time to match the categories sought in Luv N’ Care’s subpoena.

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