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.
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.
The Origin of the Patent Agent Privilege
The court noted that the patent agent privilege was first recognized in 2016 in In re Queen’s University at Kingston, decided by the U.S. Court of Appeals for the Federal Circuit. That decision is rooted in the U.S. Supreme Court’s ruling in Sperry v. Florida ex rel. Florida Bar. There, the Court found that the preparation and prosecution of patent applications for others constitutes the practice of law, even when conducted by non-attorney patent agents.
“Over fifty years ago, in Sperry, the Supreme Court had established that patent agents have a unique role in American law,” explains Angela Foster, North Brunswick, NJ, former cochair of the Section of Litigation’s Intellectual Property Litigation Committee. “Patent agents are not attorneys but are authorized to practice before the United States Patent and Trademark Office (USPTO)," Foster adds.
The Colorado district court noted that the patent agent privilege applies to communications that are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the USPTO. The court noted that, since Queen’s University, every federal court that has considered whether to recognize the patent agent privilege has agreed with the Federal Circuit’s determination. Because the court found no authority that expressly bars recognition of the patent agent privilege within the U.S. Court of Appeals for the Tenth Circuit, the court assumed, without deciding, that the privilege applies.
Not All Agent-Client Communications Are Protected
The patent agent privilege is narrower in scope than the attorney-client privilege. The patent agent privilege does not protect communications with a patent agent who is opining on the validity of another party’s patent in contemplation of litigation, or for the sale or purchase of a patent, or on infringement. The court followed the rationale of Onyx Therapeutics, Inc. v. CIPLA Limited, in which the U.S. District Court for the District of Delaware declined to extend the patent agent privilege. That case involved communications from a group of scientists to a patent agent for the purpose of seeking guidance in “understanding the patent landscape in order to direct their efforts” in pursuing patent prosecution in the future.
Although the Colorado district court recognized the patent agent privilege, it ruled that the documents in dispute were not protected. In some cases, the privilege log failed to identify the author and recipient of certain communications. As to other documents, the agent listed the names of people with whom the documents were shared, but did not specify whether those people were attorneys, patent agents, or clients. In sum, the court found that the privilege log failed to show that the privilege applied, and so it construed the communications as voluntary disclosures to third parties, waiving any privilege that might have applied.
The court was also substantively critical of the privilege log. “[M]erely soliciting advice of a patent agent does not satisfy the burden of showing that the privilege applies,” it reasoned. This shows a critical difference from the attorney-client privilege. “The court denied protection to documents where patent agent privilege was claimed because it only applies to communications that are ‘reasonably necessary and incident to the preparation and prosecution of patent applications and other proceedings before the USPTO’ and the privilege log merely described the subject matter of the document as ‘Communications re advice of patent agent and/or advice of patent agent,’” explains Michael P. Padden, Chicago, IL, cochair of the Section’s Intellectual Property Litigation Committee.
This is a warning to practitioners who wish to invoke this privilege. “The communications in dispute may have been reasonably necessary and incident to the preparation and prosecution of patent applications,” says Padden, “but the privilege log did not adequately describe the communications, so the agent paid the price.”
Laura W. Givens is a contributing editor for Litigation News.
Hashtags: #PatentAgentPrivilege, #Waiver, #PrivilegeLog
- 37 C.F.R. § 11.5(b)(1).
- Federal Rule of Evidence 26(b)(5).
- In re Andrew Silver, 540 S.W.3d 530 (Tex. 2018).
- Amy Mattson, “Failure to List Document in Privilege Log Results in Waiver of Privilege,” Litigation News (Jan. 7, 2019).
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