Patent Agent Privilege
June 16, 2017
Earlier this year, the Federal Circuit set forth that attorney-client privilege should also extend to communications between clients and patent agents. This is a unique extension of attorney-client privilege because of the nature of the patent agent profession – that is patent agents do not attend law school but have passed the patent bar examination, which allows them to practice patent law and represent clients before the United States Patent and Trademark Office (USPTO).
In a 2-1 decision, the Federal Circuit recognized the patent agent-client privilege stating that “patent agents engage in the practice of law when representing clients . . . [and] the patent-agent privilege furthers the same important public interests as that of the attorney-client privilege.”
The Federal Circuit’s recognition of the patent agent-client privilege is beneficial to clients needing patent preparation and prosecution services. Patent agents often perform preparation and prosecution services much cheaper than patent attorneys. Knowing communications will be protected may incentivize companies to save costs by hiring patent agents as opposed to patent attorneys.