March 7, 2016

The Privileged Few

By Bryan K. Wheelock, Principal

In Queens’s University at Kingston, [2015-145] (March 7, 2016) the Federal Circuit granted a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non-attorney patent agents.  The Federal Circuit said:

To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be kept privileged.

Whether communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment — to hold otherwise would frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.