Attorney-Client Privilege. A Short Overview.

Attorney-client privilege is considered to be the oldest form of privilege related to confidential communications; that of the communication between an attorney and client. Attorney-client privilege protects specific communications between lawyers and their clients.  It allows a client to refuse to disclose and prevents others from disclosing information that was exchanged while seeking or rendering legal advice.  To be clear, the privilege belongs to the client, not the attorney.  Privilege upholds the public policy of promoting full and frank communication between client and attorney so that the client makes well informed legal decisions in conformance with the law. Of course privilege has also been improperly used to cover up information and to attempt to circumvent the law rather than comply with it.

Attorney-client privilege protects both written and verbal communication from discovery, provided the requirements to maintain that privilege have been met¹.  To be privileged, a communication:

• Must be confidential

• Must request legal advice

• Must be made to a legal professional

In reality, as with most things legal, this simple three part test is really not simple, and countless court cases have further defined and redefined this three part test in view of the specifics of the case, the skill of the attorneys representing either side, and the judges involved. Suffice it to say that this three part test exists, and is a valid starting point when determining what is considered to be privileged communications.

The Practice of Patent Law

Patent law is a highly complex area of law that involves practice before the USPTO, specialized and often complex subject matter, as well as international aspects which include patent laws of other countries as well as Patent Cooperation Treaty filings. In this area of law, the topic of privileged communications is not to be taken lightly. To further complicate matters, in the practice of patent law there are patent agents and patent attorneys, both being duly licensed by way of a federal (not a state) patent bar exam to represent clients before the USPTO.

Before 1899, there was no registration process at the USPTO, and in 1922 Congress created the patent bar to create a higher standard of practice. Yet for years there was always some question about whether privilege extended to agents as well as attorneys, despite the fact that the Patent Office makes no distinction between agents and attorneys during proceedings before the Office.

Sperry v. Florida ex rel. Florida Bar²

It was not until 1963 that the Supreme Court substantiated the fact that practicing before the USPTO was in fact the practice of law. The Supreme Court ruled that states may not prohibit a federally licensed patent agent from giving advice on patent law, even though it would otherwise constitute the unauthorized practice of law at the state level. Both patent agents and patent attorneys were considered equal in regard to representation of clients and practice before the United States Patent and Trademark Office.

Confirmation by the Federal Circuit

The Court of Appeals for the Federal Circuit had not considered the topic of patent agent-client privilege until March 7, 2016, In re: Queen’s University at Kingston, PARTEQ Research and Development Innovations³.  Queen’s University sued Samsung in the Eastern District of Texas for infringement of three patents relating to “attentive user interfaces” where an electronic device changes its behavior based on perceiving the attentiveness of the user.  In discovery, Samsung moved the court to compel the production of communications between Queen’s University and its patent agent which discussed prosecution of the patents.  After a mandamus review⁴ the CAFC determined that “patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself.”  The CAFC relied heavily on the 1963 Supreme Court Sperry v. Florida Bar decision, and further stated that “clients have a reasonable expectation that all communications relating to obtaining legal advise on patentability and legal services in preparing a patent application will be kept privileged” whether that advise comes  from “an attorney or his or her legal equivalent patent agent should be of no moment.”  The CAFC considered if there were a lack of a patent agent-client privilege, there would be a hindrance to communication between patent agents and their clients, which would undermine the purpose that Congress had in mind in admitting agents and attorneys to the patent bar.

The CAFC also looked at the scope of patent agent-client privilege, and looked to the scope of patent agent activities authorized by Congress in reaching its conclusions. The CAFC stated that communications “reasonably necessary and incident to the preparation and prosecution of patent applications and other proceedings before the Office involving a patent application or patent in which the practitioner is authorized to participate receive the benefit of the patent agent privilege.”

Confirmation of Patent Agent-Client privilege by not only the Supreme Court but the Court of Appeals for the Federal Circuit provides further assurance that communications between you and your patent agent remain protected.

1. EchoStar, Supra, 448 F.3d at 1301; Handgards, Supra;
2. 373 U.S. 379, 390 (1963)
3. 2015-145, slip op. at 26 (Fed. Cir. Mar 7, 2016)
4. A mandamus review is an order from a superior court to a government subordinate court, corporation or public authority

GRAPHIC CREDIT:  “Locked Files.”  Robert Gunderman.

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  Copyright 2016 Robert Gunderman, Jr. and John Hammond.

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.