Patent-agent privilege exists as an independent privilege from but akin to attorney-client privilege and functions to shield from discovery communications between an applicant and its patent agent that are reasonably necessary and incident to the prosecution of patents before the PTO—even when attorney counsel is not involved in the communication. Here, for example, the district court was barred from compelling the production of certain communications between the patentee and its non-attorney patent agents on the grounds that the communications were privileged. “[As] an issue of first impression … [the Federal Circuit] recogniz[es] an independent patent-agent privilege.”
Background / Facts: The patents being asserted here are directed to “attentive user interfaces,” which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user’s eye-contact with the device. During litigation, the district court issued a discovery order compelling the production of the patentee’s communications with its non-attorney patent agents.
Issue(s): Whether there exists a so-called “patent-agent privilege,” independent from but akin to attorney-client privilege, that functions to shield certain communications between an applicant and its patent agent from discovery—even when attorney counsel is not involved in the communication.
Holding(s): Yes. Noting that patent-agent privilege “is an issue of first impression for this court and one that has split the district courts,” the Federal Circuit ultimately held that “the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege.” The Federal Circuit made sure to point out that its own jurisprudence is controlling in this area because “whether particular documents are discoverable in a patent case … relate[s] to issues of validity and infringement,” and accordingly this ruling seeks to “avoid further inconsistent development of this doctrine.” There are limits to the scope of the privilege, however, in that “[c]ommunications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not ‘reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.’”