On February 23, 2018 the Supreme Court of Texas concluded 1 that the definition of a “lawyer” – for purposes of the lawyer-client privilege under the Texas Rules of Evidence 2 – is sufficiently broad to encompass some communications between a patent agent and their client. The impact of this decision may reach beyond the Lone Star State, particularly since Texas’s Rule 503 is modeled after a version of proposed Federal Rule of Evidence 503.3 While most other states’ courts have not addressed whether such communications are privileged, many states 4 have adopted rules similar to Texas’s Rule 503 and thus may also reach a similar conclusion. Because many patent agents do not work under the supervision of an attorney, this development may significantly impact the privilege protection available when using such agents for patent prosecution.5
This decision was a reversal of both of the lower courts’ rulings 6 that Texas did not recognize a common law patent agent privilege other than where a patent agent acts under the supervision of an attorney. Unlike the lower courts, the Supreme Court of Texas framed the issue not as the creation of a new patent agent privilege, but instead as the determination that the existing lawyer-client privilege extends to patent agents.7 Because the Supreme Court of Texas agreed that patent agents “are independently providing professional legal services to a client” rather than “just working in the legal field,” they must be recognized as “authorized” to “practice law” within the definition of a “lawyer” as set out in the Rules of Evidence.8 The Court suggested that to hold otherwise could be found to be an unconstitutional violation of the Supremacy Clause.9 Ultimately, the highest court of Texas returned the case to the trial court with directions to conduct an in camera review of the underlying communications.10
In re Silver arose from a contract dispute related to two patents directed to a tablet device marketed as the “Ziosk.” This stand-alone device allows restaurant-goers to order meals, play games, and pay their checks at their table without interacting with a server. The inventor, Andrew Silver, sold the rights to the invention under a patent purchase agreement (“PPA”) to Tabletop Media, LLC for the purpose of commercializing the Ziosk. The PPA contained a provision for the payment of royalties within a period of time after the patents had been granted. Tabletop successfully commercialized the Ziosk – placing the units in many popular restaurants including Chili’s, TGI Fridays, Red Robin, and Outback Steakhouse; however, they allegedly failed to make the first royalty payment under the PPA.
Silver had worked with a U.S. patent agent since March of 2010, and together they had successfully obtained more than 30 patents from the United States Patent and Trademark Office (“USPTO”). As related to the Ziosk, Silver consulted with his patent agent while prosecuting the patents, and after realizing litigation with Tabletop was imminent, further sought his patent agent’s legal opinion regarding the strengths of his case. Notably, Silver’s patent agent did not work under the supervision of a licensed attorney. For this reason, the trial court concluded that the three hundred e-mails between Silver and his patent agent were not protected from discovery by the lawyer-client privilege and ordered their production. Silver then filed a petition for mandamus relief.
The decision by the Texas Supreme Court to find a limited lawyer-client privilege extending to non-attorney practitioners continues a recent trend from other jurisdictions that have found a privilege to exist between clients and patent agents.11 In the past, lower courts have not been consistent when deciding the issue: some outright rejecting the privilege,12 some finding privilege only when the agent is working under the supervision of an attorney,13 and still others simply recognizing the privilege.14 The USPTO conducted a round table event in early 2015 where a number of organizations strongly favored a clear recognition of a privilege for communications with a patent agent.15 In 2016 the Federal Circuit held in In re Queen’s University at Kingston that confidential communications with patent agents are afforded a privilege commensurate with the scope of a patent agent’s ability to practice before the USPTO.16 The Federal Circuit attempted to distinguish the scope of this privilege as applicable only to communications related to those activities of patent agents authorized by Congress.17 To this end, the Federal Circuit considered the regulations promulgated by the USPTO for guidance.18 Specifically, the Federal Circuit found that privileged communications should include those that are “in furtherance of the performance of these tasks . . . ‘which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before’” the USPTO.19
But what exactly does this now-recognized privilege include? There is still quite a bit of uncertainty left in the wake of these decisions. The Supreme Court of Texas did not provide a clear determination of what falls within the purview of patent agents’ authorized activities, electing to avoid any bright line rule.20 The Federal Circuit in Queen’s attempted to center the scope of the patent agent privilege around the nonexclusive list of USPTO matters in which a patent agent may participate.21 The Federal Circuit made an effort to further elucidate the privilege by listing a couple of examples that may fall outside the scope.22 In his dissent in In re Silver, Justice Evans of the Court of Appeals of Texas favored an approach similar to that of the Federal Circuit, offering his opinion that the privilege should be found where a patent agent is “authorized to practice law to the extent of applications and prosecutions of patents.”23 Under this analysis, Justice Evans would apply the lawyer-client privilege to the category of documents falling under “patent prosecution documents” but deny the privilege as to “litigation consultation documents.”24
These approaches may be helpful with facts that fit neatly within prosecution or litigation but appear less precise as the permissible activities of a patent agent border on or overlap with those of litigation. For instance, the regulations of the USPTO that the Federal Circuit employed when delineating the scope of a patent agent’s scope of privilege include advising a client on “alternative forms of protection which may be available under state law.”25 Likewise, even a patent agent’s authority to prepare assignments and other contracts related to patents may not be totally outside the scope of a patent agent’s authority as viewed by the USPTO.26 In the context of reexamination or inter partes review – activities where a patent agent may certainly participate and represent a client – a patent agent is authorized to issue a validity opinion to a client.27 Curiously, advising a client on the scope of privilege afforded to communications with a patent agent may be one of the few activities impermissible for patent agents according to these guidelines.28
The Supreme Court of Texas’s opinion in In re Silver merely posits that “matters outside the agent’s authorized practice area might not be protected” and does little to clear up any of these outstanding questions.29 The mechanics of this privilege will likely be left to the lower courts to craft, and a bright line rule may be difficult to construct. If such a patent agent privilege is to exist, patent agents – and more importantly their clients – need certainty in the understanding of this privilege. Certainty will ensure that sensitive communications are made with the full knowledge of potential discovery repercussions. For now, those who consult patent agents without attorney supervision should do so cautiously in the presence of this uncertainty.
1 In re Silver, 2018 WL 1022470 (Tex. Feb. 23, 2018).
2 TEX. R. EVID. 503(a)(3) (“A ‘lawyer’ is a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation”).
3 Rules of Evidence for United States Courts and Magistrates, 56 F.R.D. 183, 236 (1972) (including the definition: “A ‘lawyer’ is a person authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation.”) (emphasis added).
4 Thirty-eight states, including Texas, have adopted a version of the Uniform Rules of Evidence.
5 Brief for Houston Intellectual Property Law Association as Amicus Curiae Supporting Relator at 12-13, In re Silver, 2018 WL 1022470 (Tex. Feb. 23, 2018).
6 In re Silver, 500 S.W.3d 644 (Tex. App. 2016); Tabletop Media, LLC v. Andrew Silver, No. DC-15-02268 (N.D. Tex. filed Oct. 7, 2015) (order ruling that there is no patent agent privilege for discovery purposes in Texas).
7 In re Silver, 2018 WL 1022470, at *3 (Tex. Feb. 23, 2018).
8 In re Silver, 2018 WL 1022470, at *9; See also In re Queen’s Univ. at Kingston, 820 F.3d 1287, 1296 (Fed. Cir. 2016) (interpreting Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963) as establishing that “patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself.”).
9 In re Silver, 500 S.W.3d 644, 649 (Tex. App. 2016) (Evans, J., dissenting).
10 In re Silver, 2018 WL 1022470, at *14-15 (Tex. Feb. 23, 2018).
11 In re Queen’s Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016); Rule on Attorney-Client Privilege for Trials Before the PTAB, 82 Fed. Reg. 51,570, 51,575 (Nov. 7, 2017) (to be codified at 37 C.F.R. pt. 42).
12 Joh. A. Benckiser G. m. b. H., Chemische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999 (D.N.J. 1966); Detection Sys., Inc. v. Pittway Corp., 96 F.R.D. 152, 155 (W.D.N.Y. 1982) (“As a general rule, ‘no communications from patent agents, whether American or foreign, are subject to an attorney-client privilege in the United States.’”).
13 See, e.g., Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 204 (E.D.N.Y.1988); Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 146 (D. Del. 1977).
14 In re Amplicillin Antitrust Litigation, 81 F.R.D. 377 (D.D.C. 1978); Foseco Int’l. Ltd. v. Fireline, Inc., 546 F. Supp. 22 (N.D. Ohio 1982).
15 U.S. PATENT AND TRADEMARK OFFICE, SUMMARY OF ROUNDTABLE AND WRITTEN COMMENTS: DOMESTIC AND INTERNATIONAL ISSUES RELATED TO PRIVILEGED COMMUNICATIONS BETWEEN PATENT PRACTITIONERS AND THEIR CLIENTS (2015), https://www.uspto.gov/sites/default/files/documents/Summary%20of%20Privileged%20Communication%20Roundtable.pdf
16 In re Queen’s Univ. at Kingston, 820 F.3d at 1301.
18 37 C.F.R. § 11.5(b)(1).
19 In re Queen’s Univ. at Kingston, 820 F.3d at 1301 (citing 37 C.F.R. § 11.5(b)(1)).
20 In re Silver, 2018 WL 1022470, at *14 (“The client’s communications with a registered patent agent regarding matters outside the agent’s authorized practice area might not be protected because these communications are not necessarily made to facilitate the rendition of professional legal services.”).
21 In re Queen’s Univ. at Kingston, 820 F.3d at 1301-02 (citing 37 C.F.R. § 11.5(b)(1) (“Practice before the Office in patent matters includes, but is not limited to . . .”) (emphasis added)).
22 Id. (listing “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” as not within the scope of privilege.).
23 In re Silver, 500 S.W.3d 644, 651 (Tex. App. 2016) (Evans, J., dissenting).
25 37 C.F.R. § 11.5(b)(1)(i).
26 In re Queen’s Univ. at Kingston, 820 F.3d at 1306-07 (Reyna, J., dissenting) (pointing out that there was more uncertainty in the proposed privilege than the majority admits.); Changes to Representation of Others Before the United States Patent and Trademark Office, 73 Fed. Reg. 47,650, 47,668 (Aug. 14, 2008) (“The Office’s long-standing position has been that ‘[p]atent agents * * * cannot * * * perform various services which the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides considers drafting contracts as practicing law.’”).
27 Changes to Representation of Others Before the United States Patent and Trademark Office, 73 Fed. Reg. at 47,670 (“Due to registration to practice before the Office in patent cases, a practitioner may issue a validity opinion in contemplation of filing a request for reexamination.”). By extension, this should also apply to inter partes review proceedings that replaced inter partes reexamination.
28 In re Queen’s Univ. at Kingston, 820 F.3d at 1307 (Reyna, J., dissenting).
29 In re Silver, 2018 WL 1022470 at *14 (Tex. Feb. 23, 2018) (emphasis added).
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