“Patent Agent Privilege” Confirmed

A three-judge panel of the Federal Circuit has affirmed “patent agent privilege” in granting a petition filed by a Canadian University in a lawsuit over its patents.

Queens University at Kingston sued Samsung in 2014, claiming the company infringed the university’s patents for user interfaces used by so-called smart devices. Documents were requested during discovery that Queens University refused to provide, on the basis that the documents contained privileged communications between patent agents and university employees specific to the patents’ prosecution.

In March 2016, the Federal Circuit agreed with the university, ruling that congressional recognition of an agent’s authority to act is essentially the same as that of a patent attorney, and thus supports independent patent agent privilege. The ruling limits this privilege to communications that are “reasonably necessary and incident to the prosecution of patents before the Patent Office”.