Today’s post features a split over the applicability of the attorney-client privilege to patent agents. While patent agents do not have to slog through three years of law school to obtain their license, they share many of the same professional responsibilities as patent attorneys. For example, patent agents, like their counterparts in the legal profession, are permitted to represent clients before the U.S. Patent and Trade Office.
As a federal magistrate in California recently pointed out, the similarity between patent agents and patent attorneys has lead a number of courts to extend the attorney-client privilege to communications with patent agents. See Buyer's Direct, Inc. v. Belk, Inc., SACV 12-00370-DOC (MLGx) (C.D. Cal. Apr. 24, 2012).
Enter Buyer’s Direct Inc., the mastermind behind “snoozies!,” those “cozy little foot coverings.” (Not to be confused with the “Snuggie.”) Buyer’s Direct hired a company called “Quick Patents” (the patent-agent equivalent of TurboTax) to act as its registered agent in the prosecution of the application for its snoozies! patent.
Once Buyer’s Direct received its patent, the company sued Belk, Inc. for patent infringement. Over the course of discovery, Quick Patents refused to produce certain subpoenaed documents, claiming that its documented communications with Buyer's Direct were protected by the attorney-client privilege. As Magistrate Judge Marc Goldman pointed out in his opinion on the issue, the lower courts are divided over whether the attorney-client privilege applies to a client’s communications with his or her patent agent:
Many cases have extended the attorney-client privilege to communications with patent agents based on similar reasoning, noting that patent agents perform the same services as patent attorneys, are licensed, and are subject to the same standards of professional conduct as their attorney counterparts. See, e.g., Polyvision Corp. v. Smart Techs. Inc., No. l:03-CV-476, 2006 U.S. Dist. LEXIS 12688, 2006 WL 581037 (W.D. Mich. 2006); Mold Masters Ltd. v. Husky Injection Molding Sys., Ltd., No. 01 C1576, 2001 U.S. Dist. LEXIS 17094, 2001 WL 1268587 (N.D. Ill. 2001); Stryker Corp. v. Intermedics Orthopedics, Inc., 145 F.R.D. 298, 304 (E.D.N.Y. 1992); Dow Chem. Co. v. Atlantic Richfield Co., 1985 WL 7199, 227 U.S.P.Q. 129, 133-34 (E.D. Mich. 1985); Vernitron Med. Prods., Inc. v. Baxter Lab., Inc., 1975 WL 21161, 186 U.S.P.Q. 324 (D.N.J. 1975).
However, a split in authority remains, with a number of courts holding that patent agents are not entitled to the protection of the attorney-client privilege. See, e.g., Park v. CAS Enter., Inc., No. 08-cv-0385, 2009 U.S. Dist. LEXIS 100148, 2009 WL 3565293 (S.D. Cal. Oct. 27, 2009); In re Rivastigmine Patent Litigation, 237 F.R.D. 69 (S.D.N.Y. 2006); Agfa Corp., No. Civ.A. 00-10836, 2002 U.S. Dist. LEXIS 14269, 2002 WL 1787534, at *2 (D. Mass. Aug. 1, 2002); Joh. A. Benckiser G.m.b.H., Chemische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999, 1000 (D.N.J. 1966). Courts declining to extend the privilege have noted that the attorney-client privilege should be construed narrowly and that it "is rooted, both historically and philosophically, in the special role that lawyers have, by dint of their qualifications and license, to give legal advice." Park v. CAS Enter., Inc., 2009 U.S. Dist. LEXIS 100148, 2009 WL 3565293, at *2 (quoting Agfa Corp., 2002 U.S. Dist. LEXIS 14269, 2002 WL 1787534, at *2). In Agfa Corp, the court also reasoned that while some part of the agent's work is as a legal advisor, "[t]he same could be said, however, for any number of non-lawyer advocates who formally undertake to 'represent' 'clients' before some tribunal and who advise the clients about how the law might apply to or affect the clients' interests." 2002 U.S. Dist. LEXIS 14269, 2002 WL 1787534, at *2.
The Court is persuaded by the reasoning of the In re Ampicillin line of cases that the congressional goal of allowing clients to chose between an attorney and a patent agent representative in proceedings before the USPTO would be frustrated if the attorney-client privilege were not available to communications with registered patent agents. Therefore, the privilege may be invoked over communications between a client and the client's registered patent agent. However, the privilege is limited to communications related to presenting and prosecuting applications before the USPTO, as this is the extent to which Congress has granted patent agents the same status as an attorney representative. Accordingly, communications subsequent to the issuance of a patent are not covered by the attorney-client privilege. See Polyvision Corp. v. Smart Techs. Inc., 2006 U.S. Dist. LEXIS 12688, 2006 WL 581037 at *3.