Monday, March 07, 2016

CAFC recognizes "a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office"

The grant of a mandamus petition in the case --IN RE: QUEEN’S UNIVERSITY AT KINGSTON,

We find, consistent with Rule 501 of the Federal Rules
of Evidence, that a patent-agent privilege is justified “in
the light of reason and experience.” See Jaffee, 518 U.S.
at 8. We therefore recognize a patent-agent privilege
extending to communications with non-attorney patent
agents when those agents are acting within the agent’s
authorized practice of law before the Patent Office.

Judge Reyna dissented:

I disagree that this court should create a new agentclient
privilege. The presumption against the creation of
new privileges has not been overcome by any showing
that the public interest will be served or that there is a
real need for such a privilege. Congress recognized that
agents would not have the same privileges as attorneys,
and no appellate court or legislature has created an
agent-client privilege. An attorney-client-like privilege
should not apply merely because someone is enabled to
practice limited law before a single specific administrative

Reyna's footnote 1:

The Majority’s opinion is based on “the light of
reason and experience.” Maj. Op. at 26. To be clear, this
is not a dispute about law or statute, a factor that at the
outset makes me leary.

Footnote 2:

In Jaffee v. Redmond, 14 amicus briefs were filed
supporting the recognition of a new privilege. 518 U.S. 1,
35 (1996). In this case, we have received no amicus briefs
arguing that this court must create an agent-client privilege
or that patent agents are greatly harmed by the lack
of the privilege. Nor has this court ever been properly
presented with this precise issue. Yet, patent agents have
been practicing before the USPTO for over a century.

Reyna brings up the destruction of emails:

Further, any purported need for an agent-client privilege
is greatly minimized by the fact that patent agents
and their clients have the opportunity to delete and
destroy emails and other correspondence in the period of
time between when they are exchanged and when they
would be sought in litigation. Particularly for patent
prosecution, which often occurs years before any litigation
involving the patent, patent agents and their clients may
influence any obligation to produce documents and correspondence
in litigation via their retention and destruction

Of note in the dissent:

Contrary to the Majority opinion, the attorney-client
privilege is not accorded to attorneys because they provide
legal advice or practice law, but because of their professional
status as attorneys. A communication made for the
purpose of securing a legal opinion, legal services, or
assistance in a legal proceeding is usually only privileged
if it was expressed to “a member of the bar of a court, or
his subordinate.” United States v. United Shoe Mach.
Corp., 89 F. Supp. 357, 358 (D. Mass. 1950). “There is no
doubt that the federal common law limits the attorneyclient
privilege to communications between the client and
a member of the bar or that attorney’s agent.” Duttle v.
Bandler & Kass, 127 F.R.D. 46, 52 (S.D.N.Y. 1989).


I agree with Justice Scalia that “the prototypical evidentiary
privilege analogous to the one asserted here—
the lawyer-client privilege—is not identified by the broad
area of advice giving practiced by the person to whom the
privileged communication is given, but rather by the
professional status of that person. Hence, it seems a long
step from a lawyer-client privilege to a tax advisor-client
or accountant-client privilege.” Jaffee, 518 U.S. at 20
(Scalia, J., dissenting). While a patent agent may provide
the same type of advice that a patent lawyer does—just as
a tax advisor or accountant may provide the same type of
advice that a tax attorney does—that does not necessitate
that their communications be found privileged.

The dissent mentions jailhouse lawyers:

Sperry merely held that Florida could not bar patent
agents from practicing before the USPTO as the unauthorized
practice of law. 373 U.S. at 404. That holding
does not necessitate the finding that patent agent communications
are privileged. The Supreme Court has also
held that, without providing an effective alternative,
states cannot bar inmates from providing each other legal
assistance, despite claims that this was the unauthorized
practice of law. Johnson v. Avery, 393 U.S. 483, 490
(1969). And yet such inmates, “jailhouse lawyers,” have
typically not been accorded attorney-client or a “jailhouselawyer”
privilege. Moorhead v. Lane, 125 F.R.D. 680, 686
(C.D. Ill. 1989); People v. Velasquez, 192 Cal. App. 3d 319,
329 (Ct. App. 1987); Commonwealth v. Paradiso, 507
N.E.2d 258, 262 (Mass. App. Ct. 1987); State v. Spell, 399
So. 2d 551, 556 (La. 1981).

AND "looks like a duck" comes up:

Even though patent agents practice before the
USPTO in the same way patent lawyers do, a majority of
the other courts that have considered this issue have
concluded that an agent-client privilege does not exist.
See, e.g., In re Rivastigmine Patent Litig., 237 F.R.D. 69,
102 (S.D.N.Y. 2006) (“But it does not follow that because
the agent is permitted to engage in this defined subuniverse
of legal practice, his activities are therefore equivalent
to those of a practicing attorney.”); Agfa Corp. v. Creo
Prods., Inc., No. 00-10836-GAO, 2002 WL 1787534, at *2
(D. Mass. Aug. 1, 2002) (“The ‘looks like a duck, walks like
a duck’ analysis . . . works only if it regards as insignificant
the fact that privilege is rooted, both historically and
philosophically, in the special role that lawyers have, by
dint of their qualifications and license, to give legal advice.”).


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