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Jul 2016
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July 28, 2016

New "Patent-Agent Privilege" Addition to List of Non-Attorney Privilege Claims


The Court of Appeals for the Federal Circuit recently recognized a “patent-agent privilege” in In re Queen’s University at Kingston. In this patent infringement case, Queen’s University asserted a claim of privilege and refused to produce communications with its patent agents discussing the prosecution of patents-in-suit, despite the fact that attorneys were not involved in the communications. The issue came to the court as a writ of mandamus.

In upholding the privilege protection, the court relied on Supreme Court case law which found that non-attorney patent agents practicing before the Patent Office were practicing law, and that this practice was authorized by Congress. In recognition of the rights granted to patent agents by Congress, the Court of Appeals for the Federal Circuit held that there was a reasonable expectation that communications concerning advice on patentability and preparing a patent application would be privileged. The work a patent agent performs mirrors that of an attorney and should be given the same privilege protection; refusing to do so would frustrate Congress’ intent to allow a client to choose to use an attorney or patent agent when prosecuting patents before the Patent Office.

This case is a reminder that information requested during litigation or a government investigation may be protected from disclosure by more than just the attorney-client privilege or work product protection, including:
  • Privacy laws such as HIPAA and Gramm-Leach-Bliley;
  • Privacy protections in court filings under Rule 5.2 of the Federal Rules of Civil Procedure;
  • The Federally-authorized tax practitioner privilege;
  • Governmental privileges for entities performing work for the government;
  • The critical self-analysis privilege, which applies to internal self-analysis by an organization;
  • The employee-union representative privilege; and
  • The physician-patient privilege.
If you have any questions concerning this alert, please contact Adam Cefai (acefai@wnj.com  or 269.276.8115), Zach Nevenzel (znevenzel@wnj.com or 269.276.8136) or Catherine Collins (ccollins@wnj.com or 616.752.2473) any other member of the Data Solutions and Intellectual Property Groups.
 

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