The patentee petitioned the Federal Circuit to withdraw the district court’s order compelling it to produce communications between it and its patent agent. In a case of first impression for the Federal Circuit, the court granted the petition, in reliance in part on the Supreme Court’s holding in Sperry v. State of Florida that the preparation and prosecution of patent applications for others constitutes the practice of law. On the merits, the court held that a patent agent – client privilege should exist that is limited to the scope of a patent agent’s ability to practice before the PTO, as set forth in 37 C.F.R. § 11.5(b)(1). It is the patentee’s burden to establish the relationship and which communications fall within the scope of the privilege.
In his dissent, Judge Reyna argued that the presumption against creating 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.
In re: Queen’s University at Kingston, Parteq Research and Development Innovations, Case No. 2015-145 (March 7, 2016); Opinion by: O’Malley, joined by Lourie; dissenting opinion by Reyna; Appealed From: United States District Court for the Eastern District of Texas, Gilstrap, J., Payne, Mag. Judge, on Petition for Writ of Mandamus. Read the full opinion here.
