Texas Supreme Court Recognizes Patent Agent Privilege

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By Peter Leung

Emails between a patent agent and a client may fall within the attorney-client privilege, the Texas Supreme Court ruled Feb. 23.

The Texas privilege law covers communications between clients and those “authorized” to practice law, it said. The term “authorized” is broader than “licensed,” so it extends to patent agents, who practice some forms of law but aren’t licensed attorneys, the court said.

Patent agents can draft patents and represent clients before the Patent and Trademark Office in patent prosecution matters.

The decision brings Texas line with the U.S. Court of Appeals for the Federal Circuit, which ruled on the issue in March 2016 in In re: Queen’s University at Kingston. The Federal Circuit ruling affected only federal patent infringement cases, so state courts weren’t bound by the decision. The PTO also recognizes the patent agent privilege in its proceedings.

Non-Lawyers Practicing Law

The case before the Texas high court began after Andrew Silver invented a patent related to a tablet device used for ordering food in restaurants. He sold the patent to Tabletop Media LLC, and a contract dispute arose over royalties involved in the deal.

A lower court made an error when it said Silver’s emails with his patent agent weren’t protected, the Texas Supreme Court said.

The lower court ordered Silver to produce the emails to Tabletop, and rejected his claims that they were protected by the attorney-client privilege. A Texas appeals court affirmed the ruling, saying it had no authority to create a new privilege for patent agents.

The Texas Supreme Court reversed. It found the emails could be covered by the attorney-client privilege, which already exists under state law and isn’t a new privilege created specifically for patent agents.

The court also rejected arguments that communications with a patent agent are only privileged when that agent is acting under a lawyer’s direction. It said that the Texas Legislature intended for the privilege to apply to those who are authorized to practice law, not just those who hold a law license, so patent agents are entitled to the privilege on their own.

Only communications that “facilitate the rendition of professional legal services” are covered by the privilege, so some of the emails between Silver and his patent agent may still have to be produced, the court said.

Justice John P. Levine wrote the opinion. Ahmad, Zavitsanos Anaipakos Alavi & Mensing PC represented Silver. Norton Rose Fulbright US LLP represented Tabletop.

The case is In re Silver , 2018 BL 60512, Tex., No. 16-0682, 2/23/18 .

To contact the reporter on this story: Peter Leung in Washington at pleung@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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