Yesterday, the Federal Circuit decided what it called "an
issue of first impression . . . that has split the district
courts." The Court held that communications between a
client and a non-attorney patent agent are subject to a
"patent-agent privilege," as long as the agent is
"acting within the agent's authorized practice of law
before the Patent Office.
According to the Court, "the unique roles of patent agents,
the congressional recognition of their authority to act, the
Supreme Court's characterization of their activities as the
practice of law, and the current realities of patent litigation
counsel in favor of recognizing an independent patent-agent
privilege." "[P]atent agents are not simply engaging in
law-like activity, they are engaging in the practice of law
itself. To the extent, therefore, that the traditional
attorney-client privilege is justified based on the need for candor
between a client and his or her legal professional in relation to
the
