Federal Circuit Holds That There Is Patent Agent Privilege

The United States Patent and Trademark Office ("PTO") limits the prosecution of patents and related activities to Patent Attorneys or Patent Agents. A Patent Attorney is a U.S. licensed attorney with an approved technical degree who has passed the patent bar. A Patent Agent is a non-attorney with an approved technical degree who has passed the patent bar. While Patent Agents can practice before the PTO, they cannot represent clients outside of PTO proceedings. Because Patent Agents are not attorneys, there has been a split between district courts as to whether privilege applies to a client's communications with a Patent Agent. Some courts have held that there is no Patent Agent privilege. Other courts have found a Patent Agent privilege. And yet some courts have held that a Patent Agent privilege only applies if the Patent Agent is working with and at the discretion of a licensed attorney.