In In re Queen's University At Kingston,
a divided panel of the Federal Circuit recognized a limited
"attorney"-client privilege for patent agents. The
majority's decision to recognize a patent agent privilege is
based largely on the statute permitting non-attorney patent agents
to practice before the USPTO, and a Supreme Court decision ruling
that prosecuting patent applications constitutes the practice
of law. Judge Reyna authored a dissenting opinion that challenges
the majority's reasoning on several grounds, and points out
that the newly-recognized privilege is more "complicated and
uncertain" than the majority may have realized.
The Patent Agent Privilege Question
This patent agent privilege question arose in the context of
patent litigation between Queen's University at Kingston (in
Ontario, Canada) and Samsung Electronics Co., Ltd, and Samsung
Telecommunications America, LLC. As summarized in the majority
opinion, "[t]hroughout fact discovery, Queen's
