IP Newsflash - March 11, 2016

FEDERAL COURT CASES

Patent Agent Client - Communications Now Afforded Some Degree of Privilege Protection

The Federal Circuit, in a 2-1 opinion, and for the first time, recognized the protection of communications between United States Patent and Trademark Office registered patent agents and their clients based on a "patent agent privilege." First, relying on previous Supreme court decisions, the court acknowledged that a patent agent's "preparation and prosecution of patent application for others constitutes the practice of law" and thus should be protected. Second, the court looked to similar limited privileges—such as spousal and psychotherapist privileges—and found that the same policy considerations support a patent agent privilege. The court indicated that there is an "imperative need for confidence and trust" between patent agents and their clients. The court held that "the lack of a patent agent privilege would hinder communications between patent agents