In March, 2016, the Federal Circuit addressed the issue of whether a district court could compel the production of communications by and between Queen’s University and its non attorney patent agents.

Petitioners Queen’s University at Kingston and PARTEQ (together, “Queen’s University” or “Queen’s”) engaged in a patent infringement action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (together “Samsung”) in the United States District Court for the Eastern District of Texas. Queen’s sought a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non attorney patent agents on grounds that the communications are privileged The court granted Queen’s petition.

Queen’s alleged that Samsung’s SmartPause feature infringed the patents-in-suit. Throughout discovery, Queen’s University refused to produce certain documents it believed contained privileged information, specifically asserting a privilege relating to communications with its patent agents. The court noted that, “we [the court], like the parties, refer to this as a “patent agent privilege”. Samsung moved to compel production of these documents, which included communications between Queen’s University employees and its registered non-lawyer patent agents.

Queen’s filed an objection, which the district court overruled. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. Queen’s petition followed.

Samsung filed a request for inter partes review (“IPR”) on the patents-in-suit, and USPTO instituted same. The district court stayed the proceedings pending a ruling from the Patent Office. Samsung then unsuccessfully argued that the stay and the existence of the IPRs constitute changed circumstances that warrant denial of the petition for writ of mandamus, regardless of the merits.

The court found “that 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 [are] in favor of recognizing an independent patent-agent privilege”.

REYNA, Circuit Judge, dissenting

Circuit Judge Reyna’s dissent included, but was not limited to, presenting his disagreement “that this court should create a new agent-client privilege” and, his position that “Congress recognized that agents would not have the same privileges as attorneys, and no appellate court or legislature has created an agent-client privilege. An attorney-client –like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency”. (Emphasis added)

Judge Reyna’s dissent included substantive case cites and sound legal positions in support of his dissent. Judge Reyna was correct in his opinion that “Congress recognized that agents would not have the same privileges as attorneys”. However, the Queen’s case did not argue that its patent agents possessed (or should possess) the same privileges as attorneys. Instead Queen’s isolated its arguments to the matter of whether its non-attorney patent agents enjoy a privilege in their capacity as Queen’s patent agents’ before the USPTO.

The Queen’s case can be found at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-145.Opinion.3-3-2016.1.PDF