Patent Agent Communications May Qualify as Attorney-Client Privileged

Earlier this year, The Texas Supreme Court made this decision earlier this year on February 23rd after appeals had passed through the lower Texas courts rejecting that premise.

The case before the Texas high court began after an inventor, Andrew Silver, successfully filed for a patent that covered a tablet device (“Ziosk”) that could be used for ordering food and service in restaurants.  Silver later sold the patent rights to a company called Tabletop Media LLC (“Tabletop”).  The legal dispute and case arose from a later contract dispute regarding the amount of licensing fees that were to be paid for the agreement.

Before the court, Silver made the argument that communications between the patent agent and himself should not have to be disclosed because they were protected under attorney-client privilege.  The first court to hear the case disagreed with Silver’s argument and ruled that Silver’s emails with his patent agent were not protected.  As such, the lower court ordered Silver to produce the emails to Tabletop, rejecting the argument that the communications were confidential and protected by attorney-client privilege.  After Silver appealed the holding, the Texas appellate court affirmed the ruling, saying it had no authority to create a new privilege for patent agents.

Attorney-Client Privilege Extends to Independent Patent Agents, Not Just Ones Working for an Attorney

In the final appeal, however, the Texas Supreme Court reversed the holding, finding that the emails could be covered by the attorney-client privilege.  In its holding, the Texas Supreme Court noted that it did not disagree with the lower court’s holding that no authority could be used to create a new privilege for patent agents.  Instead, the Texas Supreme Court stated the existing privilege already covered the communications.  The court also declined to agree that communications with Silver’s patent agent were only privileged if that agent was acting under an attorney’s direction.  The Texas Supreme Court instead opted to find that the Texas Legislature had intended for the privilege to apply to those who are authorized to practice law, not just those who hold a law license.  The court did note, however, that only some of the communications would be protected by attorney-client privilege, and as such, other communications would have to be turned over to Tabletop.

Patent Agent Protection Found in “Authorized” versus “Licensed” to Practice Law Statutory Language

Specifically, the Texas Supreme Court noted that the text of the statute discusses those who are “authorized” to practice law.  In its reading, the Court noted that the term “authorized” is broader than “licensed,” and as such, its protection may extend to patent agents, who practice some forms of law despite not being licensed attorneys.  This decision brings Texas in line with some federal courts, specifically the U.S. Court of Appeals for the Federal Circuit, which ruled on the same issue in March 2016.  Notably, however, the Federal Circuit ruling does not affect state cases, but the Patent Trademark Office does recognizes the patent agent’s privilege in its proceedings because it follows federal precedent.

For more information on this topic, please visit our Patent Litigation service page, which is part of our IP & Business Litigation Practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.Additional information about the litigation law firm and its litigation attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.