Overview of In re Queens University at Kingston (Fed. Cir. 2016), and Open Discussion of U.S. Patent Agent Privilege in 2016

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1 Overview of In re Queens University at Kingston (Fed. Cir. 2016), and Open Discussion of U.S. Patent Agent Privilege in 2016 AIPLA Spring Meeting Minneapolis, May 19, 2016 Angela Sebor, Ph.D. Patent Agent, TOLMAR, Inc. ^ ^ AIPLA Patent Agents Committee, Programming Subcommittee TOLMAR Inc.

2 37 CFR 11.6(b) 37 CFR 11.6(b): "Agents. Any citizen of the United States who is not an attorney, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office."

3 37 CFR 11.5(b)(1) 37 CFR 11.5fb)m: To "practice before the Office"..."includes, but is not limited to: preparing and prosecuting any patent application consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office drafting the specification or claims of a patent application drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention drafting a reply to a communication from the Office regarding a patent application drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding."

4 Sperry v. Florida 373 U.S. 379 (1963) (internal citations omitted) The "preparation and prosecution of patent applications for others constitutes the practice of law" "The statute...expressly permits the Commissioner to authorize practice before the Patent Office by non-lawyers" and "it was never suggested that agents would be subject to exclusion" "[T]here is no significant difference between lawyers and nonlawyers either with respect to their ability to handle the work or with respect to their ethical conduct" "[Registration in the Patent Office does not authorize the general practice of patent law, but sanctions only the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications"

5 In re Queen's University at Kingston, Parteq Research and Development Innovations , F.3d (Fed. Cir. March 7, 2016) Case Summary Queens University at Kingston and PARTEQ Innovations sue Samsung for patent infringement Queens University refuses to produce documents: privilege Samsung asks district court to compel Queens University - communications between University employees and nonlawyer patent agents were not protected by attorney-client privilege Magistrate judge grants motion to compel District Court agrees to stay case while a petition for writ of mandamus is considered by CAFC

6 Petition Granted March 7, 2016 Majority Opinion (2-1 Decision): Communications between the non-lawyer patent agents and the University employees were privileged "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 in favor of recognizing an independent patent-agent privilege" (emphasis added) "if we hold otherwise, we frustrate the very purpose of Congress's design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office" (emphasis added)

7 Majority Opinion Privilege does not include: Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office, such as: Communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation Communications for the sale or purchase of a patent Communications on infringement

8 Dissenting Opinion "No pressing need for an agent client-privilege exists" There is a lack of public interest in finding an agentclient privilege (congressional lack of action) The new privilege created by the majority will only complicate the issue of privilege and add to its uncertainty Duty of candor and good faith before the Patent Office obviates need for a separate privilege for agents As long as a patent agent is working under the supervision of an attorney...