1. The Applicability of Patent-Agent Privilege After In re Queen’s University at Kingston Presented by Rachel Perry © 2016 Workman Nydegger

2. Case Facts Parties : – Petitioners: Queen’s University at Kingston and PARTEQ (“Queen’s University”) – Respondents: Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Samsung”) Queen's University filed a complaint alleging patent infringement in the Eastern District of Texas against Samsung Queen's University alleged that Samsung's SmartPause feature infringed the patents

3. Procedural History During fact discovery, Queen's University asserted a privilege relating to communications with its patent agents, and refused to produce certain documents it believed contained privileged information Samsung moved the district court to compel the production of these documents A hearing was held on the matter, and the magistrate judge granted Samsung’s motion to compel, as a separate patent-agent privilege does not exist When Queen’s University objected to the magistrate judge’s order, the district court agreed to stay the production of the documents at issue pending a petition for writ of mandamus The Court of Appeals found a mandamus review was appropriate because patent-agent privilege was an issue of first impression for the court, resolution would avoid further inconsistent development of the doctrine, and confidentiality of the communications would be lost forever if a mandamus review was denied

4. Examination into the Existence of Patent-Agent Privilege Federal Rules of Evidence Rule 501 states: The common law—as interpreted by United States courts in the light of reason and experience—governs a claim of privilege unless any of the following provides otherwise: the United States Constitution; a federal statute; or rules prescribed by the Supreme Court. But in a civil case, state law governs privilege regarding a claim or defense for which state law supplies the rule of decision.

5. Sperry v. State of Florida ex rel. Florida Bar (1963) State of Florida attempted to regulate the activities of patent agents on grounds that those activities constitute the practice of law The Supreme Court addressed this issue in the following two stages: – Do the activities of patent agents before the Patent Office constitute the practice of law? Yes. – Does the State of Florida have the authority to regulate those activities? No.

6. Scope of the Privilege “Because patent agents are not attorneys, they are not authorized by the bar of any state to practice law. As such, before asserting the patent-agent privilege, litigants must take care to distinguish communications that are within the scope of activities authorized by Congress from those that are not.” (emphasis added)

7. Scope of the Privilege Communications are privileged if a patent agent is: – Performing any of the tasks outlined in 37 C.F.R. § 11.5(b)(1), which provides: 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 – Performing any tasks “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate”

8. Scope of the Privilege When communications fall outside the scope of the privilege: – “Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege” – Patent agent offering an opinion concerning the following: Litigation of another party’s patent Sale or purchase of a patent Infringement

9. Dissenting Opinion (J. Reyna) Judicial system relies on parties exchanging information--there is a presumption against creating new privileges No public need for privilege: – Few cases regarding patent-agent privilege have arisen – Patent agent communications were usually found privilege when they were under the supervision of an attorney – Patent agents can delete or destroy emails and correspondence after prosecution Majority did not clear define the scope of the privilege Patent agent privilege is not necessary to encourage “full and frank communication between a client and agent,” because the client already owes a “duty of candor and good faith” to the USPTO In the past, Congress and the Supreme Court have recognized a distinction between patent attorneys and non-attorney patent agents. No state has recognized a patent-agent privilege

10. Questions? http://www.cafc.uscourts.gov/sites/default/files/opinions- orders/15-145.Opinion.3-3-2016.1.PDF