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Patent agents, in many ways, are unique operators in our legal system. They are not attorneys; yet, they are authorized by Congress to practice law before the United States Patent and Trademark Office (PTO). This unusual status raises a host of questions, including whether communications with patent agents should be privileged and, therefore, shielded from discovery. This question has become increasingly important in recent years with the rise of litigation at the Patent Trial and Appeal Board (PTAB)--an administrative tribunal created in 2011 by the America Invents Act (AIA)--where parties can be represented either by a patent attorney or a patent agent. Patent agents have existed in the United States for almost as long as the patent system itself, so the question of how to treat patent agent communications is not new. To be sure, lower courts grappled with the question for close to seventy years, but still could not reach consensus. In 2016, the United States Court of Appeals for the Federal Circuit took up the issue in In re Queen's University at Kingston and created a new privilege protecting patent agent communications. While the court made clear that the new privilege is limited in scope, the exact boundaries remain undefined.

The PTO, too, has been navigating this patent agent privilege terrain. Before Queen's University, the agency was meeting with stakeholders and collecting comments about how to address various privilege issues that arise before the PTO, particularly with respect to PTAB proceedings. Once the Federal Circuit weighed in, it would have been perfectly reasonable for the PTO to take a wait-and-see approach. But that's not what happened. Instead, less than six months after Queen's University, the PTO forged ahead proposing its own rule on patent agent privilege that differs from the Federal Circuit's rule in potentially significant ways.

This effort to recognize a patent agent privilege is laudable. Although the sharing of information and “search for truth” are fundamental principles of our justice system, protecting communications between patent agents and clients ultimately inures to the public. Not only does it encourage frank conversations and legal advice similar to the attorney-client privilege, it also encourages innovation by making patent protection more accessible because patent agent fees are usually lower than lawyer fees. In order to be effective, however, the patent agent privilege cannot be uncertain.

The remainder of this article proceeds as follows. Part I provides background on the law of privilege in federal court. Part II explains the unique role patent agents play in our legal system, and how they've been treated to date. Part III then turns to recent developments regarding patent agents and privilege, including the Federal Circuit's decision in Queen's University and the PTO's proposed rule for patent agent privilege. Part IV concludes by high- lighting some of the inconsistencies between these rules and potential issues that may consequently arise, so we can begin to consider the best path forward.



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