The Texas Supreme Court has decided that some communications between a client and a patent agent are protected as attorney-client privileged communications under Texas Rule of Evidence 503.  The decision in In re Andrew Silver was handed down on February 23, 2018.

A Dallas County Court had ordered Silver to produce e-mails between him and his non-attorney patent agent.  The underlying litigation concerned the Ziosk, which is a tablet designed to allow restaurant patrons to order and pay without having to interact with wait staff. Silver contended that the documents were protected because patent agents are effectively lawyers for purposes of Rule 503.

Patent agents are authorized under federal law to provide the same legal services as patent attorneys in practice before the USPTO.  Rule 503 defines a lawyer as “a person authorized . . . to practice law in any state or nation.”  The case turned on a detailed review of what it means to be both “authorized” and “to practice law” on behalf of a client. Because patent agents perform the same services and are subject to the same rules and requirements as patent attorneys, they authorized to practice law within their scope before the USPTO.  The final consideration was whether Rule 503 required a person to be licensed to practice law to be considered a lawyer. The Court concluded that the terms “authorized” and “licensed” – though similar – do not mean the same thing. Patent agents are authorized by the USPTO (effectively a nation) and thus fall within the definition of “lawyer” under Rule 503.

The Court held that the scope of the privilege is limited and that communications with a patent agent outside of the agent’s authorized practice area might not be protected. A trial court should conduct an incamera review of documents to determine if the privilege applies.

Written by J. Beverly

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