In Re: Queen's University at Kingston

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: QUEEN’S UNIVERSITY AT KINGSTON,
PARTEQ RESEARCH AND DEVELOPMENT
INNOVATIONS,
Petitioners
______________________
2015-145
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 2:14-cv-00053-JRG-RSP, Magistrate Judge Roy S.
Payne, Judge J. Rodney Gilstrap.
______________________
Decided: March 7, 2016
______________________
SHAWN DANIEL BLACKBURN, Susman Godfrey L.L.P.,
Houston, TX, argued for petitioners. Also represented by
IAN B. CROSBY, RACHEL S. BLACK, Seattle, WA.
MATTHEW WOLF, Arnold & Porter LLP, Washington,
DC, argued for respondents Samsung Electronics Co.,
Ltd., Samsung Telecommunications America, LLC. Also
represented by JOHN NILSSON, JIN-SUK PARK.
______________________
Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge O’MALLEY.
Dissenting opinion filed by Circuit Judge REYNA.
2 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
O’MALLEY, Circuit Judge.
Petitioners Queen’s University at Kingston and
PARTEQ (together, “Queen’s University”) are engaged in
a patent infringement action against Samsung Electronics
Co., Ltd. and Samsung Electronics America, Inc. (togeth-
er, “Samsung”) in the United States District Court for the
Eastern District of Texas. They seek a writ of mandamus
directing the district court to withdraw its order compel-
ling the production of Queen’s University’s communica-
tions with its non-attorney patent agents on grounds that
the communications are privileged. We grant the peti-
tion.
BACKGROUND
Queen’s University at Kingston was established in
1841 and is located in Kingston, Ontario, Canada. In
1987, Queen’s University founded PARTEQ Innovations
in order to commercialize intellectual property arising
from university-generated research. Queen’s University
is the assignee of U.S. Patent Nos. 7,762,665; 8,096,660;
and 8,322,856 (the “patents-in-suit”), and PARTEQ is the
exclusive licensee. The patents-in-suit are directed to
Attentive User Interfaces, which allow devices to change
their behavior based on the attentiveness of a user—for
example, pausing or starting a video based on a user’s
eye-contact with the device.
On January 31, 2014, Queen’s University filed a com-
plaint alleging patent infringement in the Eastern Dis-
trict of Texas against Samsung. In particular, Queen’s
University alleged that Samsung’s SmartPause feature—
which is in many of Samsung’s newest devices—infringed
the patents-in-suit. The district court set trial for No-
vember 9, 2015.
Throughout fact discovery, Queen’s University re-
fused to produce certain documents it believed contained
privileged information. It produced three privilege logs
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 3
that withheld documents based, inter alia, on its assertion
of a privilege relating to communications with its patent
agents (we, like the parties, refer to this as a “patent-
agent privilege”). Samsung moved the district court to
compel the production of these documents, which included
communications between Queen’s University employees
and registered non-lawyer patent agents discussing the
prosecution of the patents-in-suit. See Samsung’s Motion
to Compel Documents, Queen’s Univ. at Kingston v.
Samsung Elecs. Co., No. 2:14-CV-53-JRG-RSP (E.D. Tex.
June 1, 2015), ECF No. 134. After holding a hearing on
the matter, the magistrate judge granted Samsung’s
motion to compel, finding that the communications be-
tween Queen’s University employees and their non-
attorney patent agents are not subject to the attorney-
client privilege and that a separate patent-agent privilege
does not exist. See Minute Entry for Proceedings Held
Before Magistrate Judge Roy S. Payne, Queen’s (E.D. Tex.
June 17, 2015), ECF No. 149.
Queen’s University filed an objection to the magis-
trate judge’s order, which the district court overruled.
The district court declined to certify the issue for interloc-
utory appeal, but agreed to stay the production of the
documents at issue pending a petition for writ of manda-
mus. Order, Queen’s (E.D. Tex. July 13, 2015), ECF No.
179. This petition followed and we ordered additional
briefing and argument to address it. Because any appeal
from the final judgment of the district court will be taken
to this court, we have jurisdiction to consider the petition
under 28 U.S.C. § 1651(a) (2012).
DISCUSSION
A. Choice of Law
When reviewing a district court’s decision, we apply
the law of the regional circuit where that district court
sits for non-patent issues, but we apply our own law for
questions impacting substantive patent questions. See In
4 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
re Spalding Sports World Wide, Inc., 203 F.3d 800, 803–
04 (Fed. Cir. 2000). Regarding discovery matters, this
court has “held that Federal Circuit law applies when
deciding whether particular written or other materials
are discoverable in a patent case, if those materials relate
to an issue of substantive patent law.” Advanced Cardio-
vascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1307
(Fed. Cir. 2001). “[W]e will apply our own law to both
substantive and procedural issues intimately involved in
the substance of enforcement of the patent right.” O2
Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1364 (Fed. Cir. 2006) (internal quotation marks
omitted) (quoting Sulzer Textil A.G. v. Picanol N.V., 358
F.3d 1356, 1363 (Fed. Cir. 2004)). “[A] procedural issue
that is not itself a substantive patent law issue is none-
theless governed by Federal Circuit law if the issue per-
tains to patent law, if it bears an essential relationship to
matters committed to our exclusive control by statute, or
if it implicates the jurisprudential responsibilities of this
court in a field within its exclusive jurisdiction.” Midwest
Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359
(Fed. Cir. 1999) (en banc in relevant part) (citations and
internal quotation marks omitted).
Applying these standards, we have held that we apply
our own law when deciding whether particular documents
are discoverable in a patent case because they relate to
issues of validity and infringement. See id. (citing Trus-
wal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207,
1212 (Fed. Cir. 1987) (“[A] determination of relevance
implicates the substantive law of patent validity and
infringement. Hence, we look to Federal Circuit law.”)).
We have also held that we apply our own law when mak-
ing “a determination of the applicability of the attorney-
client privilege to [a party’s] invention record [because it]
clearly implicates, at the very least, the substantive
patent issue of inequitable conduct.” Spalding, 203 F.3d
at 803–04. Similarly, this case involves the applicability
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 5
of privilege for a patentee’s communications with a non-
attorney patent agent regarding prosecution of the pa-
tents-in-suit. Those types of communications are poten-
tially relevant to numerous substantive issues of patent
law, including claim construction, validity, and inequita-
ble conduct. See Spalding, 203 F.3d at 803–04; Midwest
Indus., 175 F.3d at 1359. Accordingly, we apply our own
law.
B. Mandamus Review
In deciding whether to grant mandamus review for
discovery orders that turn on claims of privilege, we
consider whether: “(1) there is raised an important issue
of first impression, (2) the privilege would be lost if review
were denied until final judgment, and (3) immediate
resolution would avoid the development of doctrine that
would undermine the privilege.” In re Seagate Tech.,
LLC, 497 F.3d 1360, 1367 (Fed. Cir. 2007) (en banc)
(internal quotation marks omitted) (quoting In re Regents
of the Univ. of Cal., 101 F.3d 1386, 1388 (Fed. Cir. 1996)).
“Mandamus may thus be appropriate in certain cases to
further supervisory or instructional goals where issues
are unsettled and important.” In re Nintendo Co., 544 F.
App’x 934, 936 (Fed. Cir. 2013) (citing In re BP Lubricants
USA Inc., 637 F.3d 1307, 1313 (Fed. Cir. 2011)).
Importantly, a writ of mandamus may be granted to
overturn a district court order “only when there has been
a clear abuse of discretion or usurpation of judicial au-
thority in the grant or denial of the order.” Connaught
Lab., Inc. v. SmithKline Beecham P.L.C., 165 F.3d 1368,
1370 (Fed. Cir. 1999); see also Schlagenhauf v. Holder,
379 U.S. 104, 110 (1964) (finding that “the writ is appro-
priately issued . . . when there is ‘usurpation of judicial
power’ or a clear abuse of discretion” (quoting Bankers
Life & Cas. Co. v. Holland, 346 U.S. 379, 383 (1953))). To
prevail, a petitioner must establish that it has no other
adequate means to attain the desired relief and that its
6 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
right to issuance of the writ is “clear and indisputable.”
See Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367,
380–81 (2004); see also In re Regents of the Univ. of Cal.,
101 F.3d at 1387 (finding that the petitioner has the
burden of establishing “that its right to issuance of the
writ is clear and indisputable, and that it lacks adequate
alternative means to obtain the relief sought”) (citing
Mallard v. U.S. Dist. Court, 490 U.S. 296, 309 (1989);
Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35,
(1980)). As the issuing court, moreover, once the petition-
er establishes the two prerequisites, we then have discre-
tion to determine whether the writ is appropriate under
the circumstances. Cheney, 542 U.S. at 381.
In its petition, Queen’s University argued that man-
damus is appropriate as it is its only remedy. See Queen’s
University Appellant Br. 1–5. It argued, moreover, that
the discovery order it petitions this court to overturn
raises an issue of first impression. Id. Finally, it asserted
that, if the discovery order is left in place and the com-
munications-at-issue are produced, “the confidentiality of
those communications will be lost forever” as “[t]he [c]ourt
cannot unring that bell.” Id. at 3. In its response to
Queen’s University’s petition, Samsung contended that
mandamus is inappropriate because, even if we were to
find that a patent-agent privilege exists such that the
discovery order is clearly erroneous, the privilege issue
can be reviewed as part of a complete appeal. See Sam-
sung Pet’r Br. 14–17.
After careful consideration, we concluded that man-
damus review of the district court’s discovery order in this
case appeared appropriate. This court has not addressed
whether a patent-agent privilege exists—it is an issue of
first impression for this court and one that has split the
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 7
district courts. 1 Immediate resolution of this issue will
avoid further inconsistent development of this doctrine.
See In re MSTG, Inc., 675 F.3d 1337, 1342 (Fed. Cir.
2012) (“Mandamus review is appropriate here as to the
privilege issue. The issue of whether settlement negotia-
tions are privileged is a matter of first impression before
this court and one on which district courts are split.”).
If we were to deny mandamus, moreover, the confi-
dentiality of the documents as to which such privilege is
asserted would be lost. In the event that the documents
were produced and a judgment on the merits reached, it
would be difficult—if not impossible—for this court to
1 Compare, e.g., Buyer’s Direct Inc. v. Belk, Inc., No.
SACV 12-00370-DOC, 2012 WL 1416639, at *3 (C.D. Cal.
Apr. 24, 2012) (recognizing patent-agent privilege); Poly-
vision Corp. v. Smart Techs. Inc., No. 1:03-cv-476, 2006
WL 581037, at *2 (W.D. Mich. Mar. 7, 2006) (same); Mold
Masters Ltd. v. Husky Injection Molding Sys., Ltd., No. 01
C 1576, 2001 WL 1268587, at *4–*5 (N.D. Ill. Nov. 15,
2001) (same); Dow Chem. Co. v. Atl. Richfield Co., No. 83-
cv-3763, 1985 WL 71991, at *5 (E.D. Mich. Apr. 23, 1985)
(same); In re Ampicillin Antitrust Litig., 81 F.R.D. 377,
383–84, 391–94 (D.D.C. 1978) (same); Vernitron Med.
Prods., Inc. v. Baxter Labs., Inc., No. 616-73, 1975 WL
21161, at *1–*2 (D.N.J. Apr. 29, 1975) (same), with Prow-
ess, Inc. v. Raysearch Labs. AB, No. WDQ-11-1357, 2013
WL 247531, at *5 (D. Md. Jan. 18, 2013) (declining to
recognize patent-agent privilege); Park v. Cas Enters.,
Inc., No. 08-cv-0385 2009 WL 3565293, at *3 (S.D. Cal.
Oct. 27, 2009) (same); In re Rivastigmine Patent Litig.,
237 F.R.D. 69, 102 (S.D.N.Y. 2006) (same); Agfa Corp. v.
Creo Prods., No. Civ. A. 00-10836-GAO, 2002 WL
1787534, at *3 (D. Mass. Aug. 1, 2002) (same); and Snei-
der v. Kimberly-Clark Corp., 91 F.R.D. 1, 5 (N.D. Ill. 1980)
(same).
8 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
disentangle the effect of the production of the allegedly
privileged documents from other considerations that led
to the judgment. See Spalding, 203 F.3d at 804 (“[W]hen
a writ of mandamus is sought to prevent the wrongful
exposure of privileged communications, the remedy of
mandamus is appropriate ‘because maintenance of the
attorney-client privilege up to its proper limits has sub-
stantial importance to the administration of justice, and
because an appeal after disclosure of the privileged com-
munication is an inadequate remedy.’”) (quoting In re
Regents of Univ. of Cal., 101 F.3d at 1387).
Understanding that the legal standard for obtaining
mandamus relief is an exacting one, we found it likely
satisfied here and ordered additional briefing and argu-
ment on the merits of the privilege claim asserted.
In its supplemental briefing, Samsung informed the
court that it had filed a request for inter partes review
(“IPR”) on the patents-in-suit, that the United States
Patent and Trademark Office (“USPTO” or “Patent Of-
fice”) had instituted those IPRs, and that the district
court had stayed the proceedings pending a ruling from
the Patent Office. Samsung now argues that the current
stay of the district court action and the existence of the
IPRs constitute changed circumstances that warrant
denial of the petition for writ of mandamus, regardless of
the merits. Samsung Pet’r Br. 17–18.
Queen’s University filed its petition for writ of man-
damus in this court on July 17, 2015. Dkt. No. 1. The
magistrate judge stayed the production of the relevant
documents pending resolution of that petition in this
court. Order Granting Stay of Production, Queen’s (E.D.
Tex. July 13, 2015), ECF No. 179. Samsung then moved
to stay the proceedings entirely under the theory that (1)
the pending writ of mandamus would prejudice its ability
to prepare for trial, and (2) the refusal to grant a stay
would effectively give Queen’s University the relief it
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 9
sought, since trial likely would proceed before this court
could resolve the privilege issue. Samsung’s Emergency
Motion to Stay Pending Writ of Mandamus, Queen’s (E.D.
Tex. July 20, 2015), ECF No. 189. While that motion was
pending, the Patent Trial and Appeal Board (the “Board”)
instituted IPRs against all asserted claims of the patents-
in-suit. See Queen’s (E.D. Tex. August 10, 2015), ECF No.
197; Queen’s (E.D. Tex. July 31, 2015), ECF No. 194. The
magistrate judge then sua sponte ordered supplemental
briefing on whether institution of the IPR affects its
earlier stay of Queen’s University’s discovery obligation.
Queen’s (E.D. Tex. Aug. 14, 2015), ECF No. 199.
The court concluded—as it had previously found—
that the “production remains stayed pending resolution
by the Federal Circuit.” Stay Order at 2, Queen’s (E.D.
Tex. Aug. 28, 2015), ECF No. 214. The magistrate judge
further found that:
[g]iven the stay of Plaintiffs’ production obliga-
tions in light of their petition for writ, and further
in view of the pending IPR proceedings that have
been instituted as to all asserted claims (Dkt. Nos.
194, 197), the Court hereby STAYS the instant
matter until the later of the Federal Circuit’s reso-
lution of Plaintiffs’ writ, or the PTAB’s final adju-
dication in all instituted IPR proceedings.
Id.
Samsung contends that this order means there is no
longer any imminent threat to Queen’s University regard-
ing its production obligations. Samsung Pet’r Br. 17. As
Queen’s University noted at oral argument, however,
while the district court did stay the proceedings based on
the IPRs, it invoked only the pending mandamus petition
to stay the production of documents withheld by Queen’s
University. Oral Arg. at 02:14–02:59, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-0145.mp3; see Stay Order, Queen’s (E.D. Tex. Aug. 28,
10 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
2015), ECF No. 214 at 2 (“[T]he Court elected to stay
Plaintiffs’ production ‘pending disposition of the petition
or other order of the Court of Appeals.’ (Dkt. No. 179)
That production remains stayed pending resolution by the
Federal Circuit.”). We too do not read the district court
order as foreclosing the possibility that a denial of the
writ will require the challenged production even if the
remainder of the proceedings is stayed for other reasons.
There is, furthermore, no certainty as to when the IPR
proceedings will end or what precisely those proceedings
will resolve. It remains likely that some or all of the
documents as to which privilege is claimed are at risk of
disclosure. It also remains likely that a panel of this
court will be asked to review the very merits issues this
panel already has considered at length. And, it remains
virtually certain that future district courts will be asked
to address almost identical privilege claims. For these
reasons, while the IPR proceedings and accompanying
stay certainly weigh against mandamus relief, we do not
believe those changed circumstances offset the importance
of resolving this issue and clarifying a question with
which many district courts have struggled, and over
which they disagree.
Turning to the merits, Queen’s University’s right to
the issuance of the writ turns on whether a patent-agent
privilege exists. Because we find that such a privilege
should be acknowledged, we find that Queen’s Universi-
ty’s “right to issuance of the writ is clear and indisputa-
ble, and . . . it lacks adequate alternative means to obtain
the relief sought.” Spalding, 203 F.3d at 804–05.
C. Existence of the Patent-Agent Privilege
In federal district courts, the scope of discovery is gov-
erned by Rule 26(b)(1) of the Federal Rules of Civil Proce-
dure, which provides in relevant part: “Parties may obtain
discovery regarding any nonprivileged matter that is
relevant to any party’s claim or defense and proportional
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 11
to the needs of the case . . . . Information within this
scope of discovery need not be admissible in evidence to be
discoverable.” Thus, while the scope of permissible dis-
covery is broad, it only encompasses documents relating
to “nonprivileged matter[s].”
Rule 501 of the Federal Rules of Evidence addresses
what is privileged. Rule 501 states:
The common law—as interpreted by United
States courts in the light of reason and experi-
ence—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 re-
garding a claim or defense for which state law
supplies the rule of decision.
Fed. R. Evid. 501. “Rule 501 of the Federal Rules of
Evidence authorizes federal courts to define new privileg-
es by interpreting ‘common law principles.’” Jaffee v.
Redmond, 518 U.S. 1, 8 (1996). Rule 501 “did not freeze
the law governing the privileges of witnesses in federal
trials at a particular point in our history, but rather
directed federal courts to ‘continue the evolutionary
development of testimonial privileges.’” Jaffee, 518 U.S.
at 8–9 (quoting Trammel v. United States, 445 U.S. 40, 47
(1980)). Samsung does not contend that recognition of a
patent-agent privilege is foreclosed by the United States
Constitution, any federal statute, or any rule prescribed
by the Supreme Court. We thus turn to “reason and
experience” in order to determine whether a patent-agent
privilege is now appropriate.
We do so with caution, however, recognizing that
there is a presumption against the recognition of new
12 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
privileges. Federal courts must be cognizant of the age-
old principle that “the public . . . has a right to every
man’s evidence.” United States v. Bryan, 339 U.S. 323,
331 (1950). Indeed, the Supreme Court has warned that
evidentiary privileges “are not lightly created nor expan-
sively construed, for they are in derogation of the search
for truth.” United States v. Nixon, 418 U.S. 683, 710
(1974).
The most well-known and carefully guarded privilege
is the attorney-client privilege. It is well established that
an attorney-client privilege exists to “encourage full and
frank communication” between counselor and client and
“thereby promote broader public interests in the ob-
servance of law and administration of justice.” Upjohn
Co. v. United States, 449 U.S. 383, 389 (1981); accord
Trammel, 445 U.S. at 51 (“[P]rivilege rests on the need for
the advocate and counselor to know all that relates to the
client’s reasons for seeking representation if the profes-
sional mission is to be carried out.”). It is also without
question that the privilege attaches to a communication
made “for the purpose of securing primarily legal opinion,
or legal services, or assistance in a legal proceeding.”
Spalding, 203 F.3d at 805; see also Upjohn, 449 U.S. at
389 (stating that legal advice “can only be safely and
readily availed of when free from the consequences or the
apprehension of disclosure”).
It is true, moreover, that courts have consistently re-
fused to recognize as privileged communications with
other non-attorney client advocates, such as accountants.
See Couch v. United States, 409 U.S. 322, 335 (1973); see
also United States v. Arthur Young & Co., 465 U.S. 805,
817 (1984) (“In light of Couch, the Court of Appeals’ effort
to foster candid communication between accountant and
client by creating a self-styled work-product privilege was
misplaced, and conflicts with what we see as the clear
intent of Congress.”). The same is true for jailhouse
lawyers. See, e.g., Velasquez v. Borg, No. 93-15566, 1994
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 13
WL 327328, at *1 (9th Cir. June 8, 1994) (“Because [Peti-
tioner] does not contend that he thought [the jailhouse
lawyer] was authorized to practice law, he has not proven
a violation of the attorney-client privilege as traditionally
understood.”); Moorhead v. Lane, 125 F.R.D. 680, 686–87
(C.D. Ill. 1989) (refusing to extend the attorney-client
privilege “to communications made to a ‘jailhouse attor-
ney.’”).
Samsung concedes that, where a patent agent com-
municates with counsel or receives communications
between his client and counsel, the attorney-client privi-
lege may protect those communications from discovery.
See, e.g., Park v. Cas Enters., Inc., No. 08-cv-03, 2009 WL
3565293, at *3 (S.D. Cal. Oct. 27, 2009). It contends,
however, that, where counsel is not involved in the com-
munications—as Queen’s University concedes is the case
here—we should neither expand the scope of the attorney-
client privilege nor recognize an independent patent-
agent privilege to protect such communications from
discovery. For the reasons we explain, we find that the
unique roles of patent agents, the congressional recogni-
tion of their authority to act, the Supreme Court’s charac-
terization 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.
In Sperry v. State of Florida ex rel. Florida Bar, 373
U.S. 379 (1963), the Supreme Court was faced with a
challenge to the State of Florida’s attempt to regulate the
activities of patent agents on grounds that those activities
constitute the practice of law. The Supreme Court ad-
dressed the challenge in two stages: first, determining
whether the activities of patent agents before the Patent
Office constitute the practice of law, and, second, deter-
mining whether, if so, the State of Florida had the author-
ity to regulate those activities. The Supreme Court
answered the first question in the affirmative and the
second in the negative.
14 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
The Supreme Court expressly found that “the prepa-
ration and prosecution of patent applications for others
constitutes the practice of law.” Id. at 383. The Court
concluded that:
[s]uch conduct inevitably requires the practitioner
to consider and advise his clients as to the patent-
ability of their inventions under the statutory cri-
teria, 35 U.S.C. §§ 101–103, 161, 171, as well as to
consider the advisability of relying upon alterna-
tive forms of protection which may be available
under state law. It also involves his participation
in the drafting of the specification and claims of
the patent application, 35 U.S.C. § 112, which this
Court long ago noted “constitute[s] one of the most
difficult legal instruments to draw with accuracy.”
Id. (citations omitted). Sperry, thus, confirms that patent
agents are not simply engaging in law-like activity, they
are engaging in the practice of law itself. To the extent,
therefore, that the traditional attorney-client privilege is
justified based on the need for candor between a client
and his or her legal professional in relation to the prose-
cution of a patent, that justification would seem to apply
with equal force to patent agents.
While this threshold conclusion in Sperry is important
to our decision, it is the rest of the Sperry opinion we find
most informative. It is not the fact that—within the
limited authority granted to them by the Patent Office—
patent agents engage in the traditional practice of law
that is the most meaningful takeaway from Sperry, it is
the Supreme Court’s explanation of why states may not
regulate that practice of law that lends most support to
the recognition of a patent-agent privilege. In holding
that the State of Florida had no authority to regulate the
admitted practice of law by patent agents, the Supreme
Court emphasized that it is Congress who has authorized
and continues to permit the practice of law by patent
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 15
agents when appearing before the Patent Office. See id.
at 379 (“‘[T]he law of the State, though enacted in the
exercise of powers not controverted, must yield’ when
incompatible with federal legislation. Congress has
provided that the Commissioner of Patents ‘may prescribe
regulations governing the recognition and conduct of
agents, attorneys, or other persons representing appli-
cants or other parties before the Patent Office,’ 35 U.S.C.
§ 31, and the Commissioner, pursuant to § 31, has provid-
ed by regulation that ‘(a)n applicant for patent . . . may be
represented by an attorney or agent authorized to practice
before the Patent Office in patent cases.’ 37 CFR § 1.31.”
(citing Gibbons v. Ogden, 22 U.S. 1, 211 (1824) (footnote
omitted) (emphasis added)).
In explaining its holding, the Supreme Court dis-
cussed the history of the Patent Office’s power to regulate
patent agents. Id. at 388–400. Looking to legislative
history, the Court traced the discussion of patent agents
by Congress “back to 1861, when Congress first provided
that ‘for gross misconduct [the Commissioner of Patents]
may refuse to recognize any person as a patent agent,
either generally or in any particular case . . . .’” Id. at 388
(quoting Act of March 2, 1861, ch. 88, § 8, 12 Stat. 247).
The 1869 “Rules and Directions” issued by the Commis-
sioner “provided that ‘(a)ny person of intelligence and
good moral character may appear as the attorney in fact
or agent of an applicant upon filing proper power of
attorney.’” Id. at 388–89 (quoting Rules and Directions
for Proceedings in the Patent Office, § 127 (Aug. 1, 1869)).
“From the outset, a substantial number of those appear-
ing in this capacity were engineers or chemists familiar
with the technical subjects to which the patent applica-
tion related. ‘Many of them were not members of the bar.
It probably never occurred to anybody that they should
be.’” Id. at 389 (quoting Letter from Edward S. Rogers,
Hearings on H.R. 5527 Before the H. Comm. on Patents,
70th Cong., 1st Sess. 84 (1928)). In 1899, because non-
16 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
attorney agents were found “particularly responsible for
the deceptive advertising and victimization of inventors”
at the Patent Office, the Commissioner first required the
registration of those who practiced before the Office. Id.
at 390 (citation omitted). Then, “in 1922, the [patent]
statute was amended to expressly authorize the Commis-
sioner to prescribe regulations for the recognition of
agents and attorneys,” “to provide for the ‘creation of a
patent bar[,]’ and ‘to require a higher standard of qualifi-
cations for registry.’” Id. at 390–91 (citations omitted).
In response to a provision in a proposed bill designed
to make it a criminal offense to misrepresent oneself as a
registered patent practitioner, Congress discussed the
distinction between patent lawyers and non-lawyer
agents. Id. at 393. “[T]ime and again it was made clear
that the . . . provision was not intended to restrict practice
by agents, but was designed only to prevent them from
labeling themselves ‘patent attorneys,’ as the Patent
Office had theretofore permitted.” Id. (footnote omitted).
Congress made clear that it did not intend to hinder the
Patent Office’s right to allow non-attorney agents to
prosecute patents before it, but only to prevent them from
improperly holding themselves out as attorneys:
The proposed bills would not have affected “any
engineers or draftsmen from doing those things
which they have always been doing before the Pa-
tent Office”; the bills sought “to bring about no
change in the status of the many men now regis-
tered and entitled to practice before the Patent Of-
fice, regardless of whether they are members of
the bar or not . . . .” (Emphasis added.) “[T]here
are quite a number of solicitors of patents who are
highly qualified and who are not members of the
bar, who never graduated at law and were never
admitted to the bar. But this bill doesn’t disquali-
fy those men. They can continue to qualify as pa-
tent agents.” (Emphasis added.) When asked
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 17
“[w]hat is going to be the difference in the legal
prerogatives of the agents and the others that
come in,” the Commissioner of Patents responded
that “[t]heir rights in the Patent Office will be ex-
actly the same. Their rights in the courts will be
different.” (Emphasis added.)
Id. at 393–95 (footnotes omitted). In view of this storied
history, the Supreme Court found “strong and unchal-
lenged implications that registered agents have a right to
practice before the Patent Office.” Id. at 395. Samsung
does not challenge the proposition that the prosecution of
patents before the Patent Office constitutes the practice of
law or that non-lawyer patent agents are allowed to
engage in such practice under federal law. Nor can it,
given the Supreme Court’s clear language in Sperry. 2
2 The fact that, in the context of describing the au-
thority given to patent agents before the Patent Office,
the Commissioner of Patents mentioned that a patent-
agent privilege was not then assertable in court does not,
as the dissent implies, mean that Congress considered
and rejected the creation of such a privilege. The Com-
missioner had no authority to create in-court privileges.
The comment, moreover, was unrelated to the actual
purpose for which the Commissioner’s testimony was
solicited—i.e., the treatment of patent agents and patent
attorneys before the Patent Office. More importantly,
however, neither the Commissioner nor Congress could
have foreseen in 1928 that patent litigation would expand
as it has or that the prosecution history of patents would
take on such a meaningful role in that litigation, both in
connection with claim construction and in connection with
a variety of invalidity and unenforceability challenges.
The purpose of Rule 501 is to grant courts the authority—
and, where appropriate, the obligation—to acknowledge
18 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
The debate about whether to allow non-attorney pa-
tent agents to practice law before the Patent Office “re-
ceived continuing attention both in and out of Congress
during the period prior to 1952.” Id. at 398. In Sperry,
the Court found that the rights conferred to patent agents
are federal rights and that Congress expressly permitted
the Commissioner to promulgate regulations that allow
patent agents to practice before the Patent Office in the
1952 Patent Act. 3 Ultimately, Congress endorsed a
system in which patent applicants can choose between
patent agents and patent attorneys when prosecuting
patents before the Patent Office. Based on this, the Court
found that the State of Florida could neither prohibit nor
regulate that which federal law allowed. Id. at 379.
Today, “[t]he Office—may establish regulations, not
inconsistent with law, which—may govern the recognition
and conduct of agents, attorneys, or other persons repre-
senting applicants or other parties before the Office.” 35
U.S.C. § 2(b)(2)(D). Pursuant to these powers, the Office
has determined that “[a]ny 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 prac-
tice before the Office.” 37 C.F.R. § 11.6(b).
To the extent Congress has authorized non-attorney
patent agents to engage in the practice of law before the
Patent Office, reason and experience compel us to recog-
nize a patent-agent privilege that is coextensive with the
rights granted to patent agents by Congress. A client has
a reasonable expectation that all communications relating
to “obtaining legal advice on patentability and legal
services in preparing a patent application” will be kept
new privileges where changing circumstances and consid-
erations so warrant.
3 The Sperry Court relied on 35 U.S.C. § 31, which
has since been replaced by 35 U.S.C. § 2(b)(2)(D).
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 19
privileged. See Spalding, 203 F.3d at 806. Whether those
communications are directed to an attorney or his or her
legally equivalent patent agent should be of no moment.
Indeed, if we hold otherwise, we frustrate the very pur-
pose 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. 4
Despite Samsung’s arguments, Jaffee does not compel
a contrary result. Samsung argues that none of the
considerations set forth by the Supreme Court in Jaffee in
recognizing a psychotherapist privilege under Rule 501 of
the Federal Rules of Evidence support the privilege we
recognize here. In Jaffee, the Court relied on a number of
factors to determine that “a privilege protecting confiden-
tial communications between a psychotherapist and her
patient ‘promotes sufficiently important interests to
4 The Patent Office recently issued a “Request for
Comments on Domestic and International Issues Related
to Privileged Communications Between Patent Practi-
tioners and Their Clients.” 80 Fed. Reg. 3953 (Jan. 26,
2015). In response, the Patent Office received comments
from the Australian Government, as well as a number of
domestic and international trade groups, individuals, and
companies. See Roundtable on Domestic and Internation-
al Issues Related to Privileged Communications Between
Patent Practitioners and Their Clients,
http://www.uspto.gov/learning-and-resources/ip-policy/
roundtable-domestic-and-international-issues-related-
privileged. To the extent these comments addressed the
creation of a domestic, patent-agent privilege, they unan-
imously advocated for the recognition of a patent-agent
privilege. While such comments are, of course, neither
dispositive nor even legally persuasive, they are con-
sistent with our conclusion that the recognition of a
patent-agent privilege is appropriate.
20 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
outweigh the need for probative evidence.’” Jaffee, 518
U.S. at 9–10 (citing Trammel, 445 U.S. at 51). Among
those factors was the recognition of a psychotherapist-
patient privilege by the States, the endorsement of such a
privilege by a Judicial Conference Advisory Committee,
and the need for trust and confidence between the client
and psychotherapist. Id. at 10–15. We agree that the
circumstances addressed in Jaffee are vastly different
from those we address, and that the considerations upon
which the Supreme Court rested its decision in Jaffee are
not all applicable here. Nothing in Jaffee counsels
against our conclusion today, however.
First, in Jaffee, there was no clear congressional in-
tent to authorize an agency to create and regulate a group
of individuals with specific authority to engage in the
practice of law. As discussed above, Congress clearly
intended to allow the Patent Office to authorize non-
attorney patent agents to practice before it and Congress
has amended the Patent Act since Sperry characterized
that activity as the practice of law, but has left the au-
thority of patent agents intact. Given this fact, the case
for the recognition of a patent-agent privilege is perhaps
even stronger than that for the psychotherapist-patient
privilege defined in Jaffee.
Second, while the Jaffee Court was able to rely on a
unanimous consensus among the States to justify the
creation of the psychotherapist privilege, that fact is
irrelevant given the uniquely federal character of the
activities at issue here. 5 Sperry clearly held that “[a]
State may not enforce licensing requirements which,
5 Jaffee, 518 U.S. at 12 (“That it is appropriate for
the federal courts to recognize a psychotherapist privilege
under Rule 501 is confirmed by the fact that all 50 States
and the District of Columbia have enacted into law some
form of psychotherapist privilege.”).
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 21
though valid in the absence of federal regulation, give ‘the
State’s licensing board a virtual power of review over the
federal determination’ that a person or agency is qualified
and entitled to perform certain functions.” 373 U.S. at
385 (quoting Leslie Miller, Inc. v. State of Ark., 352 U.S.
187, 190 (1956)). Neither legislative action by the States
nor judicial decision by state courts on the issue of patent-
agent privilege would be appropriate. Under Sperry, the
States do not have legislative authority to enact laws that
conflict with the federal determination that patent agents
may practice law before the Patent Office; they, thus,
have no interest in whether communications regarding
that activity are privileged. States also have no authority
to create privileges applicable to patent actions in federal
court. 6
Third, while Samsung points to the fact that, in
Jaffee, the Court found that the recognition of the psycho-
therapist-patient privilege by the Judicial Conference
Advisory Committee on Evidence Rules “reinforced” the
unanimous consensus among the States, it remains true
that if the Advisory Committee does not recognize a
privilege, “that fact standing alone would not compel the
federal courts to refuse to recognize a privilege.” United
States v. Gillock, 445 U.S. 360, 367 (1980). This is espe-
cially true given that it was the Advisory Committee itself
that in 1974 recommended adoption of Rule 501 in its
current form—leaving to the courts the role of acknowl-
edging new privileges and taking the Advisory Committee
6 We note, moreover, that there are only rare cir-
cumstances in which communications with patent agents
would ever be at issue in non-patent, state-court matters.
Notably, in state court malpractice cases against patent
agents, the patent-agent privilege would be waived by the
very filing of the action.
22 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
out of the business of needing to do so, barring undue
delay by the courts.
Finally, analogies to the attorney-client and spousal
privileges which the Jaffee Court discussed actually
support our conclusion that a patent-agent privilege is
justified. The Court found that creation of the psycho-
therapist-patient privilege was appropriate in light of its
comparison with the attorney-client and spousal privileg-
es because each “is ‘rooted in the imperative need for
confidence and trust.’” Jaffee, 518 U.S. at 10 (quoting
Trammel, 445 U.S. at 51). Likewise, the lack of a patent-
agent privilege would hinder communications between
patent agents and their clients, undermining the real
choice Congress and the Commissioner have concluded
clients should have between hiring patent attorneys and
hiring non-attorney patent agents. 7 In this way, we find
that recognition of the patent-agent privilege “serves
public ends.” Upjohn, 449 U.S. at 389. Because patent
agents engage in the practice of law when representing
clients before the Patent Office, the patent-agent privilege
furthers the same important public interests as that of
the attorney-client privilege.
The dissent in Jaffee noted that “the lawyer-client
privilege [ ] is not identified by the broad area of advice
giving practiced by the person to whom the privileged
7 We recognize that many parties, in order to ac-
commodate the long-standing ambiguity in the law of
privilege between patent agents and their clients, include
a licensed attorney on any and all communications to
ensure that at least some privilege is maintained. This
work-around is unsuitable for a system designed to give a
real choice between selecting a non-attorney patent agent
and a patent attorney. Indeed, it prejudices most of those
independent inventors who may not have the resources to
hire a patent attorney to maintain the privilege.
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 23
communication is given, but rather by the professional
status of that person.” 518 U.S. at 20 (Scalia, J., dissent-
ing). The Supreme Court’s characterization of the activity
in Sperry coupled with the clear intent of Congress to
enable the Office to establish a dual track for patent
prosecution by either patent attorneys or non-attorney
patent agents confers a professional status on patent
agents that justifies our recognition of the patent-agent
privilege. Patent agents, moreover, must pass an exten-
sive examination on patent laws and regulations and
must have a technical or scientific degree before they may
represent patent applicants before the Patent Office.
Finally, while patent agents certainly do not have the
ethical obligations imposed on attorneys, they do have
very specific ethical obligations imposed by the Patent
Office. See Manual of Patent Examining Procedure
(“MPEP”) § 2001. The MPEP recognizes that “[a] patent
by its very nature is affected with a public interest,” and,
as such, “[e]ach individual associated with the filing and
prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a
duty to disclose to the Office all information known to
that individual to be material to patentability.” Id.
§ 2001(a). Indeed, recognizing the nature of the activities
in which patent agents engage, the Patent Office has
promulgated the “USPTO Rules of Professional Conduct,”
which conforms to the Model Rules of Professional Con-
duct of the American Bar Association. See 37 C.F.R.
§ 11.100 et seq.
D. Scope of the Privilege
Notably, application of the rules of privilege to com-
munications between non-attorney patent agents and
their clients must be carefully construed. See Nixon, 418
U.S. at 710 (“Whatever their origins, these exceptions to
the demand for every man’s evidence are
not . . . expansively construed . . . .”). Because patent
agents are not attorneys, they are not authorized by the
24 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
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.
The burden of determining which communications are
privileged and which communications fall outside the
scope of the privilege rests squarely on the party asserting
the privilege. See In re Google Inc., 462 F. App’x 975, 977
(Fed. Cir. 2012) (“The party asserting the attorney-client
privilege has the burden of establishing the relationship
and the privileged nature of the communication.” (inter-
nal quotation marks omitted) (quoting Ralls v. United
States, 52 F.3d 223, 225 (9th Cir. 1995))).
Regulations promulgated by the Office regarding the
scope of a patent agent’s ability to practice before the
Office help to define the scope of the communications
covered under the patent-agent privilege. In particular,
37 C.F.R. § 11.5(b)(1) provides:
Practice before the Office in patent matters in-
cludes, but is not limited to, preparing and prose-
cuting 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 pa-
tent application; drafting an amendment or reply
to a communication from the Office that may re-
quire written argument to establish the patenta-
bility of a claimed invention; drafting a reply to a
communication from the Office regarding a patent
application; and drafting a communication for a
public use, interference, reexamination proceed-
ing, petition, appeal to or any other proceeding be-
fore the Patent Trial and Appeal Board, or other
proceeding.
Id. Communications between non-attorney patent agents
and their clients that are in furtherance of the perfor-
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 25
mance of these tasks, or “which are reasonably necessary
and incident to the preparation and prosecution of patent
applications or other proceeding before the Office involv-
ing a patent application or patent in which the practition-
er is authorized to participate” receive the benefit of the
patent-agent privilege. Id.; see also id. § 11.5(b)(1)(i)–(ii).
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. For instance, communications with a patent
agent who is offering an opinion on the validity of another
party’s patent in contemplation of litigation or for the sale
or purchase of a patent, or on infringement, are not “rea-
sonably necessary and incident to the preparation and
prosecution of patent applications or other proceeding
before the Office.” Id.; see also Changes to Representation
of Others Before the United States Patent and Trademark
Office, 73 Fed. Reg. 47,650-01, 47,670 (Aug. 14, 2008). 8
E. It is the Court’s Role to Address the Question
The dissent’s primary themes are that we should not
recognize a patent-agent privilege because there is no
need for such a privilege and, if there were, we should
allow others to recognize it. We have addressed the first
point already. We now briefly address the second. The
8 Not only would such communications fall outside
the scope of the patent-agent privilege, they likely would
constitute the unauthorized practice of law. See id.
(discussing the range of activities that constitute the
practice of law in front of the Patent Office and noting
that “[t]he scope of activities involved in practice of
patent law before the Office is not necessarily finite, and
is subject to change as the patent statute changes and
rules are promulgated to the [sic] implement statutory
changes”).
26 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
dissent first says we should defer to Congress to create a
patent-agent privilege. But, after passage of the long-
debated Rules Enabling Act of 1934, Congress granted the
courts the authority to craft federal rules of procedure and
evidence, including rules relating to privilege. See S. Rep.
No. 1049, 73rd Cong., 2d Sess. (1934) (reprinting a letter
from then-Attorney General Homer Cummings noting
that the proposed bill would “empower the Supreme Court
of the United States to prescribe rules to govern the
practice and procedure in civil actions at law in the dis-
trict courts of the Unites States and the courts of the
District of Columbia,” leading to “uniformity and simplici-
ty in the practice in actions at law in Federal courts,”
“which, apart from its inherent merit, would also, it is
believed, contribute to a reduction in the cost of litigation
in the Federal courts”). Thus, Congress expressly and
knowingly passed the torch to the courts to address the
very question with which we are presented. The dissent’s
desire to defer to the Director of the Patent Office is
equally off-base. While the Director may have asked for
input on the question and may seek to urge rule changes
based on policy views, the Director has no authority to
create a privilege that would be applicable in court. For
these reasons, we believe we not only have the authority
to recognize this privilege, but are the ones squarely
charged with considering the question under Rule 501.
We find, consistent with Rule 501 of the Federal Rules
of Evidence, that a patent-agent privilege is justified “in
the light of reason and experience.” See Jaffee, 518 U.S.
at 8. We therefore recognize a patent-agent privilege
extending to communications with non-attorney patent
agents when those agents are acting within the agent’s
authorized practice of law before the Patent Office.
CONCLUSION
Thus, we grant Queen’s University’s petition for man-
damus relief and order the district court to withdraw its
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 27
blanket order compelling the production of documents
containing communications between Queen’s University
and its non-attorney patent agents. On remand, the court
shall assess whether any particular claim of privilege is
justified in light of the privilege we recognize today.
REVERSED AND REMANDED
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: QUEEN’S UNIVERSITY AT KINGSTON,
PARTEQ RESEARCH AND DEVELOPMENT
INNOVATIONS,
Petitioners
______________________
2015-145
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 2:14-cv-00053-JRG-RSP, Magistrate Judge Roy S.
Payne, Judge J. Rodney Gilstrap.
______________________
REYNA, Circuit Judge, dissenting.
I disagree that this court should create a new agent-
client privilege. The presumption against the creation of
new privileges has not been overcome by any showing
that the public interest will be served or that there is a
real need for such a privilege. Congress recognized that
agents would not have the same privileges as attorneys,
and no appellate court or legislature has created an
agent-client privilege. An attorney-client-like privilege
should not apply merely because someone is enabled to
practice limited law before a single specific administrative
agency.
Our federal justice system contemplates that parties
are obligated to provide each other with information
relevant to their dispute. This sharing of information has
2 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
multiple purposes. It allows each side to determine what
happened, and what the rights and responsibilities of the
parties are as they seek a judicial resolution of their
dispute. But the obligation is also a promise that our
justice system shall remain open to the public. Our
evidentiary rules allow for discovery precisely because our
justice system seeks to ascertain the truth. Truth is a
weighty interest, and procedural bars on discovery must
therefore be narrowly construed and new procedural bars
not lightly created. At first blush, it made sense, even
common sense, that the attorney-client privilege be bent
to cover patent agents. But upon informed reflection, I
found the factors courts consider in creating new privileg-
es do not favor such a creation in this case. 1 Here, the
need to ascertain the truth should prevail.
A PRESUMPTION AGAINST CREATING NEW PRIVILEGES
EXISTS
Courts must hesitate before creating new privileges.
“For more than three centuries it has now been recog-
nized as a fundamental maxim that the public . . . has a
right to every man’s evidence. When we come to examine
the various claims of exemption, we start with the prima-
ry assumption that there is a general duty to give what
testimony one is capable of giving, and that any exemp-
tions which may exist are distinctly exceptional, being so
many derogations from a positive general rule.’’ United
States v. Bryan, 339 U.S. 323, 331 (1950) (quoting 8 J.
Wigmore, Evidence § 2192, at 64 (3d ed. 1940)).
That the demand for the truth is not to be derogated
lightly is a cornerstone in the legitimacy of the U.S.
1 The Majority’s opinion is based on “the light of
reason and experience.” Maj. Op. at 26. To be clear, this
is not a dispute about law or statute, a factor that at the
outset makes me leary.
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 3
system of justice. “[E]xceptions to the demand for every
man’s evidence are not lightly created nor expansively
construed, for they are in derogation of the search for
truth.” United States v. Nixon, 418 U.S. 683, 710 (1974).
Privileges are properly recognized “only to the very lim-
ited extent that permitting a refusal to testify or exclud-
ing relevant evidence has a public good transcending the
normally predominant principle of utilizing all rational
means for ascertaining truth.” Trammel v. United States,
445 U.S. 40, 50 (1980) (quoting Elkins v. United States,
364 U.S. 206, 234 (1960) (Frankfurter, J., dissenting)).
NO SUFFICIENT PUBLIC INTEREST SUPPORTS FINDING AN
AGENT-CLIENT PRIVILEGE
A party seeking judicial recognition of a new eviden-
tiary privilege under Rule 501 must demonstrate “that
the proposed privilege will effectively advance a public
good.” In re MSTG, Inc., 675 F.3d 1337, 1345 (Fed. Cir.
2012) (quoting In re Sealed Case, 148 F.3d 1073, 1076
(D.C. Cir. 1998)).
The Majority indicates that the benefits of an agent-
client privilege would be analogous to those of the attor-
ney-client privilege. Maj. Op. at 22–23. The attorney-
client privilege is “rooted in the imperative need for
confidence and trust.” Trammel, 445 U.S. at 51. Its
purpose is to encourage full and frank communication
between an attorney and her clients and “thereby promote
broader public interests in the observance of law and
administration of justice.” Upjohn Co. v. United States,
449 U.S. 383, 389 (1981). Similarly, the Majority states
that a “patent agent privilege ‘serves public ends’” by
helping meet the “imperative need for confidence and
trust” in communications between agents and their cli-
ents. Maj. Op. at 22.
This court, however, has held that a “need for confi-
dence and trust alone[] is an insufficient reason to create
a new privilege.” In re MSTG, Inc., 675 F.3d at 1345
4 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
(citing Univ. of Pa. v. EEOC, 493 U.S. 182, 194–95 (1990)
(rejecting privilege against disclosure of academic peer
review materials)). We have explained that “the Supreme
Court has rejected new privileges under Rule 501 even
though recognition of a privilege would foster a relation-
ship based on trust and confidence.” Id.
Additionally, the unique nature of patent prosecution
practice reduces any public interest benefit achieved by a
privilege in encouraging full and frank communication
between a client and agent. Under Patent Office regula-
tions, patent lawyers, patent agents, inventors, and
assignees, among others, have “a duty of candor and good
faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that indi-
vidual to be material to patentability” of an application.
37 C.F.R. § 1.56. See also, e.g., Kingsland v. Dorsey, 338
U.S. 318, 319 (1949). As a result, the interest of encour-
aging full and frank communication is less effectively
served by creating an agent-client privilege. For example,
a client who is seeking a patent may be uncertain wheth-
er certain activity the client has performed would make
the invention she seeks to patent unpatentable. If her
attorney or agent has properly informed her of the duty of
candor to the Patent Office, however, the client will know
that she has a duty to reveal this information to her
attorney or agent, and that he must reveal it to the Pa-
tent Office if he believes it is material to patentability.
And such information revealed to the Patent Office during
the prosecution of a patent necessarily becomes public
information.
As patent agents and clients are subject to a duty of
candor before the USPTO, the Majority’s agent-client
privilege can be effective only to encourage the disclosure
of information that the client does not believe is material
to whether the invention is patentable. This is consistent
with counsel for Queens University’s statement at oral
argument that, if the district court’s order to compel was
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 5
upheld, “it’s unlikely that we’ll be able to show reversible
error, to show that the mere compulsion of these docu-
ments has so tainted the case that this court should
reverse on appeal.” Recording at 5:34, available at
http://cafc.uscourts.gov/oral-argument-recordings.
NO PRESSING NEED FOR AN AGENT-CLIENT PRIVILEGE
EXISTS
No pressing need for an agent-client privilege exists.
“[N]onlawyers have practiced before the Office from its
inception, with the express approval of the Patent Office
and to the knowledge of Congress.” Sperry v. State of Fla.
ex rel. Fla. Bar, 373 U.S. 379, 388 (1963). Only a few
cases have arisen during that time involving the issue of
an agent-client privilege, which suggests that existing
practices for dealing with the concerns the Majority seeks
to remedy are sufficient. 2
In today’s practice, patent agent communications are
usually found privileged when an agent is working under
the supervision of an attorney. See, e.g., Cuno, Inc. v. Pall
Corp., 121 F.R.D. 198, 204 (E.D.N.Y. 1988); People v.
Hairston, 444 N.Y.S.2d 853, 855 (Sup. Ct. 1981). While
some agents work as solo practitioners, “patent agents are
more commonly found in law firms or as part of an in-
house patent team for a large company.” Lisa Kennedy,
Patent Agents: Non-attorneys Representing Inventors
2 In Jaffee v. Redmond, 14 amicus briefs were filed
supporting the recognition of a new privilege. 518 U.S. 1,
35 (1996). In this case, we have received no amicus briefs
arguing that this court must create an agent-client privi-
lege or that patent agents are greatly harmed by the lack
of the privilege. Nor has this court ever been properly
presented with this precise issue. Yet, patent agents have
been practicing before the USPTO for over a century.
6 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
Before the Patent Office, 49 Advocate 21 (2006). 3 A com-
pany desiring to use a patent agent but maintain a privi-
lege may have its counsel, be it in-house or outside
counsel, supervise the agent or hire an agent already
working for a law firm.
Further, any purported need for an agent-client privi-
lege is greatly minimized by the fact that patent agents
and their clients have the opportunity to delete and
destroy emails and other correspondence in the period of
time between when they are exchanged and when they
would be sought in litigation. Particularly for patent
prosecution, which often occurs years before any litigation
involving the patent, patent agents and their clients may
influence any obligation to produce documents and corre-
spondence in litigation via their retention and destruction
policies.
Under most circumstances, a patent agent helping a
client prepare, file, and prosecute a patent application
before the Patent Office has no duty to maintain in perpe-
tuity all correspondence with the client regarding the
patent application. Similarly, it is considered good prac-
tice among attorneys to have thoughtful document reten-
tion and destruction policies, and to encourage such
practices for their clients. See, e.g., The Sedona Guide-
lines: Best Practice Guidelines & Commentary for Manag-
ing Information & Records in the Electronic Age, at iv (2d.
ed. 2007), https://thesedonaconference.org/publications,
(“Destruction is an acceptable stage in the information life
cycle; an organization may destroy or delete electronic
information when there is no continuing value or need to
retain it.”); R. Thomas Howell, Jr. & Rae N. Cogar,
Developing and Implementing a Record Retention Pro-
gram, 50 Prac. Law. (ALI-ABA) 6, 26 (2004) (“If records
are no longer of use in the business context and there are
3 See footnote 5, infra, at page 10.
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 7
no statutory, regulatory or investigative reasons to retain
them, then it is in the company’s best interest to dispose
of them.”).
It is apparent, therefore, that the practice of agents
before the USPTO has not given rise to a pressing need
for a privilege, especially given that sufficient privilege-
like safeguards already exist.
THIS COURT’S NEWLY-CREATED AGENT-CLIENT PRIVILEGE
IS COMPLICATED AND UNCERTAIN
Where a proposed privilege has many exceptions or an
uncertain scope, we should lean against creating it. See,
e.g., Upjohn, 449 U.S. at 393 (“An uncertain privilege, or
one which purports to be certain but results in widely
varying applications by the courts, is little better than no
privilege at all.”); In re MSTG, Inc., 675 F.3d at 1346
(“The existence of [] exceptions would distract from the
effectiveness, clarity, and certainty of the privilege.”).
I believe that the scope of this new privilege is more
complicated than the Majority perceives. 4 The Supreme
4 The Majority Opinion discusses how the USPTO
recently issued a “Request for Comments” on issues
including whether an agent-client privilege should exist.
Maj. Op. at 19 n.4. I question the imperative that this
court must decide this issue at this point in time when it
is already being considered by the agency authorized to
regulate patent agents. To date, the USPTO has not
recommended the creation of an agent-client privilege by
courts. Were it to do so, the USPTO would provide valua-
ble and practical guidance, such as the proper scope for
such a privilege.
While Rule 501 permits courts to create new privileg-
es “in the light of reason and experience,” there is no need
to rush to create a new privilege unrecommended by the
Judicial Conference, the USPTO, the states, or the major-
8 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
Court in Sperry did not “determine what functions are
reasonably within the scope of the practice authorized by
the Patent Office.” 373 U.S. at 402 n.47. As indicated by
the regulation cited by the Majority as “help[ing] to define
the scope of communications covered under the patent-
agent privilege,” Maj. Op. at 24, the scope of a patent
agent’s practice has not been precisely delimited. See 37
C.F.R. § 11.5(b)(1) (“Practice before the Office in patent
matters includes, but is not limited to¸ [a list of activi-
ties].”) (emphasis added). The lack of certainty regarding
the parameters of patent agent practice in turn makes the
scope of the Majority’s new privilege uncertain.
The Majority gives a few examples of activities that
would not be privileged if conducted by an agent: “[f]or
instance, communications with a patent agent who is
offering an opinion on the validity of another party’s
patent in contemplation of litigation or for the sale or
purchase of a patent, or on infringement.” Maj. Op. at 25
(citing Changes to Representation of Others Before the
United States Patent and Trademark Office, 73 Fed. Reg.
47,650-01, 47,670 (Aug. 14, 2008)).
However, 73 Fed. Reg. 47650 indicates that in some
circumstances preparing an “opinion of the validity of
another party’s patent when the client is contemplating
litigation” is properly within the scope of a patent agent’s
practice. The regulation explains that such an opinion is
properly within the scope of an agent’s practice when the
client is “seeking reexamination of the other party’s
patent.” Id. This analysis regarding reexaminations
would also be true of inter partes review and other prac-
tice before the Patent Trial and Appeal Board.
ity of courts that have previously considered this issue.
The courts should be cautious in creating a new privilege
under such circumstances.
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 9
Therefore, under the Majority’s newly created agent-
client privilege, some validity opinions drafted by an
agent will be privileged and others will not be, depending
on the client’s intent in seeking the opinion from the
agent. But how do we determine which is which, and
what does such contentious activity say about the demand
for truth?
As another example, complications arise when we
consider the scope of an agent’s authority to prepare
assignments and other contracts. Under 37 C.F.R.
§ 11.5(b)(1)(ii), in certain circumstances an agent may
properly draft assignments “in contemplation of filing or
prosecution of a patent application,” as long as the agent
“does no more than replicate the terms of a previously
existing oral or written obligation of assignment.”
The USPTO’s comments on this regulation indicate
that this express statement of what an agent is permitted
to do does not necessarily exclude agents from preparing
contracts in other circumstances. The USPTO explained
that “[t]he Office’s long-standing position has been that
‘[p]atent agents * * * cannot * * * perform various services
which the local jurisdiction considers as practicing law.
For example, a patent agent could not draw up a contract
relating to a patent, such as an assignment or a license, if
the state in which he/she resides considers drafting con-
tracts as practicing law.’’’ Changes to Representation, 73
Fed. Reg. at 47,668 (ellipses in original).
Therefore, in some respects, the scope of a patent
agent’s authorized practice varies based on state law.
Activities not expressly authorized by the USPTO’s regu-
lation are neither clearly prohibited or permitted, and
instead are permitted or prohibited based on state law
regarding the unauthorized practice of law.
As the regulation only permits an agent to prepare
contracts for assignments occurring before an application
is filed, the regulation does not address when it is appro-
10 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
priate for an agent to prepare assignments while an
application is pending or after a patent issues. However,
the USPTO comments on the regulation indicate that, in
some circumstances, an agent may properly draw up an
assignment for an issued patent. Id. Yet, in some cir-
cumstances, doing so would be outside the scope of an
agent’s authorized practice before the USPTO. Id. 5
I believe that advising clients on whether a privilege
would apply in court to the various acts a patent agent
might be asked to perform is itself outside the scope of an
agent’s authorized practice before the USPTO. Therefore,
a client concerned about maintaining a privilege may
need to hire an attorney to determine whether this court’s
newly created agent-client privilege would apply in her
circumstances.
CONGRESS AND THE SUPREME COURT HAVE RECOGNIZED A
DIFFERENCE BETWEEN AGENTS AND LAWYERS
The Majority Opinion focuses on Congress’s approval
of patent agents to practice before the USPTO. I do not
see this approval as Congress seeking to vest patent
agents with all benefits and obligations of an attorney.
Rather, Congress saw the need to regulate agents’ prac-
tice before the USPTO by limitation and restriction, and
by ensuring that the distinction between a patent agent
5 See, e.g., David Hricik, Patent Agents: The Person
You Are, 20 Geo. J. Legal Ethics 261, 269 (2007) (“Patent
agents are often employed by law firms that do not limit
their practice to patent prosecution.”). Query whether a
patent agent may direct a patent lawyer, or own an
enterprise limited to USPTO practice that employs patent
lawyers? Does not this new privilege create a slippery
slope toward the practice of law being treated not as a
profession, but as a mere trade? These questions have not
been explored by the court, but should they be?
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 11
and a patent lawyer was clear and bright, for the public
good.
In a hearing before the House Committee on Patents
in 1928, several members of Congress challenged the
USPTO’s practice at that time of allowing patent agents
to call themselves “patent attorneys,” as they found it
misleading. Prevention of Fraud in Practice Before the
Patent Office: Hearing on H.R. 5527 Before the H. Comm.
on Patents, 70th Cong., 1st Sess. 17–19 (1928). For ex-
ample, one member of Congress explained that it was
misleading to inventors when they hired a “patent attor-
ney” to prosecute a patent expecting that they were hiring
a lawyer who would also be able to help them protect
their rights in court. Id. at 19. 6
In discussing a law that would restrict patent agents
from using the terms “patent lawyers” and “patent attor-
neys,” both a member of Congress and the Commissioner
of Patents indicated that they thought “the law [] should
be made so plain that it would give the public all the
notice possible as to just whom a man is employing, and
what the extent of that person’s privileges may be when
he comes to employ him to handle his work.” Id. at 16.
To remedy this confusion between agents and attor-
neys, a regulation that “prohibited agents so registered
from representing themselves to be attorneys, solicitors or
lawyers” was promulgated, as the Supreme Court in
6 The Patent Office initially allowed patent agents
to use the term “attorney” (but not “lawyer”) because they
were considered to be “attorneys-in-fact.” Id. at 17, 22–
23, 68, 91. An “attorney-in-fact” is “[s]trictly, one who is
designated to transact business for another; a legal
agent.” Attorney, Black’s Law Dictionary (10th ed. 2014).
In contrast, an “attorney-at-law” is defined as “[s]omeone
who practices law; LAWYER.” Id.
12 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
Sperry noted. 373 U.S. at 393 n. 29. See 37 C.F.R.
§ 11.704(b) (“A registered practitioner who is an attorney
may use the designation ‘Patents,’ ‘Patent Attorney,’
‘Patent Lawyer,’ ‘Registered Patent Attorney,’ or a sub-
stantially similar designation. A registered practitioner
who is not an attorney may use the designation ‘Patents,’
‘Patent Agent,’ ‘Registered Patent Agent,’ or a substan-
tially similar designation”). 7 The focus on this distinction
is an indication that allowing agents to practice before the
USPTO was not intended to work to confer on patent
agents the professional status of lawyers.
Similarly, in Sperry the Supreme Court recognized a
distinction between non-attorney patent agents and
lawyers formally admitted to practice before a state bar.
373 U.S. at 394–96. As one district court has stated, “[t]o
argue that because a patent agent competently engages in
legal activities similar to those of an attorney, he should
be accorded the status of an attorney is to turn the logic of
Sperry on its head. Sperry held that although patent
agents are not equivalent to attorneys, they may engage
in the practice of law with respect to patent activities
7 The USPTO’s regulation prohibiting non-attorney
patent agents from marketing themselves as “attorneys”
took effect in 1959. 37 C.F.R. § 1.345(c) (1959) (“No agent
shall, in any material specified in paragraph (b) of this
section or in papers filed in the Patent Office, represent
himself to be an attorney, solicitor, or lawyer.”). Though
non-attorney agents challenged the promulgation of this
regulation, it was upheld. See Evans v. Watson, 269 F.2d
775, 777–78 (D.C. Cir. 1959) (affirming the USPTO’s
regulation that prevents a non-attorney patent agent
from representing himself to be an attorney, solicitor or
lawyer); cf. People v. Miller, 252 N.Y.S.2d 497, 498 (N.Y.
1964) (“The connotation of the word ‘attorney’ needs no
elucidation.”).
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 13
before the U.S. Patent Office, as authorized by Congress.”
In re Rivastigmine Patent Litig., 237 F.R.D. 69, 102
(S.D.N.Y. 2006); see also, e.g., Agfa Corp. v. Creo Products,
Inc., No. CIV.A. 00-10836GAO, 2002 WL 1787534, at *3
(D. Mass. Aug. 1, 2002) (“[U]nderlying the issue resolved
in Sperry is the recognition that there is a clear distinc-
tion between a non-lawyer patent agent and a lawyer
formally admitted to practice before a state bar.”).
The Majority reasons that agents must have a privi-
lege because otherwise it would “frustrate [Congress’s
purpose] to afford clients the freedom to choose between
an attorney and a patent agent.” Maj. Op. at 19. Would
that analysis also require permitting agents to practice
before courts, for example, in appealing the USPTO’s
rejection of patent claims to this court? It seems that a
client in that situation who hired an agent is disadvan-
taged in needing to additionally hire a patent lawyer,
whereas someone who had hired a patent lawyer to prose-
cute the patent before the USPTO could continue to use
the same lawyer before this court.
CONGRESS INTENDED THAT AGENTS NOT HAVE A PRIVILEGE
“[I]n determining whether a new privilege should be
adopted, courts look to whether Congress had considered
that or related questions.” In re MSTG, Inc., 675 F.3d at
1343 (citing Univ. of Pa., 493 U.S. at 189).
As discussed below, Congress was aware already in
1928 that agents would not be able to claim a privilege on
behalf of their clients if the patents they helped prosecute
became involved in litigation. While Congress recognized
that allowing clients to use patent agents would provide
some advantages and disadvantages, no legislation has
been adopted creating an agent-client privilege. It is not
appropriate for this court to “strike the balance differently
from the one Congress has already adopted.” Id. at 1344.
14 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
The Majority cites with approval, as did the Supreme
Court in Sperry, certain testimony from the Commission-
er of Patents before Congress in 1928 that the rights of
patent agents before the Patent Office were to be exactly
the same as patent lawyers:
When asked “[w]hat is going to be the difference
in the legal prerogatives of the agents and the
others that come in,” the Commissioner of Patents
responded that “their rights in the Patent Office
will be exactly the same. Their rights in the courts
will be different.” (Emphasis added.)
Sperry, 373 U.S. at 294 (quoting Prevention of Fraud in
Practice Before the Patent Office: Hearings on H.R. 5527
Before the H. Comm. on Patents, 70th Cong., 1st Sess. 15
(1928)); Maj. Op. at 16–17.
As this testimony indicates, patent agents’ rights in
the courts would be different. The Commissioner of
Patents further explained that patent agents’ rights in
court would be different from those of patent lawyers in
two respects: patent agents would not be able to represent
their clients in court, and they would also not be able to
claim privilege for their clients in court. 8 This exchange
8 The testimony was as follows:
Mr. JENKINS. What is going to be the difference
in the legal prerogatives of the agents and the
others that come in?
Commissioner ROBERTSON. Their rights in the
Patent Office will be exactly the same. Their
rights in the courts will be different. For example,
a man who is merely a patent agent under the
present law, who is not a patent attorney and is
not a member of the bar, cannot take his case to
the court of appeals. He will have to employ
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 15
demonstrates that the USPTO, the agency authorized by
Congress to regulate patent agents, and Congress under-
stood that they were not extending a privilege to patent
agents. Congress knew that the agents it was authorizing
to practice before the Patent Office would not be able to
claim a privilege on behalf of their clients, and it did not
consider creating such a privilege. In this manner, Con-
gress has already expressed its intent, one that this court
has no apparent basis at this time to override. When the
Majority asserts that not creating an agent-client privi-
lege would “undermin[e]” Congress’s decision to allow
agents to practice, it overlooks the fact that Congress
understood that patent agents would not have such a
privilege. Maj. Op. at 22.
somebody else who is a member of the bar to take
his case to the court of appeals. So, when this bill
goes through, we will have patent attorneys,
members of the bar, and patent agents, nonmem-
bers of the bar, all having the same prerogatives
in the Patent Office, except this, that if their cli-
ents get mixed up in court proceedings–
Mr. JENKINS. They will be employing as a patent
lawyer to represent them a man who is not a pa-
tent lawyer here in the courts?
Commissioner ROBERTSON. Not that, but if
their clients get mixed up in civil proceedings in
the courts, the one who has a lawyer for his attor-
ney will have a lawyer who is able to claim privi-
lege for his client; but the man who has an agent
for his attorney will not be able to claim that priv-
ilege.
Prevention of Fraud in Practice Before the Patent Office:
Hearing on H.R. 5527 Before the H. Comm. on Patents,
70th Cong., 1st Sess. 15 (1928).
16 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
The Majority attempts to discount the exchange de-
scribed above by stating that it was “unrelated to the
actual purpose for which the Commissioner’s testimony
was solicited—i.e., the treatment of patent agents and
patent attorneys before the Patent Office.” Maj. Op. at 17
n.2. That is not correct. Congress sought the Commis-
sioner to testify regarding certain proposed legislation.
Prevention of Fraud in Practice Before the Patent Office:
Hearing on H.R. 5527 Before the H. Comm. on Patents,
70th Cong., 1st Sess. 5 (1928). One provision of that
legislation made it unlawful for agents to hold themselves
out as lawyers or attorneys unless they were “legally
admitted to practice law in a State or Territory,” or cer-
tain other areas like the District of Columbia. Id. at 2.
This testimony was regarding that provision. See id. at
14.
The Majority discounts that Congress understood that
agents authorized to practice before the USPTO would not
have a privilege in courts by asserting that “neither the
Commissioner nor Congress could have foreseen in 1928
that patent litigation would expand as it has.” Maj. Op.
at 17 n.2. This assertion is irrelevant. Even if it were
relevant, the growth of patent litigation is not limited to
recent years. 9 The swing of the patent litigation pendu-
lum is well known in the industry.
9 Recent scholarship has indicated that, in the mid-
to late-1800s, the United States experienced a period
where patent litigation surged. Christopher Beauchamp,
The First Patent Litigation Explosion, 125 Yale L. J. 796
(2016). “[T]he nineteenth century saw an even bigger
surge of patent cases” than the twenty-first century has.
Id. at Abstract. For example, “[e]ven the absolute quanti-
ty of late-nineteenth-century patent cases bears compari-
son to the numbers filed in recent years: the Southern
District of New York in 1880 would have ranked third on
the list of districts with the most patent infringement
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 17
The Majority states that “neither the Commissioner
nor Congress could have foreseen in 1928 . . . that the
prosecution history of patents would take on such a
meaningful role in [] litigation, both in connection with
claim construction and in connection with a variety of
invalidity and unenforceability challenges.” Maj. Op. at
17 n.2. However, this factor, even if true, is irrelevant to
whether there should be an agent-client privilege, as the
prosecution history of a patent is never protected by any
privilege.
Prosecution history is “the public record of the patent
proceedings.” Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 727 (2002). Prosecution
history, also known as the “file wrapper” of a patent,
“consists of the complete record of the proceedings before
the PTO and includes the prior art cited during the exam-
ination of the patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1317 (Fed. Cir. 2005).
For good reason, the prosecution histories of all pa-
tents are open to public inspection under 37 C.F.R. § 1.11.
In most cases, a patent’s prosecution history can even be
found online freely available for download from the
USPTO’s website. While it may be true that prosecution
histories have taken on a more significant role in litiga-
tion since 1928, the full range of the history of a patent’s
prosecution rightfully continues to remain open to the
public’s full scrutiny. 10
suits filed in 2014 and would have headed the list as
recently as 2010.” Id.
10 The Majority states that Congress has since 1934
“passed the torch” for creating new privileges to the
courts. Maj. Op. at 26. This is incorrect. For example, in
1998 Congress created a limited privilege for non-lawyers
authorized to practice before the Internal Revenue Ser-
18 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
NO STATE HAS CREATED AN AGENT-CLIENT PRIVILEGE
“[T]he policy decisions of the States bear on the ques-
tion whether federal courts should recognize a new privi-
lege or amend the coverage of an existing one.” Jaffee,
518 U.S. at 12–13. In Jaffee, the Supreme Court indicat-
ed that the propriety of federal court recognition of a
psychotherapist privilege under Rule 501 was “confirmed
by the fact that all 50 States and the District of Columbia
have enacted into law some form of psychotherapist
privilege.” Id. at 12. Here, in contrast, we are aware of
no state that has enacted legislation recognizing an agent-
client privilege.
The Majority argues that this factor is “irrelevant giv-
en the uniquely federal character of the activities at issue
here.” Maj. Op. at 20. However, the Supreme Court’s
determination in Sperry that states cannot prohibit
patent agents from practicing before the USPTO does not
mean that the state courts and legislatures could not have
recognized an agent-client privilege. To the contrary,
states do have the legislative authority to create an agent-
client privilege, and doing so would not “conflict with the
federal determination that patent agents may practice
law before the Patent Office.” Maj. Op. at 21.
As states establish their own requirements for claim-
ing privilege in their courts, state courts do not have to
recognize federal common law privileges under Rule 501.
“Federal decisions on testimonial privileges are not bind-
ing on the states.” Loesche v. State, 620 P.2d 646, 649 n.4
(Alaska 1980). See also, e.g., People v. Gonzales, 296 P.3d
945, 966–67 (Cal. 2013) (“In Jaffee . . . the United States
Supreme Court adopted a psychotherapist-patient privi-
lege applicable in federal proceedings, but the Jaffee
vice. 26 U.S.C. § 7525; United States v. Frederick, 182
F.3d 496, 502 (7th Cir. 1999).
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 19
decision was grounded in the Federal Rules of Evidence,
not the federal Constitution, and subsequent lower court
decisions confirm that the federal psychotherapist-patient
privilege recognized in Jaffee ‘is not rooted in any consti-
tutional right of privacy.’”) (footnote omitted); State v.
Roach, 669 N.E.2d 1009, 1011–12 (Ind. Ct. App. 1996)
(reversing a trial court’s expansion of Indiana privilege
law, which had been based in part on a United States
Supreme Court decision on federal common law privi-
lege). 11 States could have previously recognized an agent-
client privilege. And this court’s decision will neither
obligate states to recognize an agent-client privilege nor
prohibit them from recognizing one.
Indeed, the federal common law privilege law does not
even control all proceedings in federal courts. State
privilege law governs in federal civil cases “regarding a
claim or defense for which state law supplies the rule of
decision.” Fed. R. Evid. 501. In Lebovitz v. Hartford
Insurance Co. of the Midwest, 918 F. Supp. 2d 422, 425–26
(W.D. Pa. 2013), the court noted that Jaffee was not
dispositive of whether a social worker was protected by
Pennsylvania’s statutory “psychiatrist/licensed psycholo-
gist privilege,” as it was a diversity action in which Penn-
sylvania privilege law applied.
States have applied state law in the past when deter-
mining whether to grant agents a privilege. See, e.g.,
Kent Jewelry Corp. v. Kiefer, 113 N.Y.S.2d 12, 16 (Sup. Ct.
1952) (applying New York law to determine if communi-
cations between a patent agent and client were privi-
leged).
11 Also, for example, under California law, no privi-
lege can be recognized in the absence of an express statu-
tory provision. Cal. Evid. Code § 911; Chronicle Publ’g
Co. v. Superior Court, 354 P.2d 637, 645 (Cal. 1960).
20 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
The fact that Congress has authorized patent agents
to practice before the Patent Office does not require a
different result: Congress also authorized patent lawyers
to practice before the Patent Office, but states apply state
law in determining whether to grant them a privilege as
well. See, e.g., R.G. Egan Equip., Inc. v. Polymag Tek,
Inc., 758 N.Y.S.2d 763, 771 (Sup. Ct. 2002) (applying New
York law to determine if correspondence between a patent
attorney and client was protected by the attorney-client
privilege); Zirn v. VLI Corp., 621 A.2d 773, 780 (Del.
1993) (applying Delaware law to determine whether
communications with patent counsel that was practicing
before the Patent Office were privileged); Beacon Oil Co.
v. Perelis, 160 N.E. 892, 894 (Mass. 1928) (citing Massa-
chusetts case law in determining if communications with
patent attorneys were privileged). See also, e.g., In re
Monsanto Co., 998 S.W.2d 917, 931 (Tex. App. 1999)
(applying Texas law to determine if correspondence about
patent application with attorneys was protected by the
attorney-client privilege).
It is interesting to contemplate how the Majority de-
termines that a federal common law agent-client privilege
should be created, but nonetheless finds that for a state
court to have recognized such a privilege would conflict
with federal patent law. In addition, the Majority does
not address why a state would lack authority to create a
privilege when federal patent law issues arise in cases
that state courts may properly adjudicate, such as cases
involving malpractice, fraud, licenses, and contracts
involving patent rights. See, e.g., HIF Bio, Inc. v. Yung
Shin Pharm. Indus. Co., 600 F.3d 1347, 1354 (Fed. Cir.
2010) (cases implicating patent law issues do not arise
under federal patent law if an alternative, non-patent
theory may entitle the plaintiffs to their requested relief);
see also, e.g., Bd. of Regents, Univ. of Tex. Sys. v. Nippon
Tel. & Tel. Corp., 414 F.3d 1358, 1365 (Fed. Cir. 2005).
Admittedly, the frequency with which the issue of an
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 21
agent-client privilege arises in state courts is less than,
for example, a psychotherapist privilege. However, there
is nothing prohibiting states from recognizing an agent-
client privilege. As no states have recognized an agent-
client privilege, the fact that this court’s decision will not
be binding on state courts or federal courts in diversity
cases weighs against creating a privilege here. Having
overlooked these circumstances, this court’s decision will
only serve to create confusion and uncertainty regarding
whether the agent-client privilege applies, for yesterday
none existed.
THE JUDICIAL CONFERENCE ADVISORY COMMITTEE DID NOT
RECOMMEND CREATING AN AGENT-CLIENT PRIVILEGE
Related history of the Judicial Conference of the Unit-
ed States weighs against finding a privilege here. First,
the Judicial Conference Advisory Committee did not
recommend an agent-client privilege in its 1973 proposed
rules of evidence. Second, it appears that the Judicial
Conference has not in recent years recommended such a
privilege be created nor taken up the issue.
“[I]n determining whether new privileges should be
recognized, the Supreme Court has been influenced by the
list of evidentiary privileges recommended by the Adviso-
ry Committee of the Judicial Conference in its proposed
Federal Rules of Evidence.” In re MSTG, Inc., 675 F.3d at
1342–43 (citing Jaffee, 518 U.S. at 13–14; United States v.
Gillock, 445 U.S. 360, 367–68 (1980)).
“Under the Judicial Conference proposed rules sub-
mitted to Congress, federal courts would have been per-
mitted to apply only nine specifically enumerated
privileges, except as otherwise required by the Constitu-
tion or provided by Acts of Congress.” Gillock, 445 U.S. at
367. “Congress substituted the present language of Rule
501 for the draft proposed by the Advisory Committee of
the Judicial Conference of the United States to provide
22 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
the courts with greater flexibility in developing rules of
privilege on a case-by-case basis.” Id.
While the Advisory Committee’s nine privileges were
not adopted, the Supreme Court’s holding in Gillock that
Rule 501 did not include a state legislative privilege
“relied, in part, on the fact that no such privilege was
included in the Advisory Committee’s draft.” In re MSTG,
Inc., 675 F.3d at 1345. Similarly, the Supreme Court in
Jaffee found it persuasive in creating a psychotherapist
privilege “that a psychotherapist privilege was among the
nine specific privileges recommended” by the Judicial
Conference Advisory Committee when it submitted its
Proposed Federal Rules of Evidence. 518 U.S. at 14.
An agent-client privilege was not among the nine
privileges included in the Advisory Committee’s draft
Rules of Evidence. S. Rep. No. 93-1277 (1974), reprinted
in 1974 U.S.C.C.A.N. 7051, 7058. The Supreme Court’s
analysis of other proposed new privileges since the draft
rules were proposed indicates that this weighs against
creating an agent-client privilege.
Further, as the Judicial Conference is the national
policy-making body for the federal courts, it remains
tasked with “carry[ing] on a continuous study of the
operation and effect of the general rules of practice and
procedure now or hereafter in use as prescribed by the
Supreme Court for the other courts of the United States
pursuant to law.” 28 U.S.C. § 331.
The Judicial Conference is charged with recommend-
ing to the Supreme Court any changes in federal court
procedures that it deems “desirable to promote simplicity
in procedure, fairness in administration, the just deter-
mination of litigation, and the elimination of unjustifiable
expense and delay.” Id.
To my understanding, the Advisory Committee has
not even considered the issue of whether an agent-client
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 23
privilege should be created, at least not within the past
decade. That the Advisory Committee has not enter-
tained the issue also weighs against creating an agent-
client privilege. 12
LAWYERS HOLD A PRIVILEGE BECAUSE OF THEIR
PROFESSIONAL STATUS
Contrary to the Majority opinion, the attorney-client
privilege is not accorded to attorneys because they provide
legal advice or practice law, but because of their profes-
sional status as attorneys. A communication made for the
purpose of securing a legal opinion, legal services, or
assistance in a legal proceeding is usually only privileged
if it was expressed to “a member of the bar of a court, or
his subordinate.” United States v. United Shoe Mach.
Corp., 89 F. Supp. 357, 358 (D. Mass. 1950). “There is no
doubt that the federal common law limits the attorney-
client privilege to communications between the client and
a member of the bar or that attorney’s agent.” Duttle v.
Bandler & Kass, 127 F.R.D. 46, 52 (S.D.N.Y. 1989).
Courts in the past have regularly rejected attempts to
extend an attorney-client-type privilege to non-lawyers,
even when those non-lawyers act in a role also played by
lawyers in other cases. See, e.g., Couch v. United States,
409 U.S. 322, 335 (1973) (no accountant-client privilege);
Velasquez v. Borg, No. 93-15566, 1994 WL 327328, at *1
(9th Cir. June 8, 1994) (no “jailhouse-lawyer” privilege);
Moorhead v. Lane, 125 F.R.D. 680, 686–87 (C.D. Ill. 1989)
12 I disagree with the Majority that the adoption of
Rule 501 means that the Judicial Conference may no
longer recommend that federal courts recognize certain
privileges. For example, in 2007, the Judicial Conference
recommended a new rule about the waiver of a specific
privilege, the attorney-client privilege. See Fed. R. Evid.
502 advisory committee notes.
24 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
(same); Dabney v. Inv. Corp. of Am., 82 F.R.D. 464, 466
(E.D. Pa. 1979) (no law-student privilege).
I agree with Justice Scalia that “the prototypical evi-
dentiary privilege analogous to the one asserted here—
the lawyer-client privilege—is not identified by the broad
area of advice giving practiced by the person to whom the
privileged communication is given, but rather by the
professional status of that person. Hence, it seems a long
step from a lawyer-client privilege to a tax advisor-client
or accountant-client privilege.” Jaffee, 518 U.S. at 20
(Scalia, J., dissenting). While a patent agent may provide
the same type of advice that a patent lawyer does—just as
a tax advisor or accountant may provide the same type of
advice that a tax attorney does—that does not necessitate
that their communications be found privileged.
As the Supreme Court discussed in Sperry, patent
agents are like other non-lawyers Congress has permitted
to practice before federal agencies. 373 U.S. at 388, 396–
400; 5 U.S.C. § 555. For example, under 8 C.F.R. § 292.1,
certain categories of non-lawyers are authorized to repre-
sent others in immigration proceedings. See, e.g.,
Ramirez v. Immigration & Naturalization Serv., 550 F.2d
560, 563–64 (9th Cir. 1977). For some of the categories,
the non-lawyers do not need to have any training or
certification to represent parties in immigration proceed-
ings. 13 See, e.g., 8 C.F.R. § 292.1(3). 14
13 Patent Office regulations also permit unregistered
individuals “to prosecute as attorney or agent” before the
Patent Office, in limited circumstances. 37 C.F.R.
§ 11.9(a).
14 Apparently no courts have recognized a privilege
for these non-lawyers representing others in immigration
proceedings. See, e.g., United States v. Arango-Chairez,
875 F. Supp. 609, 612 n.3 (D. Neb. 1994); Ann Naffier,
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 25
While the Majority asserts that it is “without question
that the privilege attaches to a communication made ‘for
the purpose of securing primarily legal opinion, or legal
services, or assistance in a legal proceeding,’” Maj. Op. at
12 (citing Spalding, 203 F.3d at 805), this court in Spal-
ding actually held “that an invention record constitutes a
privileged communication, as long as it is provided to an
attorney ‘for the purpose of securing primarily legal
opinion, or legal services, or assistance in a legal proceed-
ing.’” Id. (quoting Knogo Corp. v. United States, No. 194-
79, 1980 WL 39083 (Ct. Cl. 1980)) (emphases added).
THE SUPREME COURT HAS NEVER HELD THAT PATENT
AGENTS PRACTICE LAW
Even if a privilege should extend to anyone who prac-
tices law, the Supreme Court has never held that patent
agents practice law. The Majority describes the Supreme
Court in Sperry as “determining [that] the activities of
patent agents before the Patent Office constitute the
practice of law.” Maj. Op. at 13. However, the Court in
Sperry did not hold that patent agents practice law. What
it said was that it did “not question the [Supreme Court of
Florida’s] determination that under Florida law the
preparation and prosecution of patent applications for
others constitutes the practice of law.” Sperry, 373 U.S.
at 383.
In support, the Supreme Court cited two cases that
stand for the proposition that state courts are the final
authority on interpreting state law: Greenough v. Tax
Assessors, 331 U.S. 486, 497 (1947) (state courts “are the
final judicial authority upon the meaning of their state
Attorney-Client Privilege for Nonlawyers? A Study of
Board of Immigration Appeals-Accredited Representatives,
Privilege, and Confidentiality, 59 Drake L. Rev. 583, 600
(2011).
26 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
law”); and Murdock v. City of Memphis, 87 U.S. 590, 635
(1874) (“we must receive the decision of the State courts
as conclusive” on issues not conferred by statute on feder-
al courts).
Sperry merely held that Florida could not bar patent
agents from practicing before the USPTO as the unau-
thorized practice of law. 373 U.S. at 404. That holding
does not necessitate the finding that patent agent com-
munications are privileged. The Supreme Court has also
held that, without providing an effective alternative,
states cannot bar inmates from providing each other legal
assistance, despite claims that this was the unauthorized
practice of law. Johnson v. Avery, 393 U.S. 483, 490
(1969). And yet such inmates, “jailhouse lawyers,” have
typically not been accorded attorney-client or a “jailhouse-
lawyer” privilege. Moorhead v. Lane, 125 F.R.D. 680, 686
(C.D. Ill. 1989); People v. Velasquez, 192 Cal. App. 3d 319,
329 (Ct. App. 1987); Commonwealth v. Paradiso, 507
N.E.2d 258, 262 (Mass. App. Ct. 1987); State v. Spell, 399
So. 2d 551, 556 (La. 1981).
CONGRESS DID NOT LEGISLATE FOR AGENTS TO PRACTICE
LAW
Congress never believed that patent agents practice
law, but rather that agents could appear and practice
before an administrative agency. For example, in discuss-
ing the need for a method of disciplining patent agents
who defrauded clients, as bar associations had no authori-
ty over them, a member of Congress stated “[a] patent
attorney is not allowed to practice law as a regular attor-
ney is allowed. He is not required to have the same legal
training and skill and experience and so forth.” 62 Cong.
Rec. 1064–65 (1922) (emphasis added). See also, e.g., 59
Cong. Rec. 3926 (1920) (“In order to become a patent
attorney does a man have to go through an examination?
Does he have to establish good character and all that kind
IN RE: QUEEN’S UNIVERSITY AT KINGSTON 27
of thing? Attorneys who practice law have to do that.”)
(emphasis added).
Even though patent agents practice before the
USPTO in the same way patent lawyers do, a majority of
the other courts that have considered this issue have
concluded that an agent-client privilege does not exist.
See, e.g., In re Rivastigmine Patent Litig., 237 F.R.D. 69,
102 (S.D.N.Y. 2006) (“But it does not follow that because
the agent is permitted to engage in this defined subuni-
verse of legal practice, his activities are therefore equiva-
lent to those of a practicing attorney.”); Agfa Corp. v. Creo
Prods., Inc., No. 00-10836-GAO, 2002 WL 1787534, at *2
(D. Mass. Aug. 1, 2002) (“The ‘looks like a duck, walks like
a duck’ analysis . . . works only if it regards as insignifi-
cant the fact that privilege is rooted, both historically and
philosophically, in the special role that lawyers have, by
dint of their qualifications and license, to give legal ad-
vice.”).
CONCLUSION
Congress authorized the USPTO to permit non-
lawyers to practice before the U.S. Patent and Trademark
Office in patent matters, but recognized that clients who
chose to use agents would have some disadvantages. One
disadvantage was that their communications with their
agent would not be privileged.
In Jaffee, Justice Scalia, writing in dissent, persua-
sively argued that the question before the Court was
“whether (1) the need for [the asserted] privilege is so
clear, and (2) the desirable contours of that privilege are
so evident, that it is appropriate for this Court to craft it
in common-law fashion, under Rule 501.” 518 U.S. at 35.
The need for an agent-client privilege is not clear, it is not
evident what the precise contours of such a privilege will
be, and it is not appropriate for this court to create it in
common-law fashion, under Rule 501.
28 IN RE: QUEEN’S UNIVERSITY AT KINGSTON
None of the factors which courts consider in creating
new privileges favor finding a new privilege here. I
dissent, because in the absence of a showing that there is
a real need for a new privilege to be created, the need to
ascertain the truth should prevail.