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Client Communications with Patent Agent are Privileged, Per the Texas Supreme Court

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In re: Andrew Silver: the Texas Supreme Court recently held that communications between an inventor and his non-attorney patent agent are privileged. The Court granted conditional mandamus relief to inventor-plaintiff Silver and vacated the trial court’s order to compel production of Silver’s privileged emails.

Silver claimed that he was the inventor of the Ziosk tablet, a technology that enables restaurant customers to order and pay for their food electronically. In his breach of contract case against TableTop Media, LLC, Silver stated that TableTop had agreed to purchase the patent that covered the Ziosk technology but did not pay him. During discovery, TableTop requested emails between Silver and the patent agent who represented him during the prosecution of his patent. Silver declined to produce the emails, citing attorney-client privilege, despite the fact that the agent was not an attorney. After TableTop moved to compel production, the trial court ordered Silver to produce the documents. Silver filed a mandamus petition on the order. The Texas Court of Appeals for the Fifth District of Texas at Dallas held that Texas law does not provide for a patent-agent privilege and denied Silver’s mandamus petition. One dissenting judge suggested, however, that the court should expand the attorney-client privilege to include patent agent communications and that the expansion did not amount to creating a new privilege.

Silver appealed the Court of Appeals decision to the Texas Supreme Court, where he argued that his communications should be privileged under Texas Rule of Evidence 503, which defines attorney-client privilege in Texas. Rule 503(a)(3)’s definition of a lawyer is “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.” Silver argued that the patent agent was “authorized…to practice law” under Rule 503(a)(3) because the federal government authorizes patent agents to provide legal services to clients. Silver also cited to several persuasive (but not controlling) cases that supported his contention that a registered patent agent is authorized to practice law.

In reaching its decision, as is customary in interpreting the rules of evidence, the Texas Supreme Court relied on the plain meaning of Rule 503, analyzing Rule 503(a)(3) in two steps: first by considering the meaning of “practice of law,” and then by considering the meaning of how one is “authorized” to practice law.

For its analysis of the “practice of law,” the Court turned to the Texas State Bar Act’s unauthorized-practice-of-law section (Tex. Gov’t Code § 81.101) and definitions from Webster’s Dictionary and Black’s Law Dictionary. Based on these sources, the Court concluded that the practitioner must provide legal services directly to the client. Citing to federal law, the amicus brief of the Intellectual Property Association, and a Federal Circuit case, the Court found that patent agents do indeed provide legal services directly to clients, concluding that, “No one seriously questions that this work [the work of patent agents] constitutes the practice of law when performed by a patent attorney…Therefore, we hold that, within the scope of their practice before the USPTO, patent agents practice law.”

For the second part of its analysis, the meaning of “authorized” to practice law, the Court looked to several cases supporting the idea that a registered patent agent (who does not have a legal license) is authorized to practice law before the USPTO and distinguished this concept from a lawyer who holds a license to practice law in a particular jurisdiction. While “licensed” has the narrow meaning of being permitted by a license, “authorized” includes a wider range of activities, from empowerment to sanctioning by authorities. The Court found that the drafters of the Texas Rule of Evidence 503(a)(3) intentionally chose the word “authorize” over “licensed” to convey this broader meaning. Therefore, communications with patent agents who are “authorized” to practice law before the USPTO may be privileged under Rule 503. A client of a patent agent may use the attorney-client privilege to decline to produce certain documents. The Court further stated that the trial court abused its discretion by not reviewing the disputed documents in camera before ordering their production.

What This Means for You

This decision from the Texas Supreme Court is most relevant for Texas practitioners and litigation filed in Texas state or federal courts. Over time, the decision may also influence state and federal courts elsewhere to adopt similar protections for client communications with patent agents.

For patent owners, the expansion of lawyer-client privilege to patent agents represents another way to shield confidential communications from opposing counsel in litigation.

Visit our website to learn more about V&E’s Intellectual Property practice. For more information, please contact Vinson & Elkins lawyer Abigail Lubow or any of the Intellectual Property practice contacts.

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This information is provided by Vinson & Elkins LLP for educational and informational purposes only and is not intended, nor should it be construed, as legal advice.