Warning! Patent Agent Privilege Ends Abruptly

Warning! Patent Agent Privilege Ends Abruptly

Matthew M. Welch

Say I have lost all faith in patents, judges, and everything related to patents. –Thomas Edison

Thomas Edison and many of the innovators following in his footsteps have been disgruntled and discouraged by United States patent law. However, patentintensive industries promote innovation, increase the GDP, and create millions of jobs. Patent law is vital to the continued prominence of America as a world power, and, to continue that prominence, patent law must adapt to current times. As a start, it must begin providing solutions to a number of problems plaguing the patent realm. One of the most outstanding problems currently running course through patent law is the dynamic between the attorney-client privilege and patent agents. The problem is two-fold. First, some courts have extended the privilege to patent agents, but the way they are treating this privilege is insufficient. Second, other courts are not recognizing the privilege whatsoever.

Attorney-client privilege is a pillar of the legal system that is entrenched throughout the United States. This privilege was instituted to allow full and frank discussions between clients and their attorneys. The purpose behind this was to allow attorneys to fully represent their clients based on all available facts. However, attorneys are not the only players in the field of patent law. In fact, one fourth of all patent practitioners are non-attorneys. These individuals are patent agents. 

Patent agents are a relatively new byproduct of the twentieth century. But, because patent agents were not around when the attorney-client privilege was instituted, they have been denied many of the rights of their fellow patent practitioners. It is not the patent agents that suffer because of it. Instead, members of the general public who hire firms to assist them in procuring a patent for a novel invention are the ones who suffer. Unbeknownst to many inventors, their communications with a patent agent, agents who work hand in hand with patent attorneys, are not privileged under many circumstances. When the inventors do find out about this loophole, it often costs them dearly in court.

Thus, the goal of this paper is to provide an overview of attorney-client privilege and its extension (or lack thereof) to patent agent privilege, analyze the inherent problems in current patent agent privilege laws at both the federal and state level, and provide solutions to these problems. To this end, Section II introduces the important players in patent law. Section III provides a history of attorney-client privilege and its extension to patent agent privilege. Section IV highlights the problems in current patent agent privilege laws at the federal and state level. And lastly, Section V provides solutions to the problems residing within these attorney-client, patent agent privilege dynamics.

100 J. Pat. & Trademark Off. Soc’y 578(2019)

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