On August 17, in In re Andrew Silver, a panel of the Dallas Court of Appeals handed down a 2-1 decision refusing to recognize a patent-agent privilege. The appellate court, in affirming the trial court's decision to order production of emails between a client and his patent agent, held that communications between clients and non-attorney patent agents are not privileged.
The underlying case involves a contract dispute over the invention, patenting, and commercialization of "Ziosk" table devices used in restaurants. Andrew Silver, who claims he owns the patents for the technology underlying the devices, was ordered by the trial court to produce more than 300 emails between he and his patent agent. Silver sought to avoid the inclusion of these emails in his document production, arguing the Federal Circuit’s recent decision in In re Queen’s University at Kingston established his communications with his patent agent were privileged.
In In re Queen’s University at Kingston, the Federal Circuit determined that communications between a patent agent and client are privileged when the agent is acting within his authorized practice of law before the USPTO. The Texas appeals court, which found the Federal Circuit's decision non-binding, reasoned that while the federal government may make such a distinction in discovery, patent-agent communications are not granted a privilege in the Texas Constitution, the Texas Rules of Evidence, or other state laws or statutes, and declined to create a new common law patent-agent privilege.
Justice Craig Stoddart wrote for the court, "The Queen's University court expressly excluded [non-patent infringement] cases from the scope of the privilege, and neither this court nor the trial court is required to apply federal patent law to the merits of the case. Where, as here, the substantive claims are governed by state law, the state privilege law also applies. Texas does not recognize the patent-agent privilege, and we decline to create a new common law privilege."
For the full opinion, click here.