Patent Agent Privilege in the United States and Canada
Volume 47, Issue 3
NEWSLETTER ARCHIVE
1. The Law
On March 7, 2016, the U.S. Court of Appeals for the Federal Circuit decided in
In re Queen’s University at Kingston
that “patent agent privilege”—equivalent to the attorney-client privilege—protects communications between inventors and non-attorney patent agents. As a result, it was determined that the patent owner does not need to disclose communications between inventors and non-attorney patent agents in the discovery phase of a federal patent infringement lawsuit. The privilege exists only in federal courts that are asked to resolve questions of federal law. However, the Federal Circuit’s decision is not binding on state courts or federal courts in diversity cases because the privilege does not exist under the law of any U.S. state. Meanwhile, an
amendment to the Canadian Patent Act
1 created a statutory privilege between Canadian patent and trademark agents and their clients, effective as of June 24, 2016. The Canadian privilege extends to patent and trademark agents working in other countries that provide privilege. The Canadian statute protects a confidential communication between a client and a patent agent only if the communication “is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.” Similarly, according to the Federal Circuit majority, “[c]ommunications that are not reasonably necessary and incident to the prosecution of patents before the USPTO fall outside the scope of the patent-agent privilege.” Together, the Federal Circuit decision and the Canadian statute begin to harmonize the law of patent agent privilege in the United States and Canada. As a first step, each country now provides a limited privilege to non-attorney patent agents within its borders. Furthermore, many professionals will benefit from the recognition of privilege across the border.
  • Canadian patent agents in American federal courts
    2: The Federal Circuit decision in
    In re Queen’s University at Kingston
    recognizes privilege for more than seven hundred Canadians who are registered patent agents before the USPTO even though these professionals are not U.S.-licensed attorneys. However, Canadian patent agents who are licensed before the Canadian Intellectual Property Office but not the USPTO are not protected in American federal courts.
  • American patent agents in Canadian courts
    : The Canadian statute provides privilege to all American patent agents and attorneys who are licensed before the USPTO if their patents become subject to litigation in Canadian courts.

Index
Table of Contents
President's Message by Erik Belt
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Check Yo’self Before You Wreck Yo’self (or Your Sequence Listing)
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< Back
Message from the Editor-in-Chief
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Cuozzo
: The Case that Wasn’t
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Annual Dinner to Honor the Federal Judiciary an Evening Enjoyed by the Bench, Bar, and Guests
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Patent Agent Privilege in the United States and Canada
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Enfish and TLI:
A Study of the Federal Circuit’s Recent Section 101 Opinions
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USPTO Launches Pilot Program for Early Review of Cancer Immunotherapy Patent Applications
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Federal Circuit Finds
BASCOM
Internet Content Filtering Claims Patent Eligible
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Invented Here!
- 2016 - Highlighting New England’s Innovators
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BPLA Files Amicus Brief in Support of Sequenom’s Petition for a Writ of Certiorari
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Writing Competition
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Halo
Decision Regarding the Standard for Willfulness
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Members on the Move
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Reasonable Royalties and the Federal Circuit in 2015: Evolution of the Revolution
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Community Calendar
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