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Don’t Mess with (Patent Agent-Client Privilege in) Texas

The Texas Supreme Court ruled in In re Andrew Silver1 that client-patent agent communications are protected by attorney-client privilege, stating that patent agents fall within the definition of “lawyer” according to Texas law because patent agents are authorized to practice law before the USPTO.

The case involved a patent purchase dispute between Andrew Silver, an inventor, and Tabletop Media, LLC over the Ziosk, a tablet for ordering food at restaurants. At the trial court, Tabletop sought the emails between Silver and his non-attorney patent agent, which Silver refused to produce, citing attorney-client privilege. The lower court ruled that privilege does not extend to non-attorney patent agents.

The Texas Supreme Court overturned the lower court’s ruling based on analysis of the Texas Rule of Evidence 503’s definition of “lawyer.”2 The Texas Supreme Court stated that “because patent agents are authorized to practice law before the USPTO, they fall within Rule 503’s definition of ‘lawyer,’ and, as such, their clients may invoke the lawyer-client privilege to protect communications that fall within the privilege’s scope.” 3 The Texas Supreme Court further stated that client-patent agent communications are protected, even if the patent agent is not working under a licensed attorney’s direction. 4

The Texas Supreme Court ruling comes after a 2016 Federal Circuit decision in In re Queen’s University,5 which extended the attorney-client privilege to communications with patent agents in patent infringement litigations in federal courts, and a new rule from the USPTO in 2017 that establishes client-patent agent privilege in PTAB proceedings.

Businesses and law firms frequently employ patent agents, and this Texas Supreme Court ruling may make hiring patent agents even more attractive. The case may also provide reassurance and greater freedom for patent agents to work directly, and independently, with inventors.

1 In re Andrew Silver, Texas Supreme Court case no. 16-0682.
2 Tex. R. Evid. 503(a)(3). (“A 'lawyer' is a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.”)
3 In re Andrew Silver, Texas Supreme Court case no. 16-0682, p. 13.
4 Id.
5 In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

See the Opinion here.