Texas now recognizes an independent patent agent privilege in Texas state courts. In re Andrew Silver, No. 16-0682 (Texas 2018). This now aligns with the Federal Circuit, which recognized patent agent privilege a few years ago, and the Patent and Trademark Office, which formally recognized patent agent privilege recently. This decision reverses the Texas Court of Appeals decision which did not recognize patent agent privilege. We discussed the treatment of communications with patent agents and foreign counsel in one of our webinars near when the Texas appellate decision was released, which you can watch here. This open question discussed in the webinar has now been resolved, at least under Texas law.
Andrew Silver owns patents (numbers not listed in the opinion) relating to a device that allows restaurant patrons to order meals, play games, and pay their checks at their tables. Silver licensed the patents to Tabletop Media, LLC. The lawsuit concerns a contract dispute, governed by Texas state law, related to the licenses. The trial court ordered Silver to produce emails between Silver and his non-attorney patent agent, Raffi Gostanian. The Court of Appeals upheld the order to compel production of the communications, noting that the Texas Rules of Evidence did not grant privilege to non-attorney patent agents and that the Federal Circuit decision was not binding. Silver filed a writ of mandamus to the Supreme Court of Texas to vacate the appellate ruling.
Texas Rule of Evidence 503(b)(1) grants privilege to clients and “lawyers,” which are defined as “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.” The ultimate question considered was whether patent agents were “authorized…to practice law in any state or nation.” The Court noted that patent agents provide the same services as patent attorneys for patent prosecution on behalf of their clients and do not require supervision by another attorney. Furthermore, while maintaining that Federal Circuit decisions are not binding, they are persuasive, and while patent agents are not licensed to practice law in any state, they are “authorized” to practice law before the USPTO. This authorization is sufficient to qualify as a “lawyer” for the purposes of Rule 503(b)(1), and the Court thus held that communications with patent agents are privileged. The Court granted mandamus relief and ordered the trial court to review the relevant documents in camera.
Lessons for Practice
The result here is unsurprising considering the recent trend to formally recognize patent agent privilege. Patent agents still must stay within the scope of patent prosecution for privilege to attach, but the awkward tension between the federal standard and at least one state standard is now resolved. While other states have not explicitly extended patent agent privilege yet, plenty of persuasive authority now exists to protect communications with patent agents on patent prosecution matters.