July 2012 Vol. 9, No. 2

9.2.5

Attorney-Client Privilege

Case:

Buyer’s Direct Inc. v. Belk, Inc.  (C.D.Cal. 2012) 2012 WL 1416639

Issue:

Does the attorney-client privilege cover communications between a non-attorney registered patent agent and his client related to presenting and prosecuting a patent before the U.S. Patent and Trademark Office?

Holding:

Yes.  Congress specifically authorized non-attorney patent agents to represent clients before the USPTO for purposes of patent prosecution and registration.  Failing to extend the protection of the attorney-client privilege to communications between patent agents and their clients concerning the prosecution and registration of patents would place such agents at a competitive disadvantage to patent attorneys and frustrate the congressional scheme.  (2012 WL 1416639, *3.)

The Court further held that protection of the attorney-client privilege over communications between non-attorney patent agents and their clients is limited to communications related to the prosecution and registration process and does not extend to agent-client communications after issuance of the patent.  (Ibid.)

Note:

The Court required the patent agent in this case to provide further detail to its privilege log to enable the Court to determine whether the agent had met its burden of showing that each document contains material provided by the client to the patent agent for the purpose of securing primarily legal advice on patentability and legal services in preparing a patent application.  (Id. at *4.)

As the Court noted, the Southern District of California extends the privilege to communications with non-attorney patent agents only when such agents are working for an attorney.  (Id. at *3, note 2, discussing Park v. CAS Enter., Inc. (S.D.Cal. 2009) 2009 WL 3565293, *3.)

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