Confidential Communications between Clients and Patent Agents: Are They Protected under the Attorney-Client Privilege

Typically, the attorney-client privilege applies only to attorneys admitted to practice law by a state bar. However, courts have expanded the application of the attorney-client privilege. This Article focuses on whether a group of specialized legal professionals-patent agents-should be included in the category of legal advisors who are entitled to the attorney-client privilege. The recognition or rejection of a privilege for patent agents may be of critical importance during litigation in the United States involving patent rights. The author concludes that patent agents who function as legal practitioners should independently be recognized as attorneys for the purpose of the attorney-client privilege. The Article first traces the development of courts' perceptions of the work of patent agents, then examines the divided case law on whether United States patent agents should be afforded the attorney-client privilege and concludes that the better reasoned cases recognize a privilege for United States patent agents because they perform the same function as attorneys who practice patent law. Finally, the Article argues that the recognition of an attorney-client privilege for United States patent agents should lead a fortiori to recognition by United States courts of an attorney-client privilege for registered foreign patent agents who similarly function as legal practitioners in their respective countries. The Article concludes that because registered patent agents in the United States are the functional equivalent of patent attorneys, they should be consistently granted the status of an attorney for purposes of the attorney-client privilege.