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SOUTHEAST TEXAS RECORD

Thursday, March 28, 2024

Texas Supreme Court to review patent agent-client confidentiality privilege

Patents 06

AUSTIN  – The Texas Supreme Court will review whether patent agents who advise their inventor clients should be granted the same confidentiality privileges attorneys have with their clients - the first time a state supreme court has taken up the issue.

Debate centers on how much patent agents should be treated like licensed attorneys.

“The Texas Supreme Court will review whether the state should extend the attorney/client privilege to registered patent agents who communicate with their clients about patent prosecutions (applications),” attorney Jane Langdell Robinson told The Record.


Robinson, an attorney with the law firm of Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing will present a case in favor of the proposal.

Patent agents are allowed to practice before the United States Patent and Trademark Office (USPTO) and advise clients who are often inventors, helping them prepare patent applications and whether certain inventions are worthy of a patent.

Robinson said for more than 100 years, patent agents, while non-lawyers, have had to pass a bar exam just as lawyers do.

“But they haven’t gone to law school,” she said. “This would only apply to patent agents who represent clients before the USPTO. Acquiring a patent for an invention is a very specialized process. For example, the USPTO might say to the inventor, ‘your application is not good enough, or what you’ve invented, there is already something similar to it and we may have to limit your application.’”

At the federal level, confidentiality is protected between patent agents and their clients similar to lawyer-client relationships. The protections can involve the confidentiality of communications from conversations to emails.

“The question is whether Texas should also protect it,” Robinson said. “I’m for it and I’m representing the person who is seeking to have this recognized.”

The person is an inventor named Andrew Silver, Robinson added.

The next step Robinson said would be a hearing at the Texas Supreme Court. The date has yet to be set but possibly could be coming this October.

Robinson said the hearing is important in that patent agents are engaged in the practice of law when representing clients before the USPTO and approval of the idea would provide greater uniformity between the state and federal government on the issue.

However, opponents of the idea said patent agents are not licensed attorneys and should not be considered so.

Brett Govett, an attorney with the law firm of Norton Rose Fulbright, said he will oppose the widening of confidentiality privileges to include patent agents.

“We look forward to discussing the merits with the court and reiterating why the attorney-client privilege should not be expanded to include independent non-attorneys,” he told The Record.

Melissa Schwaller, a registered patent attorney for the firm of Ramey & Schwaller LLP, said the proposal makes sense because patent agents have passed a bar exam just like lawyers do and have also undergone a character review by the USPTO.

“The U.S. Supreme Court recognized the privilege,” she told The Record. “Patent agent-client privilege is covered by Rule 503 of the Texas Rules of Evidence, and patent agents are allowed to practice before the USPTO in the same manner as a patent attorney.”

Proponents said Texas not recognizing the privilege will hinder the ability of a patent agent to practice effectively in the state because of inhibiting concerns that confidential communications would have to be produced during patent preparation and prosecution.

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