March 15, 2019

Working with a Patent Agent Rather than a Patent Attorney Is More Risky

Chief Judge Leonard P. Stark of the Delaware District Court recently ruled that the privilege against disclosure in discovery of confidential communications with patent agents is much narrower than the privilege applicable to confidential communications with patent attorneys. In Onyx Therapeutics, Inc. v. Cipla Limited, C.A. No. 16-988-LPS (D. Del. Feb. 15, 2019, unsealed February 19, 2019), scientists had identified potential alternative formulations and consulted with a patent agent for guidance in understanding the patent landscape in order to direct their further research efforts toward results that were not already the subject of prior art claims. Such consultation was before the scientists had finalized a research plan, before they had reduced their invention to practice, and well before they committed to having claims drafted so that a patent application could be prosecuted. Therefore, under the standard set out by the Federal Circuit (In re Queen’s U at Kingston, 820 F.3d 1287, 1301-02 (Fed. Cir. 2016)), Judge Stark concluded that the communications were not protected from discovery in the Onyx litigation because the consultation with the patent agent was not “reasonably necessary and incident to the prosecution of patents before the Patent Office”. According to Judge Stark: “While such communications would almost certainly be within the scope of attorney-client privilege, here they are not protected by the narrower patent-agent privilege.”

Ask Pat’s Take Away for Inventors: Many law firms include patent agents on the teams working with inventors. Patent agents have technical degrees and have been issued registration numbers by the US Patent and Trademark Office. They do not have law degrees and are not licensed to practice law by any state. It may sometimes be cheaper to work with patent agents, but those savings may not be worth the risk. Your confidential strategic communications could be open to discovery by a future litigation adversary. To mitigate this risk, insist that an attorney participate in any strategic discussions you may have about patenting your invention. Pat is a licensed attorney in Delaware and Pennsylvania and also is registered as a patent attorney with the US Patent and Trademark Office.

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