However, in adopting the privilege, the court narrowly construed its scope. Notably, the court limited the privilege to communications between the patent agent and the client, “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office.” The court also provided examples of patent agent communications not covered by the privilege, such as opinions on the validity of a patent in the context of actual or potential litigation, or opinions on infringement.
In re: Queens University at Kingston, C. A. No. 15-145 (Fed. Cir. Mar. 7, 2016)