The Texas Court of Appeals, Fifth District held in In Re Andrew Silver that Texas state courts do not recognize any attorney-client privilege for communications between a client and a non-attorney patent agent. The decision conflicts with the Federal Circuit’s decision to adopt a patent agent privilege in In re Queen’s University at Kingston. The underlying Texas state court dispute arose out of a breach of contract claim and did not involve issues of patent validity or infringement.
In a 2-1 decision, the Dallas Court of Appeals held that it had no authority to recognize a new discovery privilege, such as a patent agent privilege. The court majority grounded its opinion in precedent that circumscribes the state courts’ authority to recognize only “privileges grounded in the Texas Constitution, statues, the Texas Rules of Evidence, or other rules established pursuant to statute.” Of these sources, the majority concluded that “[no] statute or rule recognizes or adopts a patent-agent privilege.” The majority observed that the Federal Circuit’s decision in In re Queen’s University at Kingston is not binding on Texas state courts in matters where the legal issues presented are unrelated to the issues of patent validity or infringement.
Judge Evans’ dissenting opinion argued that a patent agent privilege exists in Texas state courts because communications with patent agents regarding issues of patent law fall within the scope of the attorney-client privilege in rule 503 of the Texas Rules of Evidence. “Texas Rule of Evidence 503 defines a ‘lawyer’ as ‘a person authorized . . . to practice law in any state or nation.” (emphasis original). Judge Evans reasoned that: (1) the United States is a nation and (2) the Supreme Court has authorized non-attorney patent agents practice law before the United States Patent and Trademark Office from anywhere in the nation, citing to Sperry v. State of Florida ex. Rel. Florida Bar, 373 U.S. 379 (1963). Thus, under Texas Rule of Evidence 503, non-attorney patent agents should be considered lawyers, and communications between clients and those agents should be protected by the attorney-client privilege.
In re Andrew Silver, 2016 Tex. App. LEXIS 8985 (Tex. App. Dallas Aug. 17, 2016). [Stoddart (opinion), Francis, Evans (dissenting)]