Careers

Experiences

Industries

Offices

Our Firm

Pages

Our People

Updates

Practices

Warner Norcross + Judd LLP is a corporate law firm with over 230 attorneys serving clients in nine offices throughout Michigan. Among the largest law firms in Michigan, Warner works in virtually all areas of business law.

Michigan Law Firm - Warner Norcross + Judd LLP

The Court of Appeals for the Federal Circuit recently recognized a “patent-agent privilege” in<em> <a href="~/Warner/media/files/uploads/Documents/15-145-Opinion-3-3-2016-1.pdf" target="_blank" rel="noreferrer noopener">In re Queen’s University at Kingston</a></em>. In this patent infringement case, Queen’s University asserted a claim of privilege and refused to produce communications with its patent agents discussing the prosecution of patents-in-suit, despite the fact that attorneys were not involved in the communications. The issue came to the court as a writ of mandamus.

contentpilot/introduction

In upholding the privilege protection, the court relied on Supreme Court case law which found that non-attorney patent agents practicing before the Patent Office were practicing law, and that this practice was authorized by Congress. In recognition of the rights granted to patent agents by Congress, the Court of Appeals for the Federal Circuit held that there was a reasonable expectation that communications concerning advice on patentability and preparing a patent application would be privileged. The work a patent agent performs mirrors that of an attorney and should be given the same privilege protection; refusing to do so would frustrate Congress’ intent to allow a client to choose to use an attorney or patent agent when prosecuting patents before the Patent Office.

core/paragraph

This case is a reminder that information requested during litigation or a government investigation may be protected from disclosure by more than just the attorney-client privilege or work product protection, including:

core/list

If you have any questions concerning this alert, please contact Adam Cefai (<a href="mailto:acefai@wnj.com">acefai@wnj.com</a>  or 269.276.8115), Zach Nevenzel (<a href="mailto:znevenzel@wnj.com">znevenzel@wnj.com</a> or 269.276.8136) or Catherine Collins (<a href="mailto:ccollins@wnj.com">ccollins@wnj.com</a> or 616.752.2473) any other member of the Data Solutions and Intellectual Property Groups.

eDiscovery Attorney

Adam M. Cefai

Staff Attorney

Zachary L. “Zach” Nevenzel

Data Analytics and eDiscovery

Intellectual Property

New “Patent-Agent Privilege” Addition to List of Non-Attorney Privilege Claims

Warner Norcross + Judd LLP is responsible for the contents of our advertising and this website. Please read our full <a href="/privacy-policy/" aria-label="see privacy policy">privacy policy</a> available on our website. If you have any questions or comments about our website or our Privacy Policy please contact us at <a href="mailto:info@wnj.com">info@wnj.com</a> or 616.752.2000. 

New “Patent-Agent Privilege” Addition to List of Non-Attorney Privilege Claims

professionals