Should the attorney-client privilege be applicable to patent agents?

Abstract

This article analyzes the importance of intellectual property and the necessity to protect inventors’ rights to the information, which they reveal to their representatives - patent agents. An essential element of the communications between legal adviser and his/her client (inventor) is the privilege protecting these communications from disclosure. Firstly, the author provides general information about patent system, attorney-client privilege, their origins and development. For the purposes of this analysis article pays much attention towards the definitions of „attorney“, „client“ and „patent law“. The applicability of attorney-client privilege depends on the theory, which is used, and the country, in which it is used. For example, one of the theories says that a patent agent is a conduit between inventor and patent office. The conduit theory relies on a presumption that a legal adviser is just a conduit – he/she receives information from the client and transmits it to the third parties. In circumstances where no confidentiality, objective and subjective expectations exist, the attorney-client privilege cannot be applied. However, some courts in the United States did not rely on conduit theory, but denied attorney-client privilege to patent agents. This opinion can be based on an argument that patent agent cannot render legal services because he/she does not have legal education. There are other reasons why patent agent should not be granted attorney-client protection, such as that patent agent is not the member of the bar. However, in last three decades courts were willing to grant attorney-client privilege to the patent agents.[...]