May 25, 2020

Hi Ho Silver: Texas Supreme Court Finds Patent Agent Communications Protected

The Supreme Court of Texas held that a client’s communications with a registered patent agent, made to facilitate the agent’s provision of authorized legal services to the client, fall within the Texas attorney-client privilege. In re Silver, Case No. 16-0682 (Tex., Feb. 23, 2018) (Devine, J).

Silver brought a breach-of-contract action against Tabletop Media, LLC. Silver alleged that Tabletop failed to pay him for patented technology that Silver claims to have invented and sold to Tabletop. In discovery, Tabletop sought production of emails between Silver and the non-attorney patent agent who represented Silver before the US Patent and Trademark Office (PTO). Silver refused, asserting the attorney-client privilege. Tabletop moved to compel, and the trial court granted Tabletop’s motion. Silver sought mandamus relief, which the Texas court of appeals denied in a divided decision. Silver then appealed to the Supreme Court of Texas.

The Supreme Court of Texas held that a non-attorney patent agent is a “lawyer” for purposes of Texas Rule of Evidence 503, which codifies the state’s attorney-client privilege. The Court was persuaded by the Supreme Court of the United States’ decision in Sperry and the US Court of Appeals for the Federal Circuit’s Queen’s University decision (IP Update, Vol. 19, No. 4), which held that communications between a client and a non-attorney patent agent relating to PTO proceedings are privileged in federal court cases. (See also IP Update, Vol. 20, No 11, discussing the new PTO privilege rule promulgated pursuant to Queen’s University).

The Court also conducted an independent textual analysis of Texas Rule of Evidence 503, determining that that non-attorney patent agents “practice law” within the confines of PTO proceedings, that they are “authorized” to do so, and that patent agents are therefore “lawyers” for purposes of Rule 503. Thus, the Court held that Silver’s communications with his non-attorney patent agent were protected by Texas’ attorney-client privilege and, consequently, that the trial court abused its discretion in ordering production of documents reflecting such communications.

Practice Note: The application of the attorney-client privilege in state court remains a matter of state law. Although the logic of Silver applies broadly, lawyers should analyze the rules that pertain to their particular venue before making assertions of privilege.

© 2020 McDermott Will & Emery


About this Author


David Mlaver* is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C. office.  He focuses his practice on intellectual property litigation matters.

David received his J.D., cum laude, from the Georgetown University Law Center, where he was a senior editor of The Tax Lawyer.  He earned his A.B. in chemistry and B.S. in biology, with high distinction, from Duke University. David is admitted to practice in Maryland.

*Not admitted to practice in the District of Columbia...

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