On February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered patent agent. In re Silver, Case No. 16-0682, 2018 WL 1022470 (Tex. February 23, 2018). The court held that a client’s communications with a patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Texas Rule of Evidence 503 (attorney-client privilege). The ruling marked the first time a state high court weighed in on the issue.

The issue arose in a dispute between inventor Andrew Silver and Tabletop Media LLC, which markets a tablet device called the Ziosk used to order food and pay for meals at restaurants. Silver sued for breach of contract, alleging that Tabletop failed to pay him for his patent under a purchase agreement. During discovery, Tabletop sought production of emails between Silver and the patent agent who represented Silver before the United States Patent & Trademark Office (“USPTO”). Silver refused to produce the emails, claiming them to be covered by the attorney-client privilege. The trial court disagreed and ordered Silver to produce the emails. The court of appeals understood Silver’s mandamus petition to seek the creation of a new patent agent privilege and denied relief, stating it is “not the role of intermediate courts … to declare new common law discovery privileges.”

Silver sought mandamus relief in the Texas Supreme Court, which did not analyze the issue in terms of creation of a new patent-agent privilege, but rather whether the existing attorney-client privilege extends to communications between a registered patent agent and the agent’s client. See TEX. R. EVID 503. Under the rule, a client is privileged from disclosing, and may prevent others from disclosing, communications made in confidence for the purpose of obtaining legal services, and specifically protects communications by the lawyer to the client.

The Court began its analysis by observing that rule defines the term “lawyer” as “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.” Silver did not contend that he believed his patent agent to be a lawyer or authorized to practice law outside of patent prosecution. Tabletop therefore contended the phrase “authorized to practice law” was not broad enough to include a registered patent agent. The court disagreed, and explained that patent agents practice law because:

• persuasive authority such as the US Court of Appeals for the Federal Circuit and the Florida Supreme Court have held that patent agent services fall within the practice of law;
• patent agents can draft patents and represent clients before the USPTO in patent prosecution matters, without a supervising or intermediary lawyer; and
• patent agent prosecutors perform the same services and are subject to the same requirements as patent lawyers before the USPTO, and those services when performed by a patent lawyer are undoubtedly considered the “practice of law.”

Tabletop also contended that being “authorized” to practice law means being “licensed,” and since Silver’s patent agent is not licensed to practice law he cannot be “authorized” and Rule 503 does not apply. The court disagreed, stating that although “authorized” and “licensed” are closely related terms, they do not mean the same thing.  Authorized conveys a broader meaning than licensed; that is, licensure is a more specific form of authorization. If the drafters intended for the attorney-client privilege rule to apply and be limited to licensed attorneys, they could have written the rule that way; however the Court needed to interpret the rule presuming each word was chosen with a purpose in mind. In this case, the words used in the rule negated Tabletop’s narrow construction of the term “authorized.”

Recognizing that federal case law has generally held that patent agents, even without a license to practice law, are nevertheless “authorized” to practice of law before the USPTO, the Court ruled that their clients may invoke the attorney-client privilege to protect communications made to patent agents in their authorized practice area to facilitate the rendition of legal services. The privilege applies even if the agent’s work is not under a licensed attorney’s direction.

The Court then conditionally granted the mandamus relief and directed the trial court to conduct an in camera review of the emails to see if they fall within the scope of the privilege.