AUSTIN – Patent agents who provide authorized legal services may invoke attorney-client privilege to withhold client communications, the Texas Supreme Court ruled Friday.
The ruling supports Andrew Silver, the inventor of tablet technology for ordering and paying the tab at a restaurant. Silver, who claims Tabletop Media LLC failed to pay him for his patent, is fighting a Dallas trial court’s order compelling the production of emails between Silver and his non-attorney patent agent.
The Supreme Court directed the trial court to vacate its order and conduct an appropriate in camera review of the communications.
Justice John Devine wrote the court’s opinion, in which Justice Eva Guzman did not participate. The court reviewed Texas Rule of Evidence 503 regarding lawyer-client privilege and looked at dictionary definitions in determining that a registered patent agent can be a “lawyer.” The U.S. Patent and Trademark Office allows patent agents who pass the exam for patent attorneys to perform the same services for applicants.
“No one seriously questions that this work constitutes the practice of law when performed by a patent attorney,” said Devine. “Concluding that the work is something other than the practice of law when performed by a registered patent agent would be anomalous.”
Devine said the drafters of the Texas privilege rule could have stated that it only applies to licensed attorneys if that is what they intended.
Jane Langdell Robinson, who represents Silver, said the ruling has the potential to influence other states considering a flood of patent-related litigation. The litigation came after the U.S. Supreme Court in 2013 overruled the Texas Supreme Court and said state courts could hear claims of patent-related legal malpractice.
“Even though federal jurisdictions now uniformly recognize the patent-agent privilege, without recognition in state courts the privilege was under real threat,” said Robinson, Of Counsel at Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing.
She said 24 other states, including California, Delaware and Florida, mirror Texas’ attorney-client privilege rule.
“Now that state law cases involving patent prosecutions are staying in state courts, we believe this issue will come up again and again, and other states with the same privilege rule as Texas will look to our state for guidance.”
Brett Govett, who represents Tabletop, told the court that it should be up to the Texas Legislature, not the court, to create a privilege rule for non-attorney patent agents.
Tabletop and Silver sued each other on March 2, 2015 over the Ziosk pay-at-the table tablet used at Chili’s, Red Robin and other restaurants. Tabletop said after it agreed to buy a patent, Silver made changes in his application that negated the agreement.
The Houston Intellectual Property Lawyers Association was one of several IP groups siding with Silver. In a brief by Daniel Krueger, the association said refusing to recognize the privilege would be inconsistent with federal courts.
“Such an inconsistency would impair the expectation of confidentiality that clients have with patent agents, create a trap for the unwary, incentivize forum shopping, and increase the burdens of litigants and the courts,” said Krueger of Iselin Law.