In re Silver

Summary

The Texas Supreme Court held that communications between a client and a registered patent agent are protected by the lawyer-client privilege under Texas Rule of Evidence 503 when made to facilitate the agent’s authorized legal services before the USPTO. The court concluded that patent agents practice law within the scope of patent prosecution and are authorized to do so by federal law, even without a state law license. The court conditionally granted mandamus relief and directed the trial court to conduct an appropriate in camera review of the disputed communications.

Holdings

1. Within the scope of practice before the USPTO, a registered patent agent practices law and is a person authorized to practice law for purposes of Rule 503(a)(3)'s definition of "lawyer."
2. A client may assert the lawyer-client privilege for confidential communications with a registered patent agent concerning the agent's authorized patent-prosecution services, even when the agent is not working under the direction of a licensed attorney.
3. The trial court abused its discretion by ordering wholesale production without adequately determining whether the documents included privileged communications; an in camera review was required because the privilege could apply to some of the documents.

Questions Presented

1. Whether a registered patent agent is a "lawyer" under Texas Rule of Evidence 503 when providing authorized patent-prosecution services before the USPTO.
2. Whether communications between a client and a registered patent agent are protected by the lawyer-client privilege even when the patent agent is not acting under the direction of a licensed attorney.
3. Whether the trial court abused its discretion by compelling wholesale production without determining which documents were privileged, including through an in camera review.

Disposition

writ_granted