540 S.W.3d 530
Tex.2018Background
- Andrew Silver (relator) sued Tabletop Media for breach of contract over a patent; discovery sought emails between Silver and his USPTO-registered patent agent, Raffi Gostanian.
- Gostanian is a registered patent agent (not a licensed attorney) who prosecuted Silver's patent before the USPTO.
- Silver refused to produce emails claiming they were protected by the lawyer-client privilege under Texas Rule of Evidence 503.
- The trial court compelled production; Silver sought mandamus relief. The Dallas Court of Appeals denied relief, viewing the issue as creation of a new patent-agent privilege.
- The Texas Supreme Court granted mandamus conditionally, holding communications with a registered patent agent made to facilitate authorized patent-prosecution legal services are protected by Rule 503 and directing an in camera review.
Issues
| Issue | Plaintiff's Argument (Silver) | Defendant's Argument (Tabletop) | Held |
|---|---|---|---|
| Does Rule 503's definition of "lawyer" include a USPTO-registered patent agent when acting before the USPTO? | Patent agents are authorized by federal law to practice before the USPTO and therefore qualify as "lawyers" under Rule 503. | "Authorized to practice law" means state licensure; patent agents are not licensed attorneys so they are excluded. | Yes. Patent agents practice law within the scope of USPTO representation and are "authorized" by federal authority, so Rule 503 applies to client communications made to obtain those legal services. |
| Does federal precedent control the interpretation of "authorized to practice law" under Texas Rule 503? | Federal cases recognizing patent-agent practice of law are persuasive and support inclusion. | Federal commentary and intent suggest a license requirement. | Federal cases (e.g., Sperry, Queen's Univ.) are persuasive but not controlling; Texas rules are interpreted by their text—"authorized" is broader than "licensed." |
| Must a patent agent be supervised by a licensed attorney for privilege to apply? | Not necessary; privilege should apply to communications with the patent agent acting within authorized USPTO practice. | Trial court required attorney direction for privilege to attach. | Not required. If the agent is authorized and acting within USPTO practice, communications are privileged without attorney supervision. |
| Did the trial court err in compelling production without an in camera review? | Trial court abused discretion by ordering wholesale production of potentially privileged communications. | Trial court interpreted privilege narrowly and compelled production. | The trial court abused its discretion; it must conduct an in camera review to determine which communications are privileged. |
Key Cases Cited
- Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (U.S. 1963) (federal supremacy permits USPTO-authorized nonattorneys to practice before the Office; such work constitutes the practice of law)
- In re Queen's Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016) (recognized a patent-agent privilege for communications with nonattorney patent agents acting within authorized USPTO practice)
- In re Bexar Cty. Criminal Dist. Attorney's Office, 224 S.W.3d 182 (Tex. 2007) (mandamus appropriate when trial court abuses discretion and no adequate appellate remedy exists)
- In re Christus Santa Rosa Health Sys., 492 S.W.3d 276 (Tex. 2016) (ordering production of privileged information may be an abuse of discretion and supports mandamus relief)