On February 23, 2018, the Texas Supreme Court issued its decision in In re Andrew Silver (available here).
In this case, Silver claimed he invented the technology that became a “stand-alone tablet designed to allow customers at restaurants to order food and pay their check without having to interact with a waiter or waitress.” Silver alleged that Tabletop now sells this tablet and Silver brought a breach-of-contract action against Tabletop. In discovery, Tabletop sought production of emails between Silver and his patent agent. Silver refused and the trial court granted Tabletop’s motion to compel production. Silver sought mandamus relief in the court of appeals, which was denied.
Instead of creating a new category of privilege specifically for patent agents, as the appellate court mistakenly believed Silver was advocating, the Texas Supreme Court found that communications between patent agents and their clients are protected under the existing attorney-client privilege. The Court based its reasoning on Rule 503 of the Texas Rules of Evidence, which defines “lawyer” as a “person authorized, or who the client reasonably believes is authorized to practice law in any state or nation;” therefore, “patent agents are lawyers for purposes of Texas’s lawyer-client privilege.” According to the Texas Supreme Court, patent agents are “authorized to practice law” and, as such, the privilege applies to communications involving patent agents.