Susman Godfrey Wins First-Ever Recognition of Patent Agent Privilege from Federal Circuit

March 2016

New York (March 14, 2016) — In a case on behalf of Queen's University against Samsung, Susman Godfrey has secured a first-of-its-kind ruling from the Court of Appeals for the Federal Circuit that upholds privilege for patent agents and their clients. In a decision issued March 7, the court said some degree of privilege should extend to communications between U.S. patent applicants and their non-attorney patent agents.

The case, In re: Queen's University at Kingston et al., has been closely watched by the patent bar because Susman Godfrey, on behalf of Queen's University, appealed a lower court ruling ordering the production of documents the firm felt were protected by patent-agent privilege. Previously, no circuit court had ever addressed the issue, and district courts have been divided.

“The Federal Circuit ruling provides much-needed clarity on a longstanding issue,” said Ian Crosby, Susman Godfrey partner and lead attorney for Queen’s in the case. “The ability of patent agents to communicate with their clients confidentially is now far better defined.”

In addition to this being a success for Queen's University, the ruling is a rare instance of an associate arguing — and winning — before the Federal Circuit. Assisting Crosby, Susman Godfrey associate Shawn Blackburn, a former Federal Circuit clerk, drafted the supplemental brief and argued the case before the Federal Circuit in December.

“We are very proud of Shawn’s accomplishment,” said Crosby. “He has shown significant leadership and litigation skill in helping to secure this excellent result for our client.”

In addition to Crosby and Blackburn, Susman Godfrey attorneys Bill Carmody, David Peterson and Rachel Black also represent Queen's University.

Crosby is available to discuss the ruling and its implications.