November 21, 2017
The U.S. Patent and Trademark Office (USPTO) has adopted 37 C.F.R. § 42.57, a new rule relating to privileged communications in Patent Trial and Appeal Board (PTAB) proceedings. Generally, the rule provides a privilege for communications with U.S.-registered patent agents and with foreign patent practitioners. This new privilege is commensurate with the scope of the ordinary attorney-client privilege. U.S. courts have taken different approaches to whether privilege extends to patent agents and foreign patent practitioners, resulting in different outcomes. Without the new rule, the PTAB would have to select which common law to apply in these situations. In addition, the USPTO states that the purpose of this rule is not so much to shield communications made concerning the PTAB proceeding itself (where the parties are usually represented by attorneys anyway), but rather to shield earlier communications made during prosecution of the underlying patent. The text of the new rule, effective on December 7, 2017, can be found at the end of this alert.
The Federal Circuit previously has recognized, for purposes of discovery in the district courts, that the attorney-client privilege extends to U.S. patent agents when they are acting within the scope of their duties. The court’s ruling came last year, in In re Queen’s University at Kingston. But the Queen’s University decision did not address foreign patent practitioners, and the extent to which this decision was applicable to PTAB proceedings was not entirely clear. The new rule is intended to clarify this applicability.
Under the new rule, the nature and scope of the privilege are meant to be similar to those for traditional attorney-client privilege and subject to the same qualifications and limitations. For example, the rule provides that the privilege belongs to the client, applies only for “appropriate subject matter,” is subject to normal provisions regarding waiver, and extends to communications between practitioners and with assistants. The rulemaking notice further states that the new rule is not intended to impart any new substantive power or authority to patent agents.
The USPTO does not explicitly state the limitations and exceptions of the privilege under this rule but indicates that those questions are left “for general jurisprudence to address in a broader manner.” The law regarding privilege can vary from state to state, so it is likely that some disputes will remain to be resolved under the new rule. Also, the USPTO acknowledges that the new rule does not bind other entities such as the federal and state courts or any foreign jurisdictions, leading to the possibility of inconsistent results in concurrent proceedings. The scope of communications made to patent agents may also be somewhat unclear and likely will be left to later development (for example, whether communications relating to patent validity or litigation strategy are covered by the privilege).
Still, on balance, we expect the rule to provide significant clarity in PTAB discovery proceedings where a party seeks discovery of communications with patent agents or foreign practitioners.
For more information, please contact Fitch Even managing partner Mark W. Hetzler.
--Written by Fitch Even attorney Peggy Wojkowski
The text of the final rule follows:
§ 42.57 Privilege for patent practitioners.
(a) Privileged communications. A communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner's authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.
(b) Definitions. The term “USPTO patent practitioner” means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under § 11.7 of this chapter. “Foreign jurisdiction patent practitioner” means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws.
(c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.
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