USPTO Proposes Rule Recognizing Privileged Communications Between Clients and Certain US or Foreign Patent Practitioners | Practical Law

USPTO Proposes Rule Recognizing Privileged Communications Between Clients and Certain US or Foreign Patent Practitioners | Practical Law

The US Patent and Trademark Office (USPTO) has published a proposed rule recognizing privileged communications between non-attorney US patent agents or foreign patent practitioners and their clients in certain situations in trial practice proceedings before the Patent Trial and Appeal Board (PTAB).

USPTO Proposes Rule Recognizing Privileged Communications Between Clients and Certain US or Foreign Patent Practitioners

by Practical Law Intellectual Property & Technology
Published on 18 Oct 2016 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has published a proposed rule recognizing privileged communications between non-attorney US patent agents or foreign patent practitioners and their clients in certain situations in trial practice proceedings before the Patent Trial and Appeal Board (PTAB).
On October 18, 2016, the US Patent and Trademark Office (USPTO) published a proposed rule addressing privilege for certain communications between non-attorney US patent agents or foreign patent practitioners and their clients in trial practice proceedings before the Patent Trial and Appeal Board (PTAB) (81 Fed. Reg. 71653 (October 18, 2016)).
Currently, the rules governing PTAB proceedings do not address privileged communications between US patent agents or foreign patent practitioners and their clients. Under the proposed rule, which would amend 37 C.F.R. § 42 by adding Section 42.57, communications between US patent agents or foreign patent practitioners and their clients would be protected as privileged if the communication is reasonably necessary or incident to the patent practitioner's performance of legal work authorized by the jurisdiction in which the practitioner practices. The privilege would apply in PTAB trial practice proceedings, including:
  • Inter partes review.
  • Post-grant review.
  • The transitional program for covered business method patents.
  • Derivation proceedings.
The notice of proposed rulemaking clarifies that the proposed rule:
  • Would not recognize privilege for advice given by lay persons in jurisdictions that do not impose professional qualifications as a requirement to practice.
  • May apply to in-house counsel performing the functions of a patent attorney under appropriate circumstances.
  • Does not affect the duty of disclosure and candor before the USPTO under 37 C.F.R. §1.56.
The USPTO also emphasized the proposed rule's policy implications noting that it:
  • Ensures consistent outcomes for privilege matters that arise at the USPTO.
  • Improves public understanding of how the PTAB decides privilege questions.
  • Helps further judicial economy by providing PTAB judges with a clear, concise statement of when privilege applies.
Interested parties must send comments by email to [email protected] on or before December 19, 2016.