USPTO Rule on Agent-Client Privilege Helps, but Gaps Persist

The U.S. Patent and Trademark office recently finalized a rule that amends the standards for Patent Trial and Appeal Board proceedings and establishes the same privilege between attorneys and clients for patent agents and their clients. The rule aims to address concerns from those who expressed difficulty in discerning the scope of attorney-client privilege at the PTAB and what was protected from discovery during those proceedings. Law360 contacted Finnegan partner Erin M. Sommers for her thoughts on the new rule.

Sommers said, "With the In re Queen’s case [which recognized for the first time a patent agent privilege in cases falling under federal law] and this rule, it definitely shores up a client’s confidence that his or her communications should be protected, assuming they comply with the confines of the new rule."