Client-Attorney Privilege in the U.S.
December 1, 2017
CIPA Journal
The U.S. Patent and Trademark Office (USPTO) has issued a final rule establishing that communications between clients and U.S. patent agents or foreign patent practitioners will be afforded the same privilege protections in trials before the Patent Trial and Appeal Board (PTAB)1 as communications between clients and U.S. attorneys.2 Before this rule, no explicit rule governed the protections afforded to communications between clients and US patent agents or foreign patent practitioners in PTAB trials. Instead, administrative law judges presiding over the PTAB trials determined whether communications were privileged on a case-by-case basis according to the Federal Rules of Evidence and common law. But the common law on privilege protections afforded to such communications varies among jurisdictions, causing administrative inefficiencies and inconsistent outcomes. The USPTO’s final rule seeks to address these issues.
The USPTO explained that attorney-client privilege exists to protect clients and to allow them to have "full and frank" discussions with their attorneys without fear that those discussions will be discoverable in legal proceedings.3 Both US patent attorneys and agents are authorized to represent clients before the USPTO,4 and the final rule recognizes that "clients deserve the same protections regardless of which type of authorized legal provider they choose."5 Moreover, certain foreign jurisdictions rely entirely or almost entirely on non-attorney patent practitioners. The final rule thus seeks to protect communications between clients and US patent agents or foreign patent practitioners when, for example, seeking a patent before the USPTO or a foreign patent office.
Communications will be privileged only if "reasonably necessary and incident to” the scope of the U.S. patent agent’s or foreign patent practitioner’s authority.6 For example, communications between clients and U.S. patent agents relating to trials before the USPTO would be privileged, whereas communications between these parties relating to trials before the U.S. district courts may not be privileged.7 Moreover, the final rule applies only to foreign patent practitioners who are authorized to provide legal advice on patent matters within their home jurisdiction.8
The USPTO’s rule goes into effect on 7 December 2017, and will be codified as 37 C.F.R. §42.57:
§42.57 Privilege for patent practitioners.
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.9
1 Trials include inter partes review proceedings, post-grant review proceedings, covered business method patent review proceedings, and derivation proceedings.
2 Rule on Attorney-Client Privilege for Trials Before the Patent Trial and Appeal Board, 82 Fed. Reg. 51570 (Nov. 7, 2017).
3 Id. at 51571.
4 37 C.F.R. §11.5(b).
5 Rule on Attorney-Client Privilege for Trials Before the Patent Trial and Appeal Board, 82 Fed. Reg. at 51571.
6 Id. at 51575.
7 Id. at 51573.
8 Id. at 51575.
9 Id.
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Originally printed in CIPA Journal in December 2017. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.