November 01, 2016
Authored and Edited by Kevin J. Spinella
The United States Patent and Trademark Office (USPTO) has released a proposed change to the Rules of Practice before the Patent Trial and Appeal Board (PTAB) clarifying the extent to which privilege extends to communications between non-attorney patent practitioners and their clients. Currently, the Rules of Practice do not address the privilege status of communications for U.S. patent agents or foreign patent practitioners. Instead, the USPTO decides privilege for such patent practitioners on a case-by-case according to common law principles, which the USPTO states may lead to administrative inefficiencies and inconsistent outcomes. The proposed rule recognizes that communications between non-attorney U.S. patent agents or foreign patent practitioners and their clients, when pertaining to authorized practice before the USPTO, are privileged to the same extent as communications of the same sort between U.S. patent attorneys and their clients. Thus, under the proposed rule, such communications would become uniformly protected from discovery in trial practice proceedings at the USPTO, namely inter partes review, post-grant review, business method patents, and derivation proceedings.
The proposed rule would provide that the privilege only applies where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices. For instance, while communications between clients and U.S. patent agents relating trial practice proceedings at the USPTO would be protected as privileged under the proposed rule, communications between these parties regarding litigation strategies would not be protected.
In the Rules of Practice, the proposed rule would amend 37 CFR 42 to include a new section 42.57:
§ 42.57 Privilege for patent practitioners.
(a) Privileged communications. A communication between a client and a domestic or foreign patent practitioner that is reasonably necessary or incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege 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 ‘‘domestic patent practitioner’’ means a person who is registered by the United States Patent and Trademark Office to practice before the agency under section 11.6. ‘‘Foreign 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, and regardless of whether that jurisdiction provides privilege or an equivalent under its laws.
In addition to the proposed rule on privilege, the USPTO has also recently proposed plans to implement increased PTAB trial filing fees.
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Conference
2024 Licensing Executives Society USA – Canada Annual Meeting
October 20-23, 2024
New Orleans
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Seminar
Intellectual Property in the Age of AI: What Do You Own and How Do You Balance Risks?
September 25, 2024
Boston
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.