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Attorneys

USPTO Finalizes Rule for Privileged Communications in Trials Before the PTAB

November 8 2017

By Jo Dale Carothers

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the transitional program for covered business method patents, and derivation proceedings.  While patent agents are registered to practice before the USPTO, they are not attorneys.  Therefore, it has been unclear whether attorney-client privilege prevents discovery in PTAB proceedings of communications between these non-attorney agents and their clients.  Addressing this ambiguity, the USPTO just issued a final rule for trial practice before the PTAB that explicitly protects communications between patent agents or foreign patent practitioners and their clients.  The amended rule becomes effective December 7, 2017.

Under U.S. Federal law, clients generally can rely on attorney-client privilege to protect communications with their attorneys.  The USPTO, however, allows registered patent practitioners, including patent attorneys and non-attorney patent agents, to prepare and prosecute patent applications and appear before the PTAB.  The USPTO explains “[r]egistered patent practitioners are individuals who have passed the USPTO’s registration exam and met the qualifications to represent patent applicants before the USPTO.”  Registered patent practitioners have met “the requirements of 37 CFR § 11.7, including the legal, scientific, and technical qualifications, as well as good moral character and reputation.”  Specifically, a patent attorney is an attorney who has met these requirements, whereas a patent agent is a non-attorney who has met these requirements.

Thus, the question arose as to whether communications between patent agents, who are not attorneys, and their clients are protected from discovery in PTAB proceedings.  To address this and related questions, in February 2015, the USPTO held a roundtable on domestic and international issues related to privileged communications between patent practitioners and their clients.  This process included a request for comments as to whether privilege should apply to communications between patent applicants or patent owners and their U.S. patent agents or foreign patent practitioners.  Some participants “noted the rules regarding privilege for U.S. patent agents and foreign practitioners in PTAB discovery proceedings were difficult to discern” given the lack of an explicit rule.  Instead, “[w]hen an issue arises before [the] PTAB, Administrative Law Judges make legal determinations as to which communications may be protected from disclosure on a case-by-case basis, based on the Federal Rules of Evidence and common law.”

Taking the various comments it received into consideration, the USPTO issued a final rule on privilege for trials before the PTAB, which will be added as 37 CFR §42.57.  The rule “recognizes that privilege issues will be treated the same for agents as for attorneys within their scope of authorized practice.”  By extending privilege to patent agents, the USPTO recognized that “clients deserve the same protections regardless of which type of authorized … provider they choose.”

It was also noted that “some foreign jurisdictions rely entirely or almost entirely on non-attorney patent agents,” which means “[i]n such jurisdictions, hiring an attorney to handle patent matters can be difficult or impossible.”  The final rule addresses client’s communications with foreign jurisdiction practitioners and protects them from discovery in PTAB proceedings “regardless of whether that jurisdiction provides privilege or an equivalent under its laws.”  It is important to note, however, the final rule “does not have extraterritorial effects.”  The rule does not affect how foreign courts treat communications with U.S. and foreign practitioners.  Whether a foreign court treats those communications as privileged is entirely under the control of the foreign jurisdiction.

Further, the USPTO acknowledged that under Federal law, attorney-client privilege generally protects not only communications between an attorney and the client, but also 1) communications between an attorney and the client’s representative, 2) communications between the client and an attorney’s employee or assistant, and 3) communications between multiple attorneys working for the same client.  Paragraph (c) of the final rule was added to “clarify that the scope of coverage will be the same for practitioners as for attorneys under these types of scenarios and any other situations.”

For further details, see https://www.federalregister.gov/documents/2017/11/07/2017-24190/rule-on-attorney-client-privilege-for-trials-before-the-patent-trial-and-appeal-board