Business and Legal Insights

A Notice of Proposed Rule Making (NPRM) was published in the Federal Register yesterday, October 18, 2016. Located at 81 FR 71653 (a copy of which is available here), the NPRM proposes to expand the scope of attorney-client privilege to non-attorneys in certain proceedings before the Patent Office.[1]

In the United States, both attorneys and non-attorneys may be licensed to practice before the Patent Office at the United States Patent and Trademark Office (“USPTO”).[2] See 37 CFR § 11.7 (admission to practice before the highest court of any state is not a requirement). Attorneys admitted to the USPTO Patent Bar are ‘patent attorneys’ while non-lawyers admitted to the Patent Bar are ‘patent agents’. Patent agents are permitted to represent clients in a variety of proceedings before the Patent Office, including post grant reviews and inter partes reexaminations before the Patent Trial and Appeal Board (“PTAB”).

Attorney-client privilege is designed to encourage the full and frank sharing of information between a client and their attorney. There is no national standard for the attorney-client privilege; each state has enacted its own statute and/or rule (with accompanying interpretive caselaw) while the federal courts have their own rule as well (Federal Rule of Evidence 508). Each jurisdiction has its own standards and rules – in some jurisdictions the privilege is broader than others.

The lack of uniformity has resulted in a problem at the Patent Office: are communications between a patent agent and their client protected by attorney-client privilege? Previously, this question has been answered on an ad hoc, case-by-case basis. In August 2015 the USPTO published a proposed rule amending the rules for trial practice before the Patent Office. See 80 FR 50719. In that publication the USPTO solicited “on the advisability of a privilege rule for PTAB proceedings.” Id. The universal response was a privilege rule is needed.

The current NPRM is the result of those comments. The proposed rule would amend 37 CFR §42.57 to add

• (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.

The NPRM would clarify the privilege rule and create confidence that communications with a patent agent are entitled to protection at the USPTO. It will also raise a question of whether state or federal courts would respect the privilege if it was invoked to resist discovery in a case pending outside of the Patent Office and/or the PTAB.

Comments are being solicited until December 19, 2016, and can be submitted by electronic mail to acprivilege@uspto.gov, via the Federal eRulemaking Portal at http://www.regulations.gov, or via mail to Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of “Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege”.

[1] The Patent Office is a division of the United States Patent and Trademark Office, which is a division of the U.S. Department of Commerce.

[2] It is important to note that this exception applies only to the Patent Office.  Non-attorneys (persons not admitted to the highest court of any state) are not permitted to practice before the Trademark Office, with the exception of certain Canadian patent agents.  See TMEP § 602; 37 CFR § 11.14.