The US Patent and Trademark Office (PTO) issued a new rule on attorney-client privilege for trials before the Patent Trial and Appeal Board (PTAB) on November 7, 2017. The new rule takes effect December 7, 2017. The new rule was spurred by the decision of the US Court of Appeals for the Federal Circuit in In re Queen's University at Kingston ( IP Update, Vol. 19, No. 4), which held that communications between a client and a non-lawyer patent agent relating to PTO proceedings are privileged in federal court cases.   

New rule 37 CFR § 42.57 provides that communication between a client and a PTO 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 as the communication would if it were between a client and lawyer. A PTO patent practitioner is a person who has fulfilled the requirements to practice before the PTO. A foreign jurisdiction practitioner is a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction. 

The PTO adopted the holding in In re Queen's as it pertained to patent agents recognized by the PTO and extended the holding to include foreign jurisdiction patent practitioners. In extending the privilege to foreign jurisdiction patent practitioners, the PTO noted that some foreign jurisdictions use non-lawyer patent agents exclusively or predominantly, so it may not be possible for applicants to rely on the privilege afforded by US courts to foreign lawyers.

As a result of the new rule, authorized communications between patent agents and clients pertaining to trials before the PTAB—including inter partes review, post-grant reviews, covered business methods and derivation proceedings—will be protected, along with communications pertaining to patent drafting and prosecution.   

Practice Note: Patent agent communications could still be admissible in state court depending on the laws of the particular state. Whether client-patent-agent communications are privileged in a state court contract dispute is currently on appeal before the Texas Supreme Court. In addition, patent agent communications concerning validity and non-infringement opinions are not covered by the privilege.   

New PTO Rule on Attorney-Client Privilege Before the PTAB

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