In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys.” 81 Fed. Reg. 71653 (Oct. 18, 2016). The rule would apply to the various PTAB proceedings that entail discovery, including IPRs, PGRs, the transitional program for CBMs, and derivation proceedings.

[I]n connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents and foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys.

The PTAB rules of practice make the Federal Rules of Evidence applicable to the PTAB proceedings. See 37 C.F.R. § 42.62(a). The Federal Rules of Evidence recognize the attorney-client privilege, and recognize common law privileges in general, but do not specifically address privilege for non-attorney patent agents or foreign patent practitioners. See Fed. R. Evid. 501, 502. The current PTAB rules also do not specifically address this privilege, and under current practice PTAB judges make legal determinations as to which communications may be protected from disclosure on a case-by-case basis, based on common law.

The proposed rule seeks to add 37. C.F.R. § 42.57, entitled “Privilege for patent practitioners,” which would read:

(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 proposed rule, which emerged with unanimous support from a roundtable held by the USPTO in February 2015, seeks to clarify that privilege extends not only to attorney communications, but also to communications with non-attorney patent practitioners that pertain to authorized practice before the USPTO.

The proposed rule is consistent with the recent recognition of the “patent agent privilege” by the Federal Circuit in In re Queen’s University at Kingston, PARTEQ Research and Development Innovations, 820 F.3d 1287 (Fed. Cir. 2016). In its mandamus ruling, the Federal Circuit recognized an independent patent-agent privilege that extends to communications that are “reasonably necessary and incident to” the scope of their practice as authorized by Congress. See id at 1301.

Consistent with Queen’s University, the proposed rule makes clear that the privilege only applies where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practice. As an example, the Notice indicates that communications between clients and U.S. patent agents relating to patent application matters would be protected as privileged, but communications between these parties regarding litigation strategies would not be protected. The Notice further states that the privilege can apply to an in-house counsel who performs the functions of a patent attorney under appropriate circumstances, even though such privilege is not granted to in-house counsel in some civil law jurisdictions. 81 Fed. Reg. at 71655.

The USPTO’s proposed rule goes beyond Queen’s University and recognizes the privilege as covering communications with clients and “patent practitioners,” which includes both those authorized to practice for patent matters before the USPTO and those authorized to practice patent matters in foreign jurisdictions. 81 Fed. Reg. at 71654. The rule, however, does not recognize privilege as applying to advice given by lay persons in jurisdictions that do not impose professional qualifications as a requirement to practice. Id at 71655.

Written comments on the proposed rule can be sent to acprivilege@uspto.gov. The period for comment closes on December 19, 2016.