Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign practitioners in proceedings before the Patent Trial and Appeal Board. The rule, which largely codifies the Federal Circuit’s 2016 decision in In re Queen’s University at Kingston, will go into effect on December 7, 2017.
In particular, it should be noted that the PTO expressly limited the scope of the privilege to those communications “reasonably necessary and incident to the scope of the practitioner’s authority.” As a result, while there is now no doubt that a privilege exists, it is not absolute. We thus can still expect much debate about what subject matter falls within or outside the scope of the privilege. This will necessarily be a case-by-case issue.