The United States Patent and Trademark Office (USPTO) has released a proposed change to the Rules of Practice before the Patent Trial and Appeal Board (PTAB) clarifying the extent to which privilege extends to communications between non-attorney patent practitioners and their clients. Currently, the Rules of Practice do not address the privilege status of communications for U.S. patent agents or foreign patent practitioners. Instead, the USPTO decides privilege for such patent practitioners on a case-by-case according to common law principles, which the USPTO states may lead to administrative inefficiencies and inconsistent outcomes. The proposed rule recognizes that communications between non-attorney U.S. patent agents or foreign patent practitioners and their clients, when pertaining to authorized practice before the USPTO, are privileged to the same extent as communications of the same sort between U.S. patent attorneys and their clients. Thus, under the proposed rule, such communications would become uniformly protected from discovery in trial practice proceedings at the USPTO, namely inter partes review, post-grant review, business method patents, and derivation proceedings.

The proposed rule would provide that the privilege only applies where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices. For instance, while communications between clients and U.S. patent agents relating trial practice proceedings at the USPTO would be protected as privileged under the proposed rule, communications between these parties regarding litigation strategies would not be protected.

In the Rules of Practice, the proposed rule would amend 37 CFR 42 to include a new section 42.57:

§ 42.57 Privilege for patent practitioners.

  1. 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.
  2. 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.

In addition to the proposed rule on privilege, the USPTO has also recently proposed plans to implement increased PTAB trial filing fees.