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Are Communications With Foreign Patent Agents and Attorneys Privileged in PTAB Proceedings?

  • New Privilege Rule Protects Communications with Foreign Jurisdiction Patent Practitioners From Discovery in PTAB Proceedings.
  • No Reciprocity From Foreign Jurisdiction is Required.

Under a new rule set to take effect on December 7, 2017, communications between patent practitioners authorized to practice patent matters before the United States Patent and Trademark Office (“USPTO”) under 37 C.F.R. § 11.7 and foreign jurisdiction patent practitioners will be given the same protections of privilege as found under Federal law for communication between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.  37 C.F.R. § 42.57.  Such limitations and exceptions are not expressly defined in the new rule and are left open for later interpretation in accordance with relevant case law.

Importantly, the rule does not require reciprocity, i.e., it applies regardless of whether the foreign jurisdiction patent practitioner’s jurisdiction provides privilege or an equivalent under its laws.  37 C.F.R. § 42.57(b).  A foreign jurisdiction patent practitioner is defined as 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. Id.

U.S. district courts follow several different approaches to determine whether communications with foreign practitioners are entitled to protection, and foreign jurisdictions also apply different rules and give highly variable levels of protection, if any.  Previously, there was no explicit USPTO rule on such privileged communications.  Thus, Administrative Law Judges made legal determinations as to which communications may be protected from disclosure on a case-by-case basis, based on the Federal Rules of Evidence and common law.  See 37 CFR 42.62(a); see also GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014–00041, Paper 117 (PTAB 2014).  At the United States International Trade Commission (“ITC”), certain confidential communications with a patent agent have been treated as privileged. See, e.g., USITC Inv. No. 337–TA–339, slip op. at 2, 1992 WL 811804 (ITC 1992) (finding that confidential communications between a U.S. patent agent and his client in connection with a patent prosecution are privileged).  In 2016, the Federal Circuit recognized that attorney-client privilege applies to U.S. patent agents acting within the scope of their authorized practice. See In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

Under U.S. Federal law, attorney-client privilege generally encompasses communications with an attorney made by the client’s representatives and the client. Similarly, privilege generally encompasses communications made with an attorney’s employee or assistant, as well as communications between multiple attorneys working for a client. Under this new rule, like USPTO practitioners, foreign jurisdiction patent practitioners shall also receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.  37 C.F.R. § 42.57(c).

As the new rule is implemented by the USPTO, it applies only to protect covered communications from discovery sought in relation to the inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings implemented under the Leahy-Smith America Invents Act (‘‘AIA’’), and not to trials or proceedings in state or Federal courts.  Notably, the protection extends to communications made when seeking patents at the USPTO or foreign patent offices, such as when prosecuting applications or contemplating where to file an application, if they become the subject of discovery requests in relation to such AIA trials before the USPTO.

The new rule is a welcome clarification so that clients can seek legal advice without fear that those discussions will be used against them in legal proceedings at the USPTO.  It should be noted that the privilege vests with the client, not the attorney, and does not confer any new powers on the attorney or agent to practice law.  Rather, the privilege emanates from those already having authorization to practice as defined in 37 C.F.R. § 42.57(b).  Accordingly, clients should ensure that communications seeking legal advice are with a USPTO practitioner under 37 C.F.R. § 11.7 or a foreign jurisdiction patent practitioner 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.