New Rule Extends US Attorney-Client Privilege in Proceedings before the PTAB

By: Tammy J. Dunn

A new rule will take effect on December 7, 2017.  The new rule applies to the scope of attorney-client privilege in proceedings before the PTAB.  According to the Rule:

[A]ny communication between a client and a USPTO 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 under Federal law as if that communication was between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.

The attorney-client privilege protection now explicitly includes communications with patent agents and foreign jurisdiction patent practitioners.  The new rule aligns with the 2016 ruling from the United States Court of Appeals for the Federal Circuit that held 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).  This ruling effectively extended the previous scope of the attorney-client privilege and made clear that non-attorney patent agents’ communications with clients could still be considered privileged and therefore immune from having to be produced as part of the discovery process in US litigation.  The Rule is intended to protect from discovery in a post-grant proceeding not only communications about the post-grant proceeding, but also “communications made when seeking patents at the USPTO or foreign IP offices, such as when prosecuting applications or contemplating whether to file.”  The new rule will be codified at 37 CFR § 42.57.