The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings.
The proposed rule would recognize a privilege for certain communications between clients and non-attorney U.S. patent agents and foreign patent practitioners (“Patent Practitioners”). The proposed privilege would only apply in PTAB proceedings, and then only “where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices.” Notably, the proposed privilege would not extend to communications relating to district court litigation.
The Current Rules Lack Consistency
Matters before the PTAB have a more litigious flavor than most patent proceedings before the PTO, as parties are allowed to submit evidence and question witnesses through direct and cross examinations. However, the existing rules do not address whether the attorney-client privilege extends to communications with Patent Practitioners. Currently, when the question arises as to whether a communication is protected by the privilege, the PTAB makes legal determinations on a case-by-case basis. As readers of this blog likely know, these ad hoc decisions lead to uncertainty for parties, increased discovery costs and decreased utility of valuable Patent Practitioners.
The proposed rule would recognize a Patent Practitioner-client privilege that is modeled after the stalwart attorney-client privilege. Section 42.57 of Title 37 of the Code of Federal Regulations would read as follows:
(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.
Privileged communications would be protected in PTAB trial proceedings, such as inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings.
The most significant takeaway is this: clients should soon feel at ease having candid conversations concerning PTAB matters with their non-attorney Patent Practitioners.
However, readers should make note of what this rule does not protect. The proposed rule would not apply to patent cases outside of PTAB. It is worth restating that this privilege would not protect all communications between Patent Practitioners and their clients; the communications must concern legal work that the Patent Practitioners are authorized to perform. Other communications, including conversations about related patent litigation, would not be protected. Further, the proposed rule would include the limitations of the attorney-client privilege as well. For instance, a client could accidentally waive the privilege by sharing the protected communication with a third party.
Comments on the proposed rule have been overwhelmingly positive. As such, it is likely the rule will pass soon after the comment period closes in mid-December. Stay tuned to the IP Law Blog for a follow-up post when the PTO reaches its decision on the proposed rule.
 Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board, 81 Fed. Reg. 71,653, 71,655 (Oct. 18, 2016) (to be codified at 37 C.F.R. pt. 42).
 See Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 117 (PTAB 2014), cited in Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board, 81 Fed. Reg. at 716,654.
 Supra note 1, at 71,657.