Patent Agent-Client Privilege in PTAB Post-Grant Proceedings

On November 7, 2017, the USPTO issued a final rule establishing that communications “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 were between a client and an attorney authorized to practice in the United States.”¹ The term “USPTO patent practitioner” is defined broadly and includes both U.S. patent agents and foreign patent practitioners. .² When the rule takes effect on December 7, 2017, patent agent-client communications will be protected in post-grant proceedings³ as well as in Federal Court.

The purpose of the rule is to clarify “situations where privilege is recognized for communications between clients and their domestic or foreign patent attorneys and patent agents”⁴ and was enacted based on concerns expressed in a February 2015 roundtable held by the USPTO “that rules regarding privilege for U.S. patent agents and foreign practitioners in PTAB discovery proceedings were difficult to discern.”⁵

The rule applies to admissibility of evidence in AIA post-grant proceedings before the PTAB (“the new privilege rule protects eligible communications with qualified foreign attorneys and agents from discovery at PTAB”⁶) and is limited to communications that are “reasonably necessary and incident to the scope of the practitioner’s authority” i.e., opinions regarding infringement or validity may not be protected.

The USPTO rule follows the In re Queen’s University at Kingston decision by the Federal Circuit⁷ from 2016, which recognized a patent agent privilege in cases falling under federal law.

To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communication relating to ‘obtaining legal advice on patentability and legal services in preparing a patent application’ will be kept privileged.⁸ [citations omitted]

In Queen’s University, the Federal Circuit held that:

Communications between non-attorney patent agents and their clients ‘which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate’ receive the benefit of the patent-agent privilege. ⁹[citations omitted]

However, the Federal Circuit cautioned that:

Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not ‘reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”¹⁰ [citations omitted]

As noted in the USPTO final rule, “the Federal Circuit decision [in Queen’s University] only addresses domestic patent agents, not foreign attorneys and agents”¹¹ even though “some foreign jurisdictions rely entirely or almost entirely on non-attorney patent agents” such that “hiring an attorney to handle patent matters can be difficult or impossible.”¹² The USPTO rule seeks to address these situations.

Limitations on patent agent privilege:

It is worthwhile to note that the following limitations on patent-agent privilege remain:

• The final USPTO rule only addresses domestic patent agent and foreign attorney or agent privilege for post-grant proceedings in front of the PTAB.
• Communications that are not “reasonably necessary and incident to the prosecution of patents before the Patent Office” do not fall within the scope of the patent-agent privilege, i.e., communications relating to validity or infringement.
• The Federal Circuit decision in Queen’s University only addresses U.S. patent agent privilege in Federal Court – it does not address foreign attorney or agent communications.
• Communications with a patent agent may not be shielded from discovery in state court.¹³

The final rule, found in 37 C.F.R. § 42.57, reads as follows:

(a) Privileged communications. A 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 were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.

(b) Definitions. The term ‘‘USPTO patent practitioner’’ means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under § 11.7 of this chapter. ‘‘Foreign jurisdiction 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. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws.

(c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall 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.