When Congress created the post-issuance proceedings before the Patent Trial and Appeal Board as part of the Leahy-Smith America Invents Act ("AIA"), it did so with the recognition that they would be adjudicatory in nature. It was with this understanding that the Patent Office promulgated rules making the Federal Rules of Evidence applicable to these proceedings. See 37 C.F.R. § 42.62(a). This of course meant that the attorney-client privilege could be asserted by licensed attorneys practicing before the Board. Unfortunately, this also created a dilemma for patent agents and their clients. On the one hand, patent agents are able to represent petitioners and patent owners before the Board, but on the other hand, there was no indication that their communications with their clients would be protected by the privilege. In view of this background, the Patent Office published a Notice of Proposed Rule Making on October 18, 2016. Specifically, the Office proposed to amend the rules of practice before the PTAB "to recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents and foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys." 81 Fed. Reg. 71,653 (Oct. 18, 2016). This new rule would not only apply to IPRs, PGRs, and CBMs, but would also apply to derivation proceedings. The comment period closes on December 19, 2016.
The rule proposed by the Office seeks to add 37 C.F.R. § 42.57, entitled "Privilege for patent practitioners," which would read:
(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.
This proposed rule ultimately emerged from a roundtable held by the Patent Office in February 2015, during which comments on attorney-client privilege issues were solicited. The responses that the Office received unanimously supported a rule recognizing this privilege. Subsequently, when the Patent Office published proposed rule amendments before the PTAB in August 2015 (see "PTAB Finally Proposes Rule Amendments: The More Things Change . . ."), it included a request for comments on the subject of attorney-client privilege or other limitations on discovery in PTAB proceedings. The Office received responses that "overwhelmingly favored" such a rule, with commentators noting that the rule would lead to clarity and consistency, and could serve to reduce uncertainty and discovery costs.
This proposed rule, of course, comes on the heels of the In re Queen's University at Kingston case, in which the Federal Circuit clarified that communications between a patent agent a client were privileged in federal court when the patent agent acts within the scope of their authorized practice. The Office pointed out in the Notice that when privileges vary across jurisdictions, it can "lead to administrative inefficiencies and inconsistencies in outcome . . . ." The Office believes that this rule "would improve public understanding of how privilege questions are decided before PTAB, and would help further judicial economy by providing PTAB judges with a clear, concise statement of when privilege applies."
To be clear, this rule would only apply when the practitioner performs legal work he or she is authorized to practice. For example, the Notice makes clear that "communications between clients and U.S. patent agents relating to patent application matters would be protected as privileged under the rule, but communications between these parties regarding litigation strategies would not be protected." Nevertheless, the Office believes the rule can apply to communications from in-house counsel performing the functions of a patent attorney, even in jurisdictions that do not grant in-house counsel privilege-type protections.
Comments should be sent to acprivilege@uspto.gov, but they can also be submitted via U.S. mail at: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, attn: "Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege." Again, the comment period closes on December 19, 2016.
