On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and a U.S. attorney. 82 Fed. Reg. 51570-75 (Nov. 7, 2017). The privilege extends to communications during all aspects of USPTO practice, including traditional prosecution as well as PTAB proceedings. See 82 Fed. Reg. at 51571 (“the purpose of the rule is to protect any communication with authorized counsel from discovery in PTAB, not just communication about the instant proceedings”). The final rule is effective December 7, 2017.
The final rule issued with support from the majority of commentators from a proposed rule published in a Notice of Proposed Rulemaking on October 18, 2016. See Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings for a discussion of the Notice of Proposed Rulemaking for a discussion of the proposed rule.
The final rule, codified as 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 patent practitioner that is reasonably necessary and incident to the scope of the patent 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 patent 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.
The definition of “USPTO patent practitioner” (referred to as “domestic patent practitioner” in the proposed rule) was modified to encompass practitioners granted limited recognition to practice before the USPTO, as provided for by 37 C.F.R. § 11.9 as well as those registered to practice before the USPTO under 37 C.F.R. § 11.6. Specifically, the USPTO amended the definition in paragraph (b) to refer to a person who has fulfilled the requirements to practice before the USPTO under 37 C.F.R. § 11.7, whereas the proposed rule referred to an individual registered to practice before the USPTO under 37 C.F.R. § 11.6.
Additionally, the USPTO added paragraph (c) to the final rule to clarify that non-attorney practitioners are afforded privilege in all the same situations as attorneys, including communications made between a client’s representatives in the absence of the client, and not just for direct communications between patent practitioners and clients.
The final rule remains consistent with the recognition of the patent practitioner privilege by the Federal Circuit in In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016). In Queen’s University, the Federal Circuit recognized an independent patent agent privilege that extends to communications that are “reasonably necessary and incident to” the scope of their practice as authorized by Congress. See id. at 1301. The Federal Circuit noted that non-recognition of patent-agent privilege would “frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.” Id. at 1298.
Consistent with the conclusion Queen’s University reached, the final rule limits the scope of the patent agent privilege to communications that are reasonably necessary and incident to the activities such practitioners are authorized to engage in by Congress. As with the proposed rule, the final rule goes beyond Queen’s University, extending the privilege to both U.S. and foreign patent practitioners.