Patent Agent Privilege Recognized In Final Rulemaking Issued By USPTO

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:

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. 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. 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...