PTO Codifies Patent Agent Privilege at the PTAB

The U.S. Patent and Trademark Office has extended patent agent privilege to Patent Trial and Appeal Board (PTAB) proceedings. The PTO has thus resolved an ambiguity resulting from the Federal Circuit’s decision in In re Queen’s University, 820 F.3d 1287 (Fed. Cir. 2016).  In that case, as we discussed in this webinar, the Federal Circuit recognized patent agent privilege for communications during ex parte patent prosecution during federal court litigation, but was silent on whether patent agent communications were privileged during post-issue PTAB proceedings.

Because the Queens University Court was silent on whether patent agent privilege applied in PTAB proceedings, the PTO proposed an amendment to its rules to protect patent agent communications in proceedings such as inter partes reviews, post-grant reviews, covered business method reviews, and derivation proceedings. Patent agents now receive the same treatment as attorneys on issues affecting privilege or waiver during PTAB proceedings. The approved rule, 37 C.F.R. § 42.57, will take effect December 7, 2017.

The new rule also grants privilege to “a foreign jurisdiction patent practitioner,” which is defined as “a person who is authorized to provide legal advice in a foreign jurisdiction” even if that foreign jurisdiction does not provide privilege for patent agents. This would likely apply to European patent agents (who are typically privileged under privilege laws of their respective countries), Japanese benrishi (who are privileged in foreign proceedings under Japanese law), and Canadian patent agents (who do not have privilege under Canadian law). Furthermore, this would appear to apply to foreign in-house counsel, who do not typically have privilege, as we discussed in our webinar on patent agent and foreign privilege.

Lessons for Practice

This rule clarifies domestic patent agent privilege, and many patent practitioners expected privilege to extend to PTAB proceedings. But what is interesting is that the PTO has extended patent agent privilege to foreign patent practitioners, who likely do not have similar privilege during litigation. Foreign jurisdictions typically do not have broad privilege protections for attorneys or agents, and US courts typically do not recognize privilege extending beyond the protections of the foreign attorney’s home country. According to the comments in the Federal Register, this broad protection for foreign counsel was adopted to avoid the “touch base” standard for most US courts and to be “simpler to adjudicate and [to] lead to more predictable and consistent results….” It is unclear whether a US court would recognize this extension of privilege during litigation, so be cautious when working with foreign patent counsel in matters that could lead to litigation.