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The United States Patent and Trademark Office (USPTO) proposed a rule that would amend the rules of practice before the Patent Trial and Appeal Board (PTAB). This rule would recognize that communication, during discovery proceedings before the USPTO, between clients and patent agents and/or foreign associates will hold the same privilege as clients and United States attorneys.

The proposed rule would apply to inter partes review (IPR), post grant review, the transitional program for covered business method patents, and derivation proceedings. The rule would also provide clarification as to the protection afforded to such communications. As it currently stands, this is not addressed in the rules governing the PTAB proceedings at the USPTO. This new rule will not affect the duty of disclosure, candor, and good faith before the USPTO [R-08.2012] under rule 37 CFR 1.56.

Currently a patent agent’s scope-of practice is defined as follows under 37 C.F.R. § 11.5(b)(1):

Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.

With the above description in mind, there have been many cases on patent agent’s work and communication privilege. In Sperry v. State of Fla. ex. rel. Fla. Bar, 373 U.S. 379, 381 (1963), the Supreme Court, in its analysis, recognized that a patent agent’s work “constitutes the practice of law”. The Court explained that the work involved in preparation and prosecution of patent applications requires an agent to advise clients on patentability of inventions under applicable statutory criteria but the Court did not specify if communication between agents and clients is privileged.

With the Supreme Court’s lack of clarification on privileged communication, the Federal District Courts were split when making decisions on cases that followed. For example, in In re Rivastigmine Patent Litigation, 237 F.R.D. 69, 102 (S.D.N.Y. 2006), the Court declined to extend attorney-client privilege to agents because they held that Sperry never intended for agents and attorneys to be treated as equals.

On the other hand, in In re Ampicillin Antitrust Litigation, supra, the Court had a different interpretation of the Sperry ruling. They found that a client’s choice to select an attorney or an agent would “be substantially impaired if as basic a protection as the attorney-client privilege were afforded to communications involving patent attorneys but not to those involving patent agents.”

In a recent case, In re Queen’s University at Kingston, the Federal Circuit Court resolved the District Court’s inability to decipher the Supreme Court’s opinion and created a limited privilege. They looked at multiple cases and found that since patent agents engage in activities constituting the practice of law this distinguishes their communication privilege, “To the extent, therefore, that the traditional attorney- client privilege is justified based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent, that justification would seem to apply with equal force to patent agents.” The Court also examined the Sperry case and found that because Congress allowed patent agents to “engage in the practice of law before the Patent Office, reason and experience compel [it] to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress.” The court further explained privilege is necessary to maintain a client’s reasonable expectation that communication with the agent will be privileged while they prepare and prosecute the patent application.

If this new proposed rule is approved, it would clarify communication and privilege between patent agents and their clients.