USPTO Issues New Regulation on Scope of Attorney-Client Privilege In PTAB Proceedings

On Tuesday, November 7, 2017, the USPTO published its final rule clarifying the situations in which the Office will recognize the existence of the attorney-client privilege in proceedings before the PTAB.  New section 37 C.F.R. 42.57 provides that all communications between a client and a USPTO patent practitioner (i.e. a registered attorney or agent), or between a client and a person authorized under foreign law to provide legal advice on patent matters, which communications are within the scope of the practitioner’s authority, will be afforded the attorney-client privilege.

According to the USPTO’s response to public comments, this “new privilege rule protects eligible communications with qualified foreign attorneys and agents from discovery at PTAB.” 82 FR 51573.  It also extends, to a degree, to foreign non-patent attorneys.  The rule provides that the privilege covers any “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.”  37 C.F.R. 42.57(b).  However, the USPTO’s comments on the new rule indicate that “attorneys not admitted to practice before the USPTO or a foreign patent office” are not covered by the rule.  Such persons, however, might still be covered by other privileges not addressed by this rule.  See 82 FR 51571 (“Finally, this rule does not nullify privilege for others who are not covered by the rule, such as attorneys not admitted to practice before the USPTO or a foreign patent office.”)

This rule is intended to ensure uniformity in application of privilege law in PTAB proceedings, and to confirm that the privilege attaches to communications with both domestic and foreign patent practitioners.  This rule is consistent with the Federal Circuit’s March 7, 2016 In re Queen’s University ruling (820 F.3d 1287), but extends that ruling to cover foreign patent practitioners, and gives the legal community an additional measure of certainty by codifying the privilege.