PTAB Adopts New Attorney-Client Privilege Rule for PTO Trial Proceedings, Extending Protection to Patent Agents and Foreign Patent Practitioners

Earlier this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) published a Final Rule regarding the scope of the attorney-client privilege in proceedings before the PTAB.  The Rule states that any “communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the 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.”  This Rule clarifies the scope of the attorney-client privilege protection to explicitly include communications with patent agents and “foreign jurisdiction patent practitioner[s],” which the Rule defines as “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.”  The Rule is intended to protect from discovery in a post-grant proceeding not only communications about the post-grant proceeding, but also “communications made when seeking patents at the USPTO or foreign IP offices, such as when prosecuting applications or contemplating whether to file.”

The Rule will take effect on December 7, 2017, and will apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.