United States Patent Office Adopts Rule On Attorney-Client Privilege
The United States Patent and Trademark Office has adopted a new rule, 37 C.F.R. § 42.57, that among other things gives communications with foreign-jurisdiction patent agents the same protection they would be accorded if they were communications with a U.S. attorney.
The new rule applies in post-grant proceedings (such as inter partes reviews) in the Patent Trial and Appeal Board (PTAB), and becomes effective December 7, 2017.
There is no consistent federal law on whether communications with foreign patent agents are protected by the attorney-client privilege. The decision often turns on whether the communications would be protected in the foreign patent agent’s own jurisdiction. Proving this foreign law can be an involved process, and because discovery itself is often limited in foreign jurisdictions, there may not be established law in some jurisdictions that is appropriate in the context of U.S.-style discovery. The new rule flatly applies the privilege to communications between patent professionals and their clients, regardless of the jurisdiction in which the patent professional practices, and thus simplifies the privilege determination.
The new rule is only applicable to PTAB proceedings. However, its clarity and simplicity, and its consistent treatment of U.S. and foreign professionals, may be found persuasive by United States District Courts considering questions of foreign-patent-agent privilege.