PTO seeks input on scope of privilege between applicants and U.S. Patent Agents or foreign patent agents

The PTO has announced that it is seeking “input on issues regarding protections from disclosure for communications between patent applicants and Their advisors. The issues include: Whether and to what extent U.S. courts should recognize privilege for communications between foreign patent practitioners and their clients; the extent to which communications between U.S. patent applicants and their non-attorney U.S. patent agents should be privileged in U.S. courts; and whether and to what extent communications between U.S. patent practitioners and their clients should receive privilege in foreign jurisdictions.”  More specifically:

 

1. Please explain the impact, if any, resulting from inconsistent treatment of privilege rules among U.S. federal courts. In your answer, please identify
if the impact is on communications with foreign, domestic, or both types of patent practitioners.

2. Please explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege for communications with U.S. patent agents, including potential benefits and costs. If you believe such a standard would be beneficial, please explain what the scope of a national standard should cover.

3. Please explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege for communications with foreign patent practitioners, including potential benefits and costs. If you believe such a standard would be beneficial, please explain what the scope of a standard should cover.

4. Please explain how U.S. stakeholders would be impacted by an international framework establishing minimum privilege standards in the courts of member countries for communications with patent practitioners in other jurisdictions, including potential benefits and costs. If you believe such a framework would be beneficial, please also address the following issues:

a. Please identify which jurisdictions have potential problems and explain the

exact nature of the problem in each of those jurisdictions.

b. Please explain what the scope of an international framework for privilege standards should cover. An example of such a framework can be found in Appendix 5 of the following document: https://www.aippi.org/download/online Publications/Attachment1Submissionto WIPODecember182013_SCP.pdf.

5. If a national standard for U.S. courts to recognize privilege for U.S. patent agents or foreign practitioners would be beneficial, please explain how that standard should be established.

a. If Federal legislation would be appropriate, what should such legislation encompass? Please consider whether the Federal tax preparer-client privilege legislation, which statutorily extended attorney-client privilege to non-lawyer practitioners (e.g., certified public accountants) under 26 U.S.C. 7525(a), is an appropriate model and explain why or why not. Are there any noteworthy parallels or differences between Federally-registered accountants and Federally-registered patent agents in either policy or operation?

On February 18, the the USPTO is hosting a roundtable and is also soliciting written comments to gather information and views on these questions. The notice of roundtable is here.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

5 thoughts on “PTO seeks input on scope of privilege between applicants and U.S. Patent Agents or foreign patent agents

  1. 2

    Thanks. Back in the day, I did my own html coding and sometimes I think it’s easier than this fancy schmancy blogging software.

    I’ve forwarded my thoughts to the ethics committee at the AIPLA, of which I’m a member, but if anyone has additional thoughts, please post here or shoot me an email and I’ll collect, collate, and forward on — but the deadline is coming fast.

    1. 2.1

      Realizing my reply involves a discussion across several threads, but…

      Does not the snafus in this “fancy schmancy” blogging software indicate that the “obvious” reasoning of “just slap it together and it is entirely predictable” simply falls a little short of reality?

  2. 1

    David,

    The AIPLA article seems to be members only and finding it on WIPO was unproductive. Do you have a better link?

    1. 1.1

      The link at the end doesn’t work? It goes to a GPO.gov page…? Let me know and I’ll figure out what I did wrong.

      1. 1.1.1

        David,

        You did nothing wrong. I tried to copy the URL from your copied text and received a 404 error. Then I tried AIPLA directly. However, the FR notice under “here” retrieves the AIPLA document directly even though it does not look like a hyperlink.

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