AIPLA comes out in favor of USPTO rule for patent agent-client privilege

The AIPLA letter to director Lee is here.

First, I’m not sure the USPTO has power to do this.  Whether or not there is privilege turns, under Fed. R. Evid. 501, on federal common law, federal statutes, or the Constitution, not agency rule-making.

Second, the scope of the privilege is a quagmire.  The problem is that the scope of privilege, at least so far as the Federal Circuit in a 2-1 panel decision in Queen’s University (and other courts) has said, turns on the scope of authority of patent agents.  So, a patent agent who, for example, emails after a patent has issued about, say, its potential infringement: no privilege.

And don’t get me started about the incomprehensible approach of the USPTO on whether patent agents can write assignments.  (“Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.”).  Why on earth would it be competent for a patent agent to simply “replicate” an agreement, without first determining what it does?  And how does one “replicate” an oral agreement?  And why — in order to draft the assignment before filing — must the patent agent represent the patent owner “after a patent issues”?  More fundamentally, how does a patent agent write an assignment before a case is filed, but also is representing the owner after the patent issues? I like time travel movies, but…

But I digress.

For now, and I would say even after/if the USPTO adopts a rule, be very careful if you have patent agents communicating directly with clients, without supervision of a lawyer, because there’s also the possibility that a court won’t follow the Queen’s University case and hold there is no privilege, anyway. That’s already happened in Texas.

Stay tuned.

6 thoughts on “AIPLA comes out in favor of USPTO rule for patent agent-client privilege

  1. David, two points:

    First, I agree that it’s not necessarily a good idea for the USPTO to promulgate rules regarding privilege, not just between agents and their client but also between attorneys and their clients, unless those privilege rules are meant to apply only in the context of proceedings before the USPTO. Even then, such rules are likely to sow confusion, as the PTO may say that some communications are privileged and some judges in some jurisdictions may say otherwise; who is to know a priori where a patent will eventually be litigated and whether or not privilege will apply there? It’s not hard to imaging situations in which some communication is assumed to be privileged because the PTO says it is, only to discover in litigation that it’s not. Or vice versa. (Think, by analogy, to the PTO duty of candor per rule 56 and that imposed by the courts – they’re similar but not the same in all situations.)

    Second, it’s only the USA and Canada that make a big deal out of people who’ve been to law school and people who haven’t, and I don’t if Canada makes a big deal about that distinction when it comes to privilege. To the extent that I’m familiar with other places, where law is a first degree and the only people prosecuting patent applications come from a technical background, communications between patent practitioners and their clients are privileged no less than lawyer-client communications. Which is as it should be, as the clients of patent practitioners expect those communications to be privileged no less than they expect their communications with their family lawyer, their commercial lawyer, and their physician to be privileged (and those practitioners are also providing specialized legal advice that, often, hinges as much on their technical training as it does on their on-the-job legal training).

    Ultimately, the dismissive attitude toward the notion of privilege between a US patent agent and his client that some members of the legal profession exhibit is just another aspect of the guild protecting itself. I see no other purpose served by denying such privilege.

    1. Yes, I agree: not sure this is a good idea at all, the PTO wading in. And, having a “privilege that applies only in the PTO” is sort of worthless, since I guess it would only preclude admissibility in IPRs and the like. (Information would be “confidential” and so no disclosable, without a privilege. Privilege is narrower than confidentiality and basically is a rule of admissibility.)

      I don’t know enough about the details of foreign privilege laws, but do know you’re right that sometimes non-lawyers can be deemed “lawyer-enough” to warrant privilege protection abroad. I know it’s a mess when you get these multi-national corporations involved, and there are fun cases I’ve read about what happens when a French in-house “lawyer” is on a call with US counsel… fun times for all.

      I’m not sure the motivation is self-interest, at least not to the degree you suggest. Honestly, I think part of it is historic misunderstanding by courts/bar associations about patent agents and not recognizing/understanding that they’re subject to the same ethical rules as patent lawyers.

      The most interesting thing to me is a tidbit buried in the since-repealed PTO Code of ethics, which said that patent agents had an obligation to maintain privilege. It’d been there from 1985 to 2013…

      Hopefully Will Covey, Sarah Harris, Michelle Lee, and others are reading…

      1. Sometimes? How about invariably. Find me a jurisdiction where a foreign patent agent does not have privilege. That would be the greater trick. Now, that doesn’t mean your patent agent has privilege regarding your divorce, or, say, your coke smuggling, but regarding patents, I’d say they do.

        Time for the US to fall in with the rest of the world?

  2. David,

    RE: In re Queen’s Universtity at Kingston, Judge Reyna at Dissent pages 6-7 said:

    “Further, any purported need for an agent-client privilege is greatly minimized by the fact that patent agents and their clients have the opportunity to delete and destroy emails and other correspondence in the period of time between when they are exchanged and when they would be sought in litigation. Particularly for patent prosecution, which often occurs years before any litigation involving the patent, patent agents and their clients may influence any obligation to produce documents and correspondence in litigation via their retention and destruction policies.

    Under most circumstances, a patent agent helping a client prepare, file, and prosecute a patent application before the Patent Office has no duty to maintain in perpetuity all correspondence with the client regarding the patent application. Similarly, it is considered good practice among attorneys to have thoughtful document retention and destruction policies, and to encourage such practices for their clients. See, e.g., The Sedona Guidelines: Best Practice Guidelines & Commentary for Managing Information & Records in the Electronic Age, at iv (2d. ed. 2007), link to thesedonaconference.org, (“Destruction is an acceptable stage in the information life cycle; an organization may destroy or delete electronic information when there is no continuing value or need to retain it.”); R. Thomas Howell, Jr. & Rae N. Cogar, Developing and Implementing a Record Retention Program,50 Prac. Law. (ALI-ABA) 6, 26 (2004) (“If records are no longer of use in the business context and there are no statutory, regulatory or investigative reasons to retain them, then it is in the company’s best interest to dispose of them.”).”

    True?

    1. Document retention with patents is hard because of the 20-year life. Given the incremental cost that maintaining electronic documents may present, I’d create a policy that errs, absent client consent, toward maintaining them. But at bottom there’s the “ethical” answer and the “risk management” answer, which vary.

      1. David,

        Your advice appears to be counter to Judge Reyna’s. Assume there is no litigation on the horizon, no continuations, and there are no notes to the file (as the PTO recommends or did) which explains why a reference was not submitted in an IDS, so that the only reason for a firm to keep the documents is to defend a malpractice suit. Also, assume that there is enough life left in the Jack Winter “conduit to the Patent Office” zombie so that in an infringement suit filled down the road, defendant’s attorneys can still cite it without violating Rule11, what was the advantage to the client of keeping the documents, assuming they could have been destroyed without leaving a trace?

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