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.