USPTO Adopts Rule Adopting Patent Agent-Client Privilege

The adoption of the final rule, which relates to admissibility in post-grant proceedings, is here, and the substance is:

§ 42.57 Privilege for patent practitioners.

(a) Privileged communications. A 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.

(b) Definitions. The term ‘‘USPTO patent practitioner’’ means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under § 11.7 of this chapter. ‘‘Foreign jurisdiction patent practitioner’’ means 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. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws.

(c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.

4 thoughts on “USPTO Adopts Rule Adopting Patent Agent-Client Privilege

  1. I wish the PTO would grandfather all current patent agents, and then eliminate the admittance of agents. I don’t think a person who cannot counsel an inventor with respect to infringement and invalidity, because they have no education in these areas, provides much of a service to an inventor. It is like asking for an invalid or uninfringeable patent.

  2. Reminds me of Monty Python’s “Holy Hand Grenade of Antioch”:

    And the Lord spake, saying, “First shalt thou take out the Holy Pin. Then, shalt thou count to three. No more. No less. Three shalt be the number thou shalt count, and the number of the counting shall be three. …”

    But seriously, this needed to be clarified for patent agents and their clients.

  3. David, shall receive the same protections of privilege under Federal law…

    Who did these people think they are? This rule reads like a statute.

    1. I believe the rule is limited to admissibility of evidence in post-grant PTAB proceedings. Since the USPTO runs the PTAB proceedings, they get to decide the rules of evidence, including which evidence is privileged.

      See generally 37 CFR § 42.1(a).
      “Part 42 governs proceedings before the Patent Trial and Appeal Board.”

      link to law.cornell.edu

      The wording is broad, but since it only applies to PTAB evidence admissibility, the scope is pretty narrow.

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