by Dennis Crouch
A bedrock of U.S. legal practice is attorney-client privilege that allows a party to keep certain communications secret. This is an important exception to the broad discovery that is ordinarily permitted in U.S. civil litigation.
In U.S. patent prosecution, a number of privilege issues have arisen – particularly when the communication is not between a client and a U.S. attorney, but rather with a non-lawyer patent agent or a non-U.S. legal service provider.
The USPTO is considering whether to provide a set of best practices as advice to U.S. courts. Taking the first step in that direction, the USPTO has published a Federal Register notice asking for comment on the following questions:
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.
A Roundtable will be held on February 18, 2015 and written comments can be submitted to ACPrivilege@uspto.gov by February 25, 2015.