The United States Patent and Trademark Office (“PTO”) published a proposed rule in the Federal Register on October 18, 2016, which stated that communications between clients and patent agents during PTO proceedings would be treated similarly to the attorney-client privilege (“The Proposed Rule”).¹ Such a rule would pertain to certain actions before the PTO handled by patent agents, including inter partes reviews, post-grant reviews, the transitional proceedings for covered business method patents, and derivation proceedings.²

The Proposed Rule states that the new 37 C.F.R. § 42.57 should be read as follows:

•  42.57     Privilege for patent practitioners.

(a) Privileged communications. A communication between a client and a domestic or foreign patent practitioner that is reasonably necessary or incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege 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 “domestic patent practitioner” means a person who is registered by the United States Patent and Trademark Office to practice before the agency under section 11.6. “Foreign 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, and regardless of whether that jurisdiction provides privilege or an equivalent under its laws.³

The Proposed Rule comes at a time where there is some uncertainty as to the confidentiality of communications between a non-attorney patent agent and the agent’s client. In 2016 alone, two courts reached opposite holdings on this issue.

One of these cases, In re Queen’s University, is a Federal Circuit decision that applied the attorney-client privilege to communications between patent agents and their clients.⁴ The Federal Circuit found that the Federal Rules of Evidence (which governed this federal dispute) authorizes federal courts to adopt new privileges, and that the court should turn to reason and experience to determine whether certain privileges should be adopted.⁵ Heavily relying on the Supreme Court’s holding in Sperry v. Florida, 373 U.S. 379 (1963), the Federal Circuit reasoned that patent agents engage in the practice of law and that a “client [therefore] has a reasonable expectation that all communications relating to obtaining legal advice on patentability and legal services in preparing a patent application will be kept privileged.”⁶ Accordingly, the Federal Circuit recognized that communications between non-attorney patent agents and their clients are privileged to the extent that those communications are “reasonably necessary and incident” to prosecuting a patent application or any other proceeding before the office involving a patent/patent application.⁷

On the other hand, in In re Silver, the Court of Appeals for the Fifth District of Texas at Dallas refused to recognize an attorney-client privilege for communications between patent agents and their clients.⁸ In re Silver involved a state contract law claim⁹ and was not a federal case dealing with issues of patent validity and infringement; thus, the court was not bound by the Federal Circuit’s earlier holding in In re Queen’s University. Unlike the Federal Rules of Evidence that authorizes federal courts to adopt new privileges, Texas state courts are prohibited from determining new discovery privileges and may only rely on privileges already grounded in rules established by state law.¹⁰ Since no Texas statute or rule has recognized a patent agent privilege, the court in In re Silver declined to acknowledge this privilege for the state law claims at hand.¹¹

In addition to In re Silver and In re Queen’s University, PTO judges overseeing adjudicative proceedings have other persuasive authorities from which to draw upon when considering whether the attorney-client privilege also applies to patent agents and their clients.¹² Given the national uncertainty regarding the confidentiality of communications between patent agents and their clients, judges at the PTO have been making these kinds of legal determinations on a case-by-case basis.¹³

The Proposed Rule has been well-received by parties that litigate at the PTO because such parties appreciate that The Proposed Rule can reduce uncertainty and mitigate discovery costs.¹⁴ Importantly, the rule “would help ensure consistent outcomes with respect to privilege matters that arise at the Office, would improve public understanding of how privilege questions are decided before [the] PTAB, and would help further judicial economy by providing [the] PTAB judges with a clear, concise statement of when privilege applies.”¹⁵ Especially in light of the PTO’s recent increased role in adjudicating disputes over patent validity, The Proposed Rule appears productive for all parties involved in PTO adjudications.¹⁶