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USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).   For context, the originally proposed amendment sought to resolve ambiguity as to when privilege extends to USPTO patent practitioners during PTAB discovery proceedings in light of prior Federal CircuitDistrict Court and PTAB decisions.  The now-published rule codifies the PTAB’s intent to protect communications between patent agents and clients from discovery, stating that:

“communication[s] between a client and a USPTO patent practitioner or a foreign patent practitioner that is reasonably necessary and incident to the scope of the patent 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[;]”

“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.”

82 Fed. Reg. 51575 (Nov. 7, 2017).  In addition to the newly-minted rule, responses to solicited comments throughout the rule-making process provide guidance as to how the rule will be applied.  As is made clear by the supplementary information, an important distinction between the proposed amendment and finalized rule is that “[p]atent practitioner” now comprises both USPTO patent practitioners and foreign jurisdiction patent practitioners.  Id. at 51570-51575.  The supplementary information also indicates that (1) privilege only protects information exchanged for purposes of obtaining legal opinions or services, not underlying facts or business documents; and (2) functions that agents are authorized to perform before the USPTO are delineated in CFR 11.5(b)(1).  Id.

When the rule takes effect on December 7, 2017, subject to the supplementary guidelines, communications between patent agents and their respective clients will be protected in post grant proceedings, such as inter partes review, post-grant review, covered business method patents, and derivation proceedings.  As such, the rule provides much-needed guidance to the boundaries of privilege within the context of client communications between USPTO patent practitioners, as well as foreign jurisdiction patent practitioners, before the PTAB.

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About this Author

Matthew C. Hurley, Intellectual Property Attorney, Mintz Levin, Patent Litigation Arbitration, Mediation, ADR Federal District Court Complex Commercial Litigation Trademark Litigation
Member

Matt is the Section Manager for the Intellectual Property Section at Mintz. The primary focus of Matt’s practice is the representation of life sciences companies in disputes involving collaboration agreements, patent licenses, supplier agreements, and distribution contracts. Matt has a deep understanding of the legal and business issues that arise in the life sciences industry and has successfully represented clients in litigation over research, development, commercialization, licensing, royalties, and distribution. Matt also represents companies in patent, trademark, copyright, and other...

617-348-4939
Matthew S. Galica, Mintz Levin, Technology Specialist, Software Development lawyer, Application architect, Attorney
Associate

Matt focuses his intellectual property practice on patent litigation, strategic IP counseling, and patent valuation.  He has experience representing clients before the International Trade Commission (ITC), Federal district courts, and the Patent Trial and Appeal Board.  Matt’s practice covers complex technologies such as microprocessors, graphics processors, RF circuitry, LCD display systems, microelectromechanical systems, audio and video processing, VLSI design, consumer telecommunications systems, and DDR-compliant memory modules and DRAM.

Matt has held lead roles in multiple ITC investigations, where he managed teams of technologists, coordinated complex discovery efforts, developed infringement, validity, and claim construction positions, deposed fact and expert witnesses, and participated in evidentiary hearings.  Matt has served as liaison in German enforcement programs, where he worked closely with foreign counsel to develop strategies for infringement and nullity proceedings.  Additionally, he has served as counsel and liaison in multiple inter partes review and post-grant proceedings, where he developed and coordinated validity positions for patents being simultaneously asserted in multiple jurisdictions. 

Matt also advises clients in complex IP transactions and related diligence, which involves developing and negotiating multiparty agreements and performing extensive transactional diligence on large domestic and international IP portfolios.  Matt provides portfolio management strategies for high-technology companies, including those with standard-essential technology in the memory, RF, and telecommunication spaces.  In addition to his work with electronic device and software companies, Matt works with university technology transfer offices to provide strategic IP guidance on portfolio management and patent valuation. 

Before joining Mintz, Matt was a technology consultant and application architect for a software company in the Boston area.  His work focused on enterprise-level data management and software development.  Before that, Matt conducted research at Worcester Polytechnic Institute, focusing on molten alloy composition detection via x-ray fluorescence. 

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