USPTO Seeks Input on Patent Privilege Issues

The USPTO is seeking public comment on patent privilege issues, regarding the legal protections afforded to communications between patent practitioners and clients in the U.S. and foreign countries. The USPTO is hosting a roundtable to discuss these issues on February 18, 2015 at its Alexandria, Virginia campus.

The Privilege Issues

According to the January 26, 2015 Federal Register Notice, the USPTO is seeking input on the following issues:

• 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.
• Whether and to what extent communications between U.S. patent practitioners and their clients should receive privilege in foreign jurisdictions.

The Federal Register Notice notes that U.S. jurisdictions are inconsistent with regard to their treatment of communications with foreign patent practitioners and non-attorney U.S. patent agents, and that the privilege laws (or professional secrecy obligations) of foreign countries vary by statute and common law.

The Federal Register Notice hints that one purpose behind this information-gathering may relate to ”the possibility of developing an international minimum standard for recognizing privileged communications between clients and patent practitioners,” which has been considered “by the Standing Committee on the Law of Patents (SCP) at the World Intellectual Property Organization (WIPO).” Information on U.S. and foreign laws have been compiled in WIPO document SCP/20/9, ‘‘Confidentiality of Communications between Clients and their Patent Advisors: Compilation of Laws, Practices and other Information,’’ which you can find here. A proposed international framework for patent privilege prepared by U.S. and European organizations can be found here.

Questions For Comment

The USPTO seeks written comments (by February 25, 2015) on the following specific questions:

1. Please explain the impact, if any, resulting from inconsistent treatment of privilege rules among U.S. federal courts. In your answer, please identify if the impact is on communications with foreign, domestic, or both types of patent practitioners.
2. Please explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege for communications with U.S. patent agents, including potential benefits and costs. If you believe such a standard would be beneficial, please explain what the scope of a national standard should cover.
3. Please explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege for communications with foreign patent practitioners, including potential benefits and costs. If you believe such a standard would be beneficial, please explain what the scope of a standard should cover.
4. Please explain how U.S. stakeholders would be impacted by an international framework establishing minimum privilege standards in the courts of member countries for communications with patent practitioners in other jurisdictions, including potential benefits and costs. If you believe such a framework would be beneficial, please also address the following issues:
   a. Please identify which jurisdictions have potential problems and explain the exact nature of the problem in each of those jurisdictions.
   b. Please explain what the scope of an international framework for privilege standards should cover. An example of such a framework can be found in Appendix 5 of this document here.
5. If a national standard for U.S. courts to recognize privilege for U.S. patent agents or foreign practitioners would be beneficial, please explain how that standard should be established.
   a. If Federal legislation would be appropriate, what should such legislation encompass? Please consider whether the Federal tax preparer-client privilege legislation, which statutorily extended attorney-client privilege to non-lawyer practitioners (e.g., certified public accountants) under 26 U.S.C. 7525(a), is an appropriate model and explain why or why not. Are there any noteworthy parallels or differences between Federally-registered accountants and Federally-registered patent agents in either policy or operation?

The USPTO asks commenters “to include information identifying … whether they are patent attorneys, agents, owners, licensees, or any other type of entity,” so the USPTO can better understand how they are impacted by patent privilege issues.

Please refer to the Federal Register Notice for detailed information on how to submit written comments or request to speak at the roundtable.