USA: Rule on attorney-client privilege for the trials before the PTAB takes force

On November 7, 2017, the US Patent and Trademark Office (USPTO) published its final rule explaining the issue in which the USPTO establishes the attorney-client privilege in proceedings before the Patent Trial and Appeal Board (PTAB). The rule will take effect on December 7, 2017.

Attorney-client privilege is aimed to protect communications between clients and attorneys and keep those communications confidential. It encourages clients to have full and frank discussions with attorneys when seeking legal advice, without fear that those discussions will be used against them in legal proceedings.

The new Section (§ 42.57) of the Code of Federal Regulations clarifies that communications between a client and a USPTO patent practitioner (a person who has fulfilled the requirements to practice patent matters before the USPTO) or a foreign jurisdiction patent practitioner (a person who is authorized under foreign law to provide legal advice on patent matters) will be accorded the attorney-client privilege.

When the new rule comes into force, communications between clients and their domestic or foreign patent attorneys/agents will be protected in inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

The privilege only protects information exchanged for purposes of obtaining legal opinions or services, not being integral to facts or business documentation. The concrete types of communications protected by the privilege are determined according to the Federal law.

If you are interested in protecting your intellectual property in the US or other jurisdiction, please do not hesitate to contact us. We also welcome you to visit our applicant’s guide for more information on patent, trademark or design protection worldwide.