VPATAPP Alert_The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

https://www.lexology.com/library/detail.aspx?g=8604f37e-7bd8-4e2a-a7a4-1790d332d69f

By Womble Bond Dickinson (US) LLP

Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such authorized practice includes both preparation and prosecution of patent applications as well as appeals and AIA review proceedings before Patent Trial and Appeal Board (“PTAB”). Unfortunately, it has been unclear whether communications between patent agents and their clients are protected as privileged in proceedings before the USPTO or U.S. courts. Recently, however, the USPTO and the Federal Circuit each has clarified that a patent agent’s communications related to his or her authorized practice are protected in the same manner as attorney client communications, such as those by patent attorneys. Specifically, in In re Queen’s University at Kingston, the Federal Circuit affirmed the privilege between patent agents and clients for communications reasonably connected to the preparation and prosecution of patent applications. The USPTO, meanwhile, finalized rules in December further clarifying the scope of the privilege in AIA proceedings. Interestingly, while the court decisions don’t address privilege with respect to foreign jurisdiction patent practitioners, the USPTO rules further provide for protection of privileged communications between foreign practitioners and U.S. practitioners or clients.