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USPTO to Discuss Privilege Issues Regarding Communications between Clients and their Patent Advisors

by | Feb 4, 2015 | Patent | 0 comments

The United States Patent and Trademark Office (“USPTO”) is in quest to deliberate on issues concerning protections from disclosure for communications between patent applicants and their patent advisors.  More specifically, the USPTO is commencing a discussion on whether and to what extent the U.S. Courts should recognize privilege for communications between U.S. patent practitioners and their clients in foreign jurisdictions; U.S. applicants and their “non-attorney” U.S. patent agents; and between foreign patent practitioners and their clients.

A roundtable discussion concerning patent client communication privilege issues is set to embark on February 18, 2015 at the United States Patent and Trademark Office in Alexandria, VA. Historically, the trend has been anything but uniform, as to whether the inventor clients’ communication with their patent advisors (attorneys and registered agents) is recognized as privileged by the U.S. Courts.  In this regard, the rules governing privilege vary not only  amongst the U.S. jurisdictions, but also internationally amongst various nations. Accordingly, the national and international discrepancy in client privilege issues has shown to create reluctance from many clients to share critical patent prosecution information with their patent advisors.  In particular, some clients tend to be apprehensive in divulging ciritical prosecution information to their patent advisors, since it may be subject to disclosure in judicial proceedings of some jurisdictions.

For instance, in the United States, privilege issues affect patent advisors. This is because the U.S. district courts have displayed inconsistent ruling concerning the availability and scope of privilege for communications between clients and their “non-attorney” patent agents. Accordingly, there are some U.S. courts that do not allow protection for communications between clients and their foreign, non-US practitioners. Primarly, this occurs because most district courts in the United States tend to follow their own precedents when it comes to ascertaining client privileges with their patent advisors.

Given this lack of uniformity, the USPTO has renewed its efforts  in discussing issues related to protecting communications between patent applicants and their “non-attorney” patent advisors. In this regard, the USPTO is holding a roundtable conference in hopes to generate comments from parties, who have interest in protecting confidential communications between inventors and their patent advisors.

Given this, even the Standing Committee on the Law of Patents (“SCP”) at the World Intellectual Property Organization (“WIPO”) has worked diligently on developing an international minimum standard for recognizing privileged communications between clients and patent advisors.  Preliminarily, their efforts have shown to bear fruit: many WIPO memnbers have enacted a compilation of relevant laws adressing privilege protection. Similarly, the USPTO seems to be initiating like efforts. By prompting preliminary discussions, the USPTO may be integral in creating uniformity when it comes to patent privilege issues.