USPTO Creates a Rule Expanding Privilege to Patent Agents

Takeaway: The USPTO has issued a rule that establishes confidentiality between patent agents and their clients.

On November 7, 2017, the United States Patent and Trademark Office released a new rule that indicates that patent agents, as well as attorneys, will be covered by the privilege rule at the Patent Trial and Appeal Board.

In the past, the ability to shield communications under the privilege rule has been a gray area for patent agents who have not been admitted as attorneys in a state jurisdiction. This rule allows them to keep information discussed with a client confidential in post-grant proceedings.

The difference between a patent agent and a patent attorney is that a patent agent has an engineering or science background and has successfully passed the patent bar exam, whereas a patent attorney has additionally gone to law school and passed a state bar exam. Patent agents are allowed to draft and prosecute patent applications and try cases at the Patent Trial and Appeal Board, but cannot practice in state or federal courts or give legal advice on anything other than inventions, patent applications, their prosecution, and post-grant patent proceedings.

This rule is important because if a patent agent is representing someone in a post-grant proceeding at the Patent Trial and Appeal Board, then they will need to be able to keep their client communications and work product confidential and not available to adversaries.

One area that is still unclear is communications with foreign associates.
Communications with a foreign non-attorney patent agent are still not covered by this rule, which could create yet another loophole in the privilege rule. This issue could arise where there is a PCT filing and a patent agent or attorney for that matter is working with foreign associates around the world. With that said, this is still a step in the right direction for keeping information confidential for clients at the Patent Trial and Appeals Board.