The US Patent and Trademark Office (PTO) issued a new rule on
attorney-client privilege for trials before the Patent Trial and
Appeal Board (PTAB) on November 7, 2017. The new rule takes effect
December 7, 2017. The new rule was spurred by the decision of the
US Court of Appeals for the Federal Circuit in In re
Queen's University at Kingston (
IP Update, Vol. 19, No. 4), which held that
communications between a client and a non-lawyer patent agent
relating to PTO proceedings are privileged in federal court
cases.
New rule 37 CFR § 42.57 provides that communication between
a client and a PTO patent practitioner or a foreign jurisdiction
patent practitioner that is reasonably necessary and incident to
the scope of the practitioner's authority shall receive the
same protections of privilege as the communication would if it were
between a client and lawyer. A PTO patent practitioner is a person
who has fulfilled the requirements to practice before the PTO. A
foreign
