The United States Patent and Trademark Office ("PTO")
published a
proposed rule in the Federal Register on October 18, 2016,
which stated that communications between clients and patent agents
during PTO proceedings would be treated similarly to the
attorney-client privilege ("The Proposed
Rule").1 Such a rule would pertain to certain
actions before the PTO handled by patent agents, including
inter partes reviews, post-grant reviews, the transitional
proceedings for covered business method patents, and derivation
proceedings.2
The Proposed Rule states that the new 37 C.F.R.
§ 42.57 should be read as follows:
§ 42.57 Privilege for
patent practitioners.
(a) Privileged communications. A communication between
a client and a domestic or foreign patent practitioner that is
reasonably necessary or incident to the scope of the patent
practitioner's authority shall receive the same protections of
privilege as if that communication were between a client and
