Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board

Federal Register, Volume 81 Issue 201 (Tuesday, October 18, 2016)

Federal Register Volume 81, Number 201 (Tuesday, October 18, 2016)

Proposed Rules

Pages 71653-71657

From the Federal Register Online via the Government Publishing Office www.gpo.gov

FR Doc No: 2016-25141

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 42

Docket No. PTO-P-2016-0029

RIN 0651-AD10

Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board

AGENCY: Patent Trial and Appeal Board, United States Patent and Trademark Office, U.S. Department of Commerce.

ACTION: Proposed rule.

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SUMMARY: This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S.

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patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.

DATES: Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration.

ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to: acprivilege@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of ``Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege.''

Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal at http://www.regulations.gov. See the Federal eRulemaking Portal Web site for additional instructions on providing comments via the Federal e-

Rulemaking Portal.

Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message to be able to more easily share all comments with the public. The Office prefers the comments to be submitted in plain text, but also accepts comments submitted in ADOBEsupreg portable document format or MICROSOFT WORDsupreg format. Comments not submitted electronically should be submitted on paper in a format that accommodates digital scanning into ADOBEsupreg portable document format.

The comments will be available for public inspection at the Office of Policy and International Affairs, currently located in Madison East, Second Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office's Internet Web site at http://www.uspto.gov/patents/law/comments/index.jsp and at http://www.regulations.gov. Because comments will be made available for public inspection, information that the submitter does not desire to be made public, such as address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Soma Saha, Patent Attorney, by email at soma.saha@uspto.gov or by telephone at (571) 272-8652; or Edward Elliott, Attorney Advisor, by email at edward.elliott@uspto.gov or by telephone at (571) 272-7024.

SUPPLEMENTARY INFORMATION: Purpose: This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board (PTAB) to recognize that communications between non-attorney U.S. patent agents or foreign patent practitioners and their clients that pertain to authorized practice before the United States Patent and Trademark Office (Office or USPTO) are privileged to the same extent as communications of that sort conducted between clients and U.S. attorneys. Under the proposed rule, those communications would be protected from discovery in trial practice proceedings at the USPTO. The proposed rule would apply to inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM), and derivation proceedings. Currently, the rules governing proceedings at the USPTO do not address the privilege of communications with patent practitioners, and questions regarding that matter are decided on a case-by-case basis under common law principles. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.

Background: Within this notice, the term ``patent practitioner'' includes both those authorized to practice patent matters before the USPTO and those authorized to practice patent matters in foreign jurisdictions. When referring to these groups separately, the terms ``U.S. or domestic patent practitioners'' and ``foreign patent practitioners'' will be used, respectively.

In February 2015, the USPTO held a roundtable and solicited comments on attorney-client privilege issues. See Notice of Roundtable and Request for Comments on Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients, 80 FR 3953 (Jan. 26, 2015). As part of that process, the USPTO requested comments on whether it should recognize that communications between patent applicants and owners and their U.S. patent agents or foreign patent practitioners are privileged to the same extent as communications between U.S. patent attorneys and patent applicants and owners. Respondents unanimously supported a rule recognizing such privilege. See USPTO, Summary of Roundtable and Written Comments, available at http://www.uspto.gov/sites/default/files/documents/Summary%20of%20Privileged%20Communication%20Roundtable.pdf (``Privilege Report'').

The USPTO administers various proceedings that entail discovery procedures, namely the IPR, PGR, and transitional program for CBM patents. In addition, the derivation proceedings provided for by the Leahy-Smith America Invents Act, Public Law 112-29, 125 Stat. 284 (2011) (AIA) permit discovery. Questions regarding privilege issues may arise in the course of discovery, and as some roundtable commenters noted, rules regarding privilege for U.S. patent agents and foreign practitioners during discovery in PTAB proceedings are not well defined.

Current Practice: PTAB proceedings are subject to the Federal Rules of Evidence (FRE), which include rules on attorney-client privilege. See 37 CFR 42.62(a). Accordingly, privilege may be asserted in PTAB proceedings by licensed attorneys. However, the FRE does not explicitly address privilege for communications with non-attorney U.S. patent agents or with foreign patent practitioners.

The rules governing PTAB practice likewise do not address this matter, and when it arises, PTAB Administrative Law Judges make legal determinations as to which communications may be protected from disclosure on a case-by-case basis, based on common law. See GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 117 (PTAB 2014). U.S. courts have devised several different approaches to determine under what circumstances communications with these practitioners are privileged. As the Privilege Report notes, the common law on privilege for domestic and foreign patent practitioners varies across jurisdictions. Different approaches are taken, and results sometimes conflict. This may lead to administrative inefficiencies and inconsistencies in outcomes, as PTAB must select which set of common law rules to follow. (It is also noted that Administrative Law Judges in other agencies recognize certain confidential communications with a patent agent as privileged. See, e.g., USITC Inv. No. 337-TA-339, slip op. at 2, 1992 WL 811804 (ITC 1992) (finding that confidential communications between a U.S. patent agent and his client in connection with

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a patent prosecution are privileged).) The Federal Circuit recently recognized that attorney-client privilege applies to U.S. patent agents acting within the scope of their authorized practice. See In re Queen's University at Kingston, PARTEQ Research and Development Innovations, No. 2015-145 (Fed. Cir. 2016).

The Office has strong policy reasons to establish a privilege rule governing trial proceedings before PTAB. Such a rule would help ensure consistent outcomes with respect to privilege matters that arise at the Office, would improve public understanding of how privilege questions are decided before PTAB, and would help further judicial economy by providing PTAB judges with a clear, concise statement of when privilege applies.

Public Comments: In August 2015, the USPTO published in the Federal Register a proposed rule amending the rules for trial practice before the Office. See Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 FR 50719 (Aug. 20, 2015). Included in that proposed rule was a request for comments on the advisability of a privilege rule for PTAB proceedings. The comments submitted in response to that request are available on the USPTO Web site at http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/comments-amendments-rules-practice-trials.

Those responding to the request universally agreed that a privilege rule for PTAB proceedings should be promulgated. Respondents overwhelmingly favored promulgating such a rule, with some noting that it would lead to clarity and consistency and ``can reduce uncertainty and mitigate discovery costs.'' See Letter from Frederick W. Mau II on behalf of Toyota Motor Corp., David B. Kelley on behalf of Ford Motor Co., and Mark Duell on behalf of American Honda Motor Co., Inc., RE: Comments on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, p. 4-5 (Oct. 16, 2015). Others suggested that ``if patent agents are not entitled to have their communications be considered privileged, however, then their utility--and associated cost savings for stakeholders--is lost.'' See Letter from Sharon A. Israel, President of the American Intellectual Property Law Assoc., RE: Response to Proposed ``Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board,'' 80 FR 50720 (August 20, 2015), p. 15-16 (Oct. 21, 2015).

Commenters said it ``would be particularly useful for patent agents' communications to be explicitly protected in the discovery rules for post-grant proceedings (e.g., inter parties sic review) before the USPTO.'' See Letter from Dorothy R. Auth, President of the New York Intellectual Property Law Assoc., RE: NYIPLA Comments in Response to ``Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board,'' Federal Register Notice, August 20, 2015, Vol. 80, No. 161 (80 FR 50720), p. 6-9 (Nov. 18, 2015). Commenters suggested that the rule should extend at least to communications made in connection with acts that patent agents are authorized to perform in their particular jurisdictions, such as prosecuting patent applications. The USPTO agrees that the scope of a privilege rule should be defined by the activities that the agent is authorized to carry out. Others suggested that it should be ``a simple rule . . . that explicitly recognizes privilege for communications between patent applicants or owners and their domestic patent agents or foreign professional patent practitioners under the same circumstances as such privilege is recognized for communications between applicants or owners and U.S. attorneys.'' See Letter from Andrew D. Meikle, President of the U.S. Section of the International Federation of Intellectual Property Attorneys (FICPI), RE: Comments on ``Recognizing Privilege for Communications With Domestic Patent Agents and Foreign Patent Practitioners'', p. 4 (Nov. 24, 2015).

According to these comments, ``this approach would provide the greatest uniformity and certainty, and avoid the need for the PTAB to engage in complex fact based analysis regarding application of the privilege under the common law.'' Id. These views were echoed by a law professor who has studied this issue since 2008:

The privilege should be as broad as the ordinary attorney-client privilege. It should cover not only U.S. patent agents, but also foreign legal representatives. While the best solution would be a privilege that applied in all legal tribunals--not only the PTAB, but also federal and state courts--adoption of a privilege only for the PTAB would be a valuable first step toward this goal.

See Letter from John T. Cross, Professor of Law at University of Louisville, Possible Adoption of a Legal Representation Privilege in Matters Before the Patent Trial and Appeal Board, p. 2 (Sep. 9, 2015).

The USPTO agrees with these views and believes the proposed rule reflects them. As a policy matter, open and frank discussions between practitioners and clients promotes effective legal representation before the Office.

Discussion of Specific Rules

Taking into consideration comments from the public and insight gained from practice, the Office proposes to amend 37 CFR 42 to add new section 42.57 that clarifies which patent practitioners are eligible for assertions of attorney-client privilege.

The term ``patent practitioner'' is used to conform with existing terminology and avoid confusion with other terms used around the world, such as ``IP Advisor'' or ``Patent Advisor.'' It fits with practice elsewhere in Title 37, which refers to domestic ``patent practitioners,'' i.e., U.S. patent agents and patent attorneys registered under 37 CFR 11.6. This narrower meaning is appropriate for most sections of Title 37, which deal with practitioners admitted to practice before the USPTO. For the new rule only, the term also includes comparable foreign counterparts practicing before foreign patent offices.

The rule would provide that the privilege only applies where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices. For instance, communications between clients and U.S. patent agents relating to patent application matters would be protected as privileged under the rule, but communications between these parties regarding litigation strategies would not be protected. The proposed rule also does not recognize privilege as applying to advice given by lay persons in jurisdictions that do not impose professional qualifications as a requirement to practice. However, the proposed rule can apply to communications from an in-house counsel who performs the functions of a patent attorney under appropriate circumstances, even though some civil law jurisdictions may not grant in-house counsel the privilege-type protections given to attorneys.

The Office invites the public to provide any comments on the proposed rule to inform further action.

Costs and Benefits: This rulemaking is not economically significant, and is not significant, under Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).

Rulemaking Considerations

1. Administrative Procedure Act (APA)

   This proposed rule revises the rules of practice before PTAB to recognize that

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   communications between non-attorney or foreign patent practitioners and their clients that pertain to authorized practice before the USPTO are privileged. The changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules. See Nat'l Org. of Veterans' Advocates v. Secretary of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a statute is interpretive); Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process are procedural under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were procedural where they did not change the substantive requirements for reviewing claims).

   Accordingly, prior notice and opportunity for public comment are not required pursuant to 5 U.S.C. 553(b) or (c), or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice and comment rulemaking for ``interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice'' (quoting 5 U.S.C. 553(b)(A))). However, the Office chose to seek public comment before implementing the rule to benefit from the public's input.

2. Regulatory Flexibility Act

   For the reasons set forth herein, the Deputy General Counsel for General Law of the USPTO has certified to the Chief Counsel for Advocacy of the Small Business Administration that this proposed rule will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b).

   The changes proposed in this rule are to revise the rules of practice before PTAB to explicitly recognize that communications between non-attorney or foreign patent practitioners and their clients that pertain to authorized practice before the USPTO or foreign patent offices are privileged and to define those persons who may avail themselves of this privilege. These proposed changes are expected to create no additional burden to those practicing before the Board as this rule merely clarifies rights and protections for the practitioner and client and does not impose a change in practice or requirements. In fact, this rule may produce a small benefit from a reduction in uncertainty and mitigation of discovery costs. For the foregoing reasons, the changes proposed in this rule will not have a significant economic impact on a substantial number of small entities.

3. Executive Order 12866 (Regulatory Planning and Review)

   This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

4. Executive Order 13563 (Improving Regulation and Regulatory Review)

   The Office has complied with Executive Order 13563. Specifically, the Office has, to the extent feasible and applicable: (1) Made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector and the public as a whole, and provided on-line access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes.

5. Executive Order 13132 (Federalism)

   This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

6. Executive Order 13175 (Tribal Consultation)

   This rulemaking will not: (1) Have substantial direct effects on one or more Indian tribes; (2) impose substantial direct compliance costs on Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal summary impact statement is not required under Executive Order 13175 (Nov. 6, 2000).

7. Executive Order 13211 (Energy Effects)

   This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001).

8. Executive Order 12988 (Civil Justice Reform)

   This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

   I. Executive Order 13045 (Protection of Children)

   This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (Apr. 21, 1997).

10. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not affect a taking of private property or otherwise have taking implications under Executive Order 12630 (Mar. 15, 1988).

11. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO will submit a report containing the rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this final rule are not expected to result in an annual effect on the economy of 100 million dollars or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-

    based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this final rule is not a ``major rule'' as defined in 5 U.S.C. 804(2).

    L. Unfunded Mandates Reform Act of 1995

    The changes set forth in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by State, local, and tribal governments, in the aggregate, of 100 million dollars (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of 100 million dollars (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the

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    Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.

13. National Environmental Policy Act

    This rulemaking will not have any effect on the quality of the environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

14. National Technology Transfer and Advancement Act

    The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions which involve the use of technical standards.

15. Paperwork Reduction Act

    The Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549) requires that the Office consider the impact of paperwork and other information collection burdens imposed on the public. This proposed rule not does not involve any new information collection requirements that are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). Any information collections associated with this rule have been previously approved under OMB control number 0651-0069.

    Notwithstanding any other provision of law, no person is required to respond to, nor shall any person be subject to, a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.

    List of Subjects in 37 CFR Part 42

    Administrative practice and procedure, inventions and patents.

    For the reasons set forth in the preamble, 37 CFR part 42 is proposed to be amended as follows:

    PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

    0

    1. The authority citation for 37 CFR Part 42 continues to read as follows:

       Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.

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    2. Add Sec. 42.57 to read as follows:

       Sec. 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 an attorney authorized to practice in the United States, including all limitations and exceptions.

       (b) Definitions. The term ``domestic patent practitioner'' means a person who is registered by the United States Patent and Trademark Office to practice before the agency under section 11.6. ``Foreign patent practitioner'' means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them, and regardless of whether that jurisdiction provides privilege or an equivalent under its laws.

       Dated: October 12, 2016.

       Michelle K. Lee,

       Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

       FR Doc. 2016-25141 Filed 10-17-16; 8:45 am

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