by Sophie McDADE, 28 February 2018

A new Rule at the U.S. Patent Office establishes that communications with foreign patent attorneys can be privileged.

Since its coming into force on 7 December 2017, a new Rule (§ 42.57)[i] establishes that US patent agents, as well as foreign patent “practitioners”, who are qualified in their jurisdiction, will receive the same treatment as US attorneys on all issues affecting privilege or waiver. 82 Fed. Reg. 51570-75 (Nov. 7, 2017).

This clarification was long overdue as the status of a communication between a litigant and its domestic or foreign patent agent had been a hotly debated topic in the United States (US) for the last 50 years.

This is of real importance as patent litigations on an international level frequently involve the US, including challenges regarding the validity of patents which are heard before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

Privileged information and the US discovery process

In the US, pre-trial steps will generally involve the dreaded “discovery” process[i].  In this process reciprocal demands will be made by the parties for production of documents, depositions of parties and potential witnesses, written interrogatories etc…. The theory underlying the US rights of discovery is that all parties will go to trial with as much knowledge as possible and that neither party should be able to keep secrets from the other (except for protection against self-incrimination). This common law pl