[Federal Register Volume 80, Number 16 (Monday, January 26, 2015)]
[Notices]
[Pages 3953-3955]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-01241]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-C-2014-0066]


Notice of Roundtable and Request for Comments on Domestic and 
International Issues Related to Privileged Communications Between 
Patent Practitioners and Their Clients

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of roundtable and request for written comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
seeking input on issues regarding protections from disclosure for 
communications between patent applicants and Their advisors. The issues 
include: Whether and to what extent U.S. courts should recognize 
privilege for communications between foreign patent practitioners and 
their clients; the extent to which communications between U.S. patent 
applicants and their non-attorney U.S. patent agents should be 
privileged in U.S. courts; and whether and to what extent 
communications between U.S. patent practitioners and their clients 
should receive privilege in foreign jurisdictions. The USPTO is hosting 
a roundtable and soliciting written comments to gather information and 
views on these questions.

DATES: The roundtable will be held on Wednesday, February 18, 2015. The 
roundtable will begin at 10:00 a.m. and end at 12:30 p.m. Written 
comments are due by Wednesday, February 25, 2015, for full 
consideration.

ADDRESSES: The roundtable will be held at the United States Patent and

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Trademark Office, Madison Auditorium, Madison Building, 600 Dulany 
Street, Alexandria, Virginia 22314.

FOR FURTHER INFORMATION CONTACT: For further information regarding the 
roundtable or written comments, please contact Soma Saha or Edward 
Elliott at the Office of Policy and International Affairs, by telephone 
at (571) 272-9300, by email at [email protected], or by postal mail 
addressed to: Mail Stop OPIA, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: Soma Saha 
or Edward Elliott. Please direct all media inquiries to the Office of 
the Chief Communications Officer, USPTO, at (571) 272-8400.

SUPPLEMENTARY INFORMATION:

1. Background

    Innovators who seek patent protection in multiple jurisdictions may 
engage patent practitioners (attorneys or other registered 
representatives) in each of those jurisdictions. Currently, there is 
little consistency in whether the innovators' communications with their 
patent practitioners will be recognized as privileged by courts. The 
rules governing privilege vary from country to country and between U.S. 
jurisdictions. As a result, innovators may be reluctant to share 
critical information with their patent practitioners because the 
information may be subject to disclosure in judicial proceedings.
    In addition, privilege issues also affect practitioners in the 
United States. U.S. district courts have inconsistent rules regarding 
the availability and scope of privilege for communications between 
clients and their non-attorney U.S. patent agents.
    The USPTO is interested in the following topics that focus on three 
different aspects of privileged communications affecting U.S. entities.
    First, the USPTO is interested in the state of U.S. law with 
respect to protecting communications between patent applicants and 
their non-U.S. patent practitioners from disclosure in U.S. litigation. 
The law in the United States differs from jurisdiction to jurisdiction. 
Some U.S. courts do not protect communications with foreign 
practitioners under any circumstances. Other courts may protect those 
communications, but they employ a variety of tests to decide whether 
and to what extent to grant privilege. Factors that U.S. courts 
consider include: Whether the foreign practitioner acted under the 
direction of a U.S. attorney; whether the foreign practitioner would 
receive privilege under the laws of the country where the patent 
application was filed; and how the competing interests of all involved 
jurisdictions are affected. The patchwork of rules between circuits and 
districts can make it unclear under which circumstances communications 
are privileged.
    Second, the USPTO is interested in how foreign courts treat 
communications between U.S. patent agents or attorneys and their 
clients. Problems arise most frequently in common law jurisdictions, 
some of which do not extend privilege to communications between a 
patent applicant and foreign patent practitioners. For this reason, 
Australia and New Zealand, both common law countries, recently passed 
laws extending privilege to foreign patent practitioners who are 
authorized to provide patent advice in other countries. Civil law 
jurisdictions generally impose professional secrecy obligations that 
function similarly to privilege, but secrecy issues appear to arise 
less frequently in practice.
    Finally, the USPTO is interested in the extent and nature of 
protection, if any, that U.S. courts accord to communications between 
clients and their non-attorney U.S. patent agents. In the United 
States, patent practitioners (whether agents or attorneys) must be 
registered to practice before the USPTO, e.g., to prosecute patent 
applications as an applicant's representative. In order to register, 
both types of practitioners must demonstrate certain legal, scientific, 
and technical qualifications and pass a registration exam. However, 
patent agents, unlike patent attorneys, are not required to be 
separately licensed to practice law. Communications between U.S. patent 
agents and their clients are treated differently by various U.S. 
district courts, which follow their own precedents with respect to 
whether the communications are privileged. Some district courts have 
denied privilege altogether for patent agents, while other courts have 
granted privilege to agents only when their work is overseen by an 
attorney. Still others have recognized privilege only for 
communications with an agent regarding activities before the USPTO, or 
only when the communications concern a related adversarial process.
    To address the lack of uniformity for potentially privileged 
communications discussed above, the possibility of developing an 
international minimum standard for recognizing privileged 
communications between clients and patent practitioners has been 
considered in recent years by the Standing Committee on the Law of 
Patents (SCP) at the World Intellectual Property Organization (WIPO). 
Those discussions have resulted in a compilation of relevant laws in 
WIPO member countries on this issue. For more information, please see 
WIPO document SCP/20/9, ``Confidentiality of Communications between 
Clients and their Patent Advisors: Compilation of Laws, Practices and 
other Information,'' available at: http://www.wipo.int/edocs/mdocs/patent_policy/en/scp_20/scp_20_9.pdf. This document also contains a 
summary of U.S. law on this issue. Separately, several industry 
organizations from the United States and Europe have proposed an 
international framework that they believe would help mitigate some of 
the uncertainty that exists in the current system. A copy of their 
proposed framework can be found at: https://www.aippi.org/download/onlinePublications/Attachment1SubmissiontoWIPODecember182013_SCP.pdf.
    The USPTO is conducting this public roundtable to solicit comments 
from interested parties on protecting confidential communications 
between innovators and their patent practitioner representatives. The 
number of participants in the roundtable is limited to ensure that all 
speakers have a meaningful opportunity to present their views. Those 
who wish to participate in the roundtable should submit a written 
request, per the instructions below. Members of the public who wish to 
attend and observe the roundtable need not submit a request.
    Anyone may submit written comments for consideration by the USPTO 
on issues relevant to this notice or raised at the roundtable. The 
USPTO plans to make the roundtable available via webcast. Webcast 
information will be available on the USPTO's Web site before the 
roundtable. The written comments and list of the roundtable 
participants and their associations will be available from the USPTO's 
Web site.

2. Issues for Public Comment

    The topics and questions listed below reflect particular issues for 
which the USPTO would appreciate receiving input from interested 
stakeholders. Responses are not restricted to these topics; comments 
may provide any information the submitter wishes the USPTO to consider. 
The questions should not be taken as an indication that the USPTO has 
taken a position or is predisposed to any particular views.
    1. Please explain the impact, if any, resulting from inconsistent 
treatment of privilege rules among U.S. federal courts. In your answer, 
please identify if the impact is on communications with

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foreign, domestic, or both types of patent practitioners.
    2. Please explain how U.S. stakeholders would be impacted by a 
national standard for U.S. courts to recognize privilege for 
communications with U.S. patent agents, including potential benefits 
and costs. If you believe such a standard would be beneficial, please 
explain what the scope of a national standard should cover.
    3. Please explain how U.S. stakeholders would be impacted by a 
national standard for U.S. courts to recognize privilege for 
communications with foreign patent practitioners, including potential 
benefits and costs. If you believe such a standard would be beneficial, 
please explain what the scope of a standard should cover.
    4. Please explain how U.S. stakeholders would be impacted by an 
international framework establishing minimum privilege standards in the 
courts of member countries for communications with patent practitioners 
in other jurisdictions, including potential benefits and costs. If you 
believe such a framework would be beneficial, please also address the 
following issues:
    a. Please identify which jurisdictions have potential problems and 
explain the exact nature of the problem in each of those jurisdictions.
    b. Please explain what the scope of an international framework for 
privilege standards should cover. An example of such a framework can be 
found in Appendix 5 of the following document: https://www.aippi.org/download/onlinePublications/Attachment1SubmissiontoWIPODecember182013_SCP.pdf.
    5. If a national standard for U.S. courts to recognize privilege 
for U.S. patent agents or foreign practitioners would be beneficial, 
please explain how that standard should be established.
    a. If Federal legislation would be appropriate, what should such 
legislation encompass? Please consider whether the Federal tax 
preparer-client privilege legislation, which statutorily extended 
attorney-client privilege to non-lawyer practitioners (e.g., certified 
public accountants) under 26 U.S.C. 7525(a), is an appropriate model 
and explain why or why not. Are there any noteworthy parallels or 
differences between Federally-registered accountants and Federally-
registered patent agents in either policy or operation?
    Commenters are requested to include information identifying how 
their organization is impacted by privilege issues, e.g., whether they 
are patent attorneys, agents, owners, licensees, or any other type of 
entity.

3. Instructions and Information on the Public Roundtable

    The roundtable will be held on February 18, 2015, at the United 
States Patent and Trademark Office, Madison Building, 600 Dulany 
Street, Alexandria, Virginia 22314. The roundtable will begin at 10:00 
a.m. and end at 12:30 p.m. The final agenda and webcast information 
will be available a week before the roundtable on the USPTO's Office of 
Policy and International Affairs Web site at http://www.uspto.gov/ip/global/patents/index.jsp. Pre-registration will be available from that 
Web page, or attendees may register at the door.
    The event will be divided into two portions. The first part will 
feature a panel providing background on privileged communications 
between patent practitioners and their clients. The second part of the 
event will feature presentations by various stakeholders on privileged 
communications and their respective positions on this issue. Both 
portions will explore both domestic and international issues relating 
to these topics. Here is a preliminary agenda:

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                Time                                                     Topic
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10:00 to 10:05 a.m..................  Welcome and introduction.
10:05 to 11:00 a.m..................  Background panel on privileged communications.
11:00 a.m. to 12:30 p.m.............  Presentations by interested stakeholders.
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    Speakers: Individuals interested in speaking should submit their 
name, contact information (telephone number and email address), the 
organization(s) the person represents, if any, relevant biographical 
information, and a few brief comments on the topics to be discussed to 
[email protected] by February 10, 2015. Selected speakers will be 
notified thereafter.
    Written Comments: Written comments can be submitted via the Federal 
Register's Web site, www.federalregister.gov, or by email to 
[email protected]. Comments may also be submitted by postal mail 
addressed to: Mail Stop OPIA, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: Edward 
Elliott. Although comments may be submitted by postal mail, electronic 
submissions are encouraged. The deadline for receipt of written 
comments for consideration by the USPTO is February 25, 2015. Written 
comments should be identified in the subject line of the email or 
postal mailing as ``Agent-Client Privilege.'' Because comments will be 
made available for public inspection, information that is not desired 
to be made public, such as an address or phone number, should not be 
included in the comments.
    Special Accomodations: The roundtable will be physically accessible 
to people with disabilities. Individuals requiring accommodation, such 
as sign language interpretation or other ancillary aids, should 
communicate their needs to Angel Jenkins at the Office of Policy and 
International Affairs, by telephone at (571) 272-9300, by email at 
[email protected], or by postal mail addressed to: Mail Stop 
OPIA, United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, ATTN: Angel Jenkins, at least seven 
(7) business days prior to the roundtable.

    Dated: January 20, 2015.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2015-01241 Filed 1-23-15; 8:45 am]
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