Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).   For context, the originally proposed amendment sought to resolve ambiguity as to when privilege extends to USPTO patent practitioners during PTAB discovery proceedings in light of prior Federal Circuit, District Court and PTAB decisions.  The now-published rule codifies the PTAB’s intent to protect communications between patent agents and clients from discovery, stating that:

“communication[s] between a client and a USPTO patent practitioner or a foreign patent practitioner that is reasonably necessary and incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions[;]”

“USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.”

Continue Reading USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

shutterstock_336450779The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.

The Office proposes increasing 205 patent fees. The vast majority of proposed fee increases follow the incremental changes seen in the past. The most noteworthy and sizable fee increases are for the Patent Trial and Appeal Board (PTAB) proceedings established under the AIA (“AIA Trials”). These increases align the fees for AIA Trials with the calculated actual costs of the proceedings. The proposed rulemaking also includes details on the USPTO’s progress and continued goals to reduce patent backlog and pendency, increase examination quality, and build an operating funds reserve.

Continue Reading USPTO Proposes Fee Increases for FY 2017