Innovators who seek patent protection in multiple jurisdictions may engage patent practitioners (attorneys or other registered representatives) in each of those jurisdictions. Currently, the rules governing privilege vary from country to country and even between U.S. jurisdictions. In this regard, the USPTO is seeking input 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.
On January 26, 2015, the USPTO issued a Federal Register Notice informing the public of the event and also requesting comments on the targeted issues. On Wednesday, February 18, 2015, the USPTO held public roundtable in the Venice Conference Room of the Global IP Academy in the Madison East Building.
Federal Register Notice: http://www.gpo.gov/fdsys/pkg/FR-2015-01-26/pdf/2015-01241.pdf
Agenda: Privileged Communications Agenda
- American Intellectual Property Law Association (AIPLA)
- Business Law Section (BLS) of the Law Council of Australia
- Chartered Institute of Patent Attorneys (CIPA, UK)
- European Patent Litigators Association
- Intellectual Property Owners Association (IPO)
- International Association for the Protection of Intellectual Property of Japan (AIPPI – Japan)
- International Federation of Intellectual Property Attorneys (FICPI)
- IP Institute of Canada
- Japan Patent Attorneys Association (JPAA)
E-mail inquiries: ACPrivilege@uspto.gov