[Federal Register Volume 80, Number 16 (Monday, January 26, 2015)]
[Notices]
[Pages 3953-3955]
From the Federal Register Online via the Government Printing 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 ACPrivilege@uspto.gov, 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
ACPrivilege@uspto.gov 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
ACPrivilege@uspto.gov. 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
angel.jenkins@uspto.gov, 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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