Exploring the “Patent Agent Privilege” Proposal and Its Anticipated Impacts on PTAB Proceedings
The United States Patent and Trademark Office (USPTO) has proposed a rule that would recognize a privilege for certain communications between U.S. patent agents or foreign non-attorney patent practitioners and their clients, to the same extent as communications between clients and U.S. attorneys. It would replace the current patchwork of common law, which requires a complex fact-based analysis to decide privilege questions.
In this LIVE Webcast, a panel of thought leaders brought together by The Knowledge Group will discuss how and to what extent the rule would protect communications from discovery in trial practice at the USPTO and the Patent Trial and Appeal Board (PTAB), including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings under the Leahy-Smith America Invents Act (AIA).
Key topics include:
- Inter Partes Review
- Post-Grant Review
- Business Method Patents
- Leahy-Smith America Invents Act
- Communications Covered
- Jurisdictional Limitations
S. Lloyd Smith, Shareholder
Buchanan Ingersoll & Rooney PC
Britton Davis, Attorney
- Privilege in general & general background
- Historical treatment of patent agent privilege in District Courts
- How is law evolving now?
- How will it affect PTAB and what the board’s been doing?
- Foreign patent agents
Who Should Attend:
- Patent Attorneys
- Patent Agents
- Foreign Patent Practitioners
- Patent Consultants
- Patent Owners
- Patent Prosecutors
- In-house Counsel
- Other Intellectual Property Professionals
Buchanan Shareholder S. Lloyd Smith focuses his practice on intellectual property litigation and enforcement matters. His case experience includes trademark infringement, false advertising, patent infringement, and unfair competition trials and litigation in various venues nationwide. He has argued before numerous U.S. District Courts nationwide, the U.S. Court of Appeals for the Federal Circuit and the Third Circuit, and the U.S. International Trade Commission.
Lloyd is co-chair of the firm's Intellectual Property Litigation group, chair of the firm's practice group for litigation in the U.S. District Court for the Eastern District of Virginia, and a member of the firm’s Patent Office Litigation group.
To read Lloyd’s insights on post-grant patent proceedings, visit Buchanan PTAB Report.
Buchanan Shareholder S. Lloyd Smith focuses his practice on intellectual property litigation and enforcement matters. His case experience includes trademark …
Britton Davis is a senior associate in Cooley LLP’s Intellectual Property Litigation group. His practice focuses on patent disputes in cases involving complex technologies. Brit has experience in all phases of patent litigation on behalf of both plaintiffs and defendants. He also represents both patent owners and petitioners before the U.S. Patent Trial and Appeal Board in post grant proceedings under the AIA, including helping to secure rare complete patent owner wins in inter partes review proceedings on all claims under review.
Brit is a contributing editor to Cooley's PTAB digest, a leading resource which tracks and analyzes PTAB decisions, and has written and presented about PTAB practice and the intersection with Constitutional Due Process and the APA. Brit received his JD, with honors, from the University of Texas School of Law.
Britton Davis is a senior associate in Cooley LLP’s Intellectual Property Litigation group. His practice focuses on patent disputes in …
Print and review course materials
Method of Presentation:
Experience in patent practice or intellectual property generally.
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
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About Buchanan Ingersoll & Rooney PC
Buchanan Ingersoll & Rooney PC brings true partnership to their clients. With more than 500 attorneys and government relations professionals in 18 offices in the United States, Buchanan has formalized a model for consistently delivering the service attributes their clients most value. A nationally recognized firm, they provide a wide range of services in the areas of health care, financial services and banking, litigation, intellectual property, labor and employment, real estate, corporate and business law, tax, energy, and government relations.
For more information on Buchanan’s Patent Office Litigation services, visit www.BIPC.com.
About Cooley LLP
Cooley LLP is a full service law firm with 900+ lawyers across 12 offices in the United States, China and Europe. Cooley’s combination of experience allows us to develop a comprehensive strategy that considers the broader implications of PTAB proceedings on concurrent district court litigation. We have handled 250+ PTAB and Patent Office proceedings across disparate industries covering tech and life sciences. As a top 5 law firm for PTAB proceedings and a top 10 law firm for patent litigation defense (Docket Navigator), Cooley is well-positioned to advise clients on the strategic use of post-grant proceedings within the context of concurrent litigation.