Author: David Baker

Earlier this month, a jury in San Diego federal court was asked to decide if the use of the trademark “COMIC CON” by Daniel Farr, Bryan Brandenburg, and Dan Farr Productions for a comic book convention held in Salt Lake City constituted an infringement of the trademark “COMIC-CON” (note the distinguishing hyphen) owned by San Diego Comic Convention.  Farr and Brandenburg had organized and presented the Salt Lake City convention under the name “Salt Lake Comic Con” since 2011.  San Diego Comic Convention (or “SDCC”) also asked the jury to award monetary damages totaling $12 million as compensation for damage allegedly done to the “COMIC-CON” trademark by its misuse. 

After hearing testimony and considering the evidence presented at trial, the jury ruled in favor of SDCC and found that the name “Salt Lake Comic Con” (“SLCC”) had infringed the SDCC mark (and that such infringement should stop).  However, the jury awarded SDCC monetary damages of only $20,000.  It may have been difficult for the jury to believe that a trademark for a comic book convention could be worth anywhere near $12 million.

In fact, SDCC has operated an annual comic book convention in San Diego since 1970 and it holds thirty-eight (38) active federal registrations for trademarks associated with the convention that are registered with the U.S. Patent and Trademark Office (the “PTO”).  Principal among these registered marks is “COMIC-CON” (PTO Service Mark Reg. No. 3,219,568), a mark that has been used by SDCC from the beginning in relation to “conventions showcasing comics and comic books as well as other aspects of the popular arts such as graphic arts, science fiction films, fantasy films, and literature.”

As SDCC alleged in its complaint, the “COMIC-CON” marks have been used so extensively and continuously to promote the San Diego convention that “consumers have come to recognize and identify the “COMIC-CON” marks as representative of the quality events and services provided by SDCC.”  Indeed, the San Diego Comic-Con convention has grown so much in popularity over the past five decades that attendance now exceeds 130,000 and many films and television shows, including The Big Bang Theory, often reference the convention as key plot points.

In comparison, other comic conventions like the SLCC convention (and over a hundred others using the name “Comic Con,” including Los Angeles Comic Con convention and New York Comic Con convention) now draw similar attendance numbers but it is generally accepted that they are able to do so, in large part, because of the sustained popularity of the San Diego event.

Somewhat surprisingly, it wasn’t SLCC’s mere usage of “COMIC CON” that triggered the SDCC lawsuit.  What directly led to the filing was a marketing stunt Farr and Brandenburg pulled in 2014 to promote their own convention.  They traveled to San Diego, rented large panel trucks, affixed huge billboards to them inviting viewers to attend SLCC that September, and then drove them back and forth along Harbor Drive in front of the San Diego Convention Center during the July 2014 San Diego Comic-Con convention.

Seemingly left with no other choice (and likely hoping to send a message to other competing comic book conventions misusing the trademarks), SDCC filed suit against Farr and Brandenburg in August 2014 in the U.S. District Court for the Southern District of California (Case No. 14CV1865 AJB JMA) alleging trademark infringement and false designation of origin.

Once the battle was joined, Farr and Brandenburg filed their own cross-complaint and sought to have the “COMIC-CON” trademarks declared “generic” and, therefore, unenforceable.  Genericism occurs when a protectable trademark like linoleum, escalator, or even videotape becomes so associated with a good or service in consumer minds that it stops serving as a source identifier.  And, worse, they become ineffective as a trademark.  Farr and Brandenburg also filed a cancellation proceeding against the “COMIC-CON” mark based on the same genericism argument (which is still pending) in the PTO’s Trademark Trial and Appeals Board.

Unfortunately for SLCC, Farr and Brandenburg’s genericism arguments were inconsistent.  In certain pleadings, they argued that SDCC’s failure to enforce its trademark rights in the face of ever widening third party usage had led to them becoming a generic means of referring to any comic book convention.  And in other pleadings, they argued that trademarks like “COMIC-CON” were generic ab initio, meaning that they were already generic when SDCC started using them in 1970.

In understanding a fundamental flaw in the defense, it is important to understand that the 9th Circuit Court of Appeals (under whose jurisdiction the San Diego court operates) does not recognize genericism ab initio as a matter of law.  So, without any supporting case law from the 9th Circuit, District Court Judge Anthony J. Battaglia ruled against FARR and Brandeburg’s genericism ab initio arguments presented in competing motions for summary judgment in September.  Effectively, this gutted the SLCC defense and set up the November trial that ended with the December 1 jury decision in favor of SDCC.

Why It Matters.  While it remains to be seen what impact the jury’s decision will have on other competing comic book conventions (as of the writing of this post all were still using variations of “comic con” on their websites), there are several important takeaways from the recent court battle.

First, SDCC had little choice but to sue SLCC and to take the case all the way to trial once it had decided the “COMIC-CON” trademark was worth protecting, SLCC was infringing that trademark and SLCC refused to negotiate reasonable settlement terms.  After selecting a strong trademark, there are many things a trademark owner can do to strengthen and protect a trademark but one of the essential things it must do is to force infringers to stop infringing.

Second, now that SDCC has prevailed over SLCC, there is no certainty that the numerous other conventions using the “comic con” trademark as their own will decide to stop and avoid incurring the wrath of SDCC.  In fact, it remains SDCC’s responsibility to pursue each and every other infringer if it intends to fully protect its mark.  Quite simply, there are no “trademark police.”  The law places the responsibility for enforcement on the trademark owner.

Third, the case serves as an important reminder that trademark litigation can be very, very expensive with no guarantee of a sizable monetary recovery.  Precise numbers for the attorney’s fees, expert witness fees, and assorted litigation expenses on both sides have not been made public, but before the case even went to trial the SLCC organizers looked to online fundraising to try and raise more than a million dollars to cover their own fees and costs.

And whether it was Voltaire, Stan Lee, or Spiderman’s Uncle Ben who first said, “With great proper comes great responsibility,” San Diego Comic Convention knew that the same logic applies to great trademarks and it acted accordingly.

There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs, is not enough. This seems like an obvious rule, but it ended up before the Federal Circuit Court of Appeals. 

The case is First Data Corp. v. Inselberg  (Fed. Cir. 9/15/17).  The defendants were Eric Inselberg, an inventor, and his company, Inselberg Interactive, LLC.  Inselberg Interactive owned several of the inventor’s patents.  In connection with a loan transaction in which Interactive borrowed money from Frank Bisignano, Interactive gave Bisignano a security interest in the patents.  After Interactive defaulted on the loan, Interactive was required to, and did, enter into an assignment agreement with Bisignano. Interactive assigned all of its rights in the patents to Bisignano.  Bisignano then became the CEO of First Data Corp.

Several years later, Inselberg told Bisignano that First Data was infringing the patents and did not have a license. Inselberg demanded that First Data either buy the patents or license them, contending that the assignment Interactive had made to Bisignano was not valid. Bisignano then licensed the patents to First Data. Inselberg continued to assert that First Data was infringing the patents. Inselberg’s counsel sent Bisignano and First Data a draft complaint that Inselberg stated he intended to file in state court, alleging that Inselberg owned the patents and could sue First Data for patent infringement.

Bisignano and First Data jumped the gun and filed suit in the federal district court for the District of New Jersey.  The complaint sought a declaratory judgement that Bisignano owned the patents and that the license to First Data was valid. The complaint also sought a declaratory judgement that First Data did not infringe the patents because Bisignano owned the patents and had licensed them to First Data.

Inselberg and Interactive filed suit in New Jersey state court, seeking a declaratory judgment that they owned the patents because the assignment to Bisignano was invalid. Bisignano and First Data answered the complaint and filed counterclaims seeking a declaratory judgement of noninfringement of the patents and of invalidity of one of the patents. The defendants then removed the state court action to federal court, relying on the district court’s jurisdiction over patent cases.

In the federal court action, Inselberg and Interactive moved to dismiss Bisignano and First Data’s complaint and their counterclaims in the removed action, and sought remand of the state law claims.

The district court granted the motion to dismiss on the grounds that the federal court had no jurisdiction because there was no federal question. The district court found that Inselberg and Interactive had conceded that Bisignano owned the patents by seeking to invalidate the assignment agreement in their state court complaint, and, therefore did not own the patents. The district court held that Inselberg and Interactive did not have a claim for patent infringement and would not have such a claim unless they obtained ownership of the patents under their state law claims. Thus, the patent claims were contingent on the outcome of Inselberg and Interactive’s state law claims.

On appeal, the Federal Circuit affirmed the district court’s order dismissing Bisignano and First Data’s federal claims and remanding the state law claims. The court held that there was no federal question jurisdiction because Inselberg and Interactive did not, and could not, assert a threat of infringement against First Data as Inselberg and Interactive did not own the patents. In addition, the court held that Bisignano and Frist Data had no standing to assert their declaratory judgement claims.  For similar reasons, the court also held that Bisignano and Frist Data’s claims were not ripe for adjudication because all of the claims were based on a contingent future event, the state court awarding ownership of the patents to Inselberg and Interactive.

 

 

The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute.  Previously, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C. §1400(b), to allow plaintiffs to bring a patent infringement case against a domestic corporation in any district court where there is personal jurisdiction over that corporate defendant.  Specifically, the patent venue statute provides that “[a]ny civil action for patent infringement may be brought in either 1) the judicial district where the defendant resides” or 2) “where the defendant has committed acts of infringement and has a regular and established place of business.”  But, TC Heartland, held that a domestic corporation resides only in its state of incorporation for purposes of the patent venue statute, and not just anywhere it is subject to personal jurisdiction as had previously been the case. 

Following TC Heartland, corporate defendants filed a flurry of motions to dismiss for lack of venue or, in the alternative, to transfer cases.  Corporations argued they had been improperly sued in venues where they had no regular and established place of business, and where they are not incorporated and thus did not reside.  But, the Supreme Court’s ruling in TC Heartlandled to confusion as to whether such challenges could be made in on-going cases where the defendant had not previously raised the issue of improper venue.  Specifically, Federal Rule of Civil Procedure 12(h)(1)(A), provides for waiver, based on the incorporated terms of Rule 12(g)(2), when a defendant omits an available venue defense from an initial motion to dismiss.  This confusion led to widespread disagreement among District Courts on the issue.

However, in In re Micron Tech, Inc., No. 2017- 138, 2017 WL 5474215 (Fed. Cir. Nov. 15, 2017) (“In re Micron”) the Federal Circuit recently clarified that TC Heartland was a change-of-law relevant to waiver under Rule 12(g)(2) and (h)(1)(A).  The Federal Circuit held that TC Heartlandchanged the controlling law such that at the time of an initial motion to dismiss, before the Supreme Court decided TC Heartland, a venue defense based on TC Heartland’s interpretation of the venue statute was not “available,” thus making the waiver rule of Rule 12(g)(2) and (h)(1)(A) inapplicable.  In other words, the venue objection was not available until the Supreme Court decided TC Heartland because, before then, it would have been improper given controlling precedent, for a district court to dismiss or to transfer for a lack of venue.

In further explaining its reasoning, the Federal Circuit first noted “[t]he crucial condition for Rule 12(g)(2) to apply, and hence for the unmade venue objection to be waived under Rule 12(h)(1)(A), is that the venue defense had to be ‘available to the [defendant]’ when the defendant made the initial Rule 12(b) motion.”  The Federal Circuit continued, “[w]here controlling law precluded the district court, at the time of the motion, from adopting a defense or objection and on that basis granting the motion, it is natural to say, in this context, that the defense or objection was not ‘available’ to the movant.  The law of precedent is part of what determines what law controls. The language ‘was available’ focuses on the time of the motion in the district court, not some future possibility of relief on appeal, thus pointing toward how the district court may permissibly act on the motion at the time—i.e., where the motion is for dismissal, whether it can dismiss the case and thereby avoid wasting resources on continued litigation. Because what Rule 12(g)(2) addresses is the omission of a defense or objection from an initial motion for one of the forms of relief specified in the Rule, subsection (g)(2) is naturally understood to require the availability of that relief at the time of the initial motion (here, dismissal based on improper venue).”

Importantly, however, the Federal Circuit limited its holding to only waiver under Rule 12(g)(2) and h(1)(A), and said there are still circumstances in which a district court can find that a defendant has forfeited its venue defense.  “[T]hat waiver rule, we also conclude, is not the only basis on which a district court might reject a venue defense for non-merits reasons, such as by determining that the defense was not timely presented.”  For example, “nothing in the Federal Rules of Civil Procedure would preclude a district court from applying other standards, such as those requiring timely and adequate preservation, to find a venue objection lost if, for example, it was not made until long after the statutory change took effect.”  Thus, the Federal Circuit concluded, “it clear that, apart from Rule 12(g)(2) and (h)(1)(A), district courts have authority to find forfeiture of a venue objection.”  Moreover, the Federal Circuit also made clear it was not exploring the contours of timeliness outside Rule 12(g)(2) and (h)(1)(A), or how to assess what constitutes consent to venue, or what if any other considerations could justify a finding of forfeiture even when the defendant has not waived its objection under Rule 12(g)(2) and (h)(1)(A).  In other words, the Federal Circuit limited its holding and left a number of open issues for District Courts.

Indeed, in Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED November 22, 2017, Order), a District Court in the Eastern District of Texas has already found that defendants waived their venue defense through litigation conduct in light of In Re Micron, and denied defendants’ motion to dismiss plaintiff’s patent infringement action for improper venue.  In reaching its decision, the District Court first noted that the Federal Circuit in In re Micron “explained that district courts possess an inherent power to find a venue objection forfeited based on conduct or other circumstances.”  The District Court then reasoned that “it was not until a few days after their IPR petitions were denied and more than two months after [TC Heartland LLC] was decided that Defendants finally sought to dismiss this case for improper venue.”  The District Court continued that In re Micron “does not invite defendants who have substantially engaged in a case to reassert an abandoned defense once it becomes convenient or advantageous for them. . . . Moreover, before TC Heartland was decided . . . Defendants sought to transfer this case to the Western District of Tennessee under § 1404 rather than § 1406. This is particularly significant because a motion under § 1404 is premised on venue being proper in the transferor court whereas a motion under § 1406 reflects an objection to the current venue as being improper.”  Accordingly, the District Court concluded that Defendants’ venue objection has been waived based on their own conduct, the judicial resources already expended in this case by the Court, the prejudice to Plaintiff in reopening a dormant venue dispute simply because it has become convenient for Defendants to litigate the issue now, and in light of all of these considerations taken together.

In sum, although In Re Micron clarified waiver of venue under Rule 12(g)(2) and (h)(1)(A) in light of TC Heartland, there are still a number of issues that need to be worked out at the District Court level.  And, it is likely there will be differing application across District Courts until more of these issues are worked out.

According to cannabis folklore, cannabis cultivators in 2010, Josey Whales and Lone Watie  created a strain of marijuana that was so sticky, Mr. Whales, during a phone call, commented that the plant made his hands “stick to things like Gorilla Glue.”  From that, Whales and Watie came up with a name of their strain – Gorilla Glue#4.   Since that time, the strain has won numerous competitions and has become extremely popular with consumers.  Whales and Waite formed GG Strains, LLC which certified and authorized select cultivators around the country to market cannabis as “Gorilla Glue #4”; they operated the website <gorillaglue4.com> which sold clothing and other merchandise; and they applied to register certain trademarks with the state of Colorado which incorporate GORILLA GLUE. 

Apparently, the Ohio-based Gorilla Glue Company became aware of the existence of the Gorilla Glue Strain in late 2016.  Not surprisingly, the Gorilla Glue Company was not pleased.  In March, 2017 the Gorilla Glue Company sued GG Strains, LLC for trademark infringement and trademark dilution.  In October, 2017 the parties settled the dispute and, as a condition of settlement, GG Strains must transition away from “Gorilla Glue” as a strain brand name.  This rebranding is not inexpensive; GG Strains estimates it will cost $250,000 to rebrand.

While we will never know the outcome of this case, it is interesting to look into what the outcome could have been had GG Strains mounted a defense.

Under section 43 of the Lanham Act, infringement occurs when the use by one party of a mark is likely to cause confusion, or to cause mistake, or deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods, services, or commercial activities by another person.  Under the Ninth Circuit’s ruling in AMF Incorporated v. Sleekcraft Boats, the determination of “likelihood of confusion” is made by examining the following factors:  1) the strength of the mark; 2) the proximity of the goods; 3) the similarity of the marks; 4) the evidence of actual confusion; 5) the marketing channels used; 6) the type of goods and the degree of care likely to be exercised by the purchaser; 7) the defendant’s intent in selecting the mark; and 8) likelihood of expansion of the product line.  This line of analysis is similar for most jurisdictions.

Strength of the Marks

Generally, arbitrary and fanciful marks are entitled to wide protection while marks that are suggestive are entitled to a restricted range of protection.  Where a suggestive mark is the subject of a suit, infringement will be found only if the marks in question are very similar and the goods are closely related.

While the word “Glue” is merely descriptive of glue, “Gorilla” certainly is not.  As such, the mark would be considered a strong mark – either arbitrary or only slightly suggestive.  As a strong mark, it is entitled to a wider degree of protection.

Relatedness of the Goods/Services

For related goods, the danger is that the public will mistakenly assume there is an association between the producers of the related goods, even though no such association exists.  Where the goods are complementary and the public is more likely to make such an association, the less similar in appearance the marks need to be to support a finding of likelihood of confusion.

How related are marijuana and marijuana products to glue?   In general, it is not common for a single manufacturer to sell both products.  Further, both products are not sold in the same type of stores and do not have any discernable overlap in consumer groups.  If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012).  Due to the unrelated nature of the goods, this factor would not favor a finding of confusion.

Similarity of the Marks

Similarity of the marks is tested on three levels: sight, sound, and meaning.  Each must be considered as they are encountered in the marketplace.  Although similarity is measured by the marks in their entirety, similarities weigh more heavily than differences.

It is not necessary that every word of a trademark be appropriated in order for there to be an infringement.  Where the marks are exactly the same and the goods are competitive, infringement is almost always found.  Where there are differences between the marks, those differences must be looked at in tandem with the similarities or differences in the goods or services.  Where the goods or services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dis-similar goods or services.

Here both parties use the words “Gorilla Glue.”  However, because GG Strains incorporates “Gorilla Glue” into a logo that is unique and different from that of the Gorilla Glue Company, this factor may tend to favor a finding of no likelihood of confusion.

Evidence of Actual Confusion

Evidence that use of the two marks has already resulted in consumer confusion is persuasive proof that future confusion is likely.  Where a plaintiff is able to introduce evidence of actual confusion, it’s likely the court will find infringement.  Since we have no facts which show actual confusion, this factor is neutral in our analysis.

 

Marketing Channels

Convergent marketing channels increase the likelihood of confusion.  This is because likelihood of confusion is not determined in a vacuum; it is determined by the context that a customer perceives the marks in the marketplace.

The Gorilla Glue Company uses all media platforms to market its product.  It runs advertisements on television, radio and in print, and also uses the Internet.  While it’s not clear the extent to which GG Strains markets its products, it does have a website.

Intent

Evidence showing that the defendant intended to incorporate elements of the plaintiff’s mark favors a finding of likelihood of confusion.  Courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived.  Here it is alleged that GG Strains adopted the use of “Gorilla Glue” due to the sticky quality of its cannabis.

Likelihood of Expansion

Inasmuch as a trademark owner is afforded greater protection against competing goods, a “strong possibility” that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.  When goods are closely related, any expansion is likely to result in direct competition.  Here, it is not likely that either party will begin producing competing products.

If this case had moved forward, based only on the information in the complaint, I suspect that the Gorilla Glue Company would have had difficulty with its trademark infringement claim.  Given the differences in the marks themselves, and primarily based on the unrelated nature of the goods, it is reasonable to conclude that a trier of fact would find consumer confusion not likely.

However, the Gorilla Glue Company would likely have had success on its dilution claim.  Under Section 43(c) of the Lanham Act, dilution can exist where there is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”  In determining whether a mark is likely to cause dilution, the court will consider: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; and (vi) Any actual association between the mark or trade name and the famous mark.

There is a lesson to be learned for the burgeoning legal cannabis industry.  The strain brands that incorporate the marks of others (like Girl Scout Cookie), once thought to be “clever” or “humorous”,  are not likely be viewed similarly by the mark owners.  The likelihood that disputes will evolve into lawsuits will only escalate as more states legalize recreational use of cannabis.

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the transitional program for covered business method patents, and derivation proceedings.  While patent agents are registered to practice before the USPTO, they are not attorneys.  Therefore, it has been unclear whether attorney-client privilege prevents discovery in PTAB proceedings of communications between these non-attorney agents and their clients.  Addressing this ambiguity, the USPTO just issued a final rule for trial practice before the PTAB that explicitly protects communications between patent agents or foreign patent practitioners and their clients.  The amended rule becomes effective December 7, 2017. 

Under U.S. Federal law, clients generally can rely on attorney-client privilege to protect communications with their attorneys.  The USPTO, however, allows registered patent practitioners, including patent attorneys and non-attorney patent agents, to prepare and prosecute patent applications and appear before the PTAB.  The USPTO explains “[r]egistered patent practitioners are individuals who have passed the USPTO’s registration exam and met the qualifications to represent patent applicants before the USPTO.”  Registered patent practitioners have met “the requirements of 37 CFR § 11.7, including the legal, scientific, and technical qualifications, as well as good moral character and reputation.”  Specifically, a patent attorney is an attorney who has met these requirements, whereas a patent agent is a non-attorney who has met these requirements.

Thus, the question arose as to whether communications between patent agents, who are not attorneys, and their clients are protected from discovery in PTAB proceedings.  To address this and related questions, in February 2015, the USPTO held a roundtable on domestic and international issues related to privileged communications between patent practitioners and their clients.  This process included a request for comments as to whether privilege should apply to communications between patent applicants or patent owners and their U.S. patent agents or foreign patent practitioners.  Some participants “noted the rules regarding privilege for U.S. patent agents and foreign practitioners in PTAB discovery proceedings were difficult to discern” given the lack of an explicit rule.  Instead, “[w]hen an issue arises before [the] PTAB, Administrative Law Judges make legal determinations as to which communications may be protected from disclosure on a case-by-case basis, based on the Federal Rules of Evidence and common law.”

Taking the various comments it received into consideration, the USPTO issued a final rule on privilege for trials before the PTAB, which will be added as 37 CFR §42.57.  The rule “recognizes that privilege issues will be treated the same for agents as for attorneys within their scope of authorized practice.”  By extending privilege to patent agents, the USPTO recognized that “clients deserve the same protections regardless of which type of authorized … provider they choose.”

It was also noted that “some foreign jurisdictions rely entirely or almost entirely on non-attorney patent agents,” which means “[i]n such jurisdictions, hiring an attorney to handle patent matters can be difficult or impossible.”  The final rule addresses client’s communications with foreign jurisdiction practitioners and protects them from discovery in PTAB proceedings “regardless of whether that jurisdiction provides privilege or an equivalent under its laws.”  It is important to note, however, the final rule “does not have extraterritorial effects.”  The rule does not affect how foreign courts treat communications with U.S. and foreign practitioners.  Whether a foreign court treats those communications as privileged is entirely under the control of the foreign jurisdiction.

Further, the USPTO acknowledged that under Federal law, attorney-client privilege generally protects not only communications between an attorney and the client, but also 1) communications between an attorney and the client’s representative, 2) communications between the client and an attorney’s employee or assistant, and 3) communications between multiple attorneys working for the same client.  Paragraph (c) of the final rule was added to “clarify that the scope of coverage will be the same for practitioners as for attorneys under these types of scenarios and any other situations.”

For further details, see https://www.federalregister.gov/documents/2017/11/07/2017-24190/rule-on-attorney-client-privilege-for-trials-before-the-patent-trial-and-appeal-board