Letter to USPTO on TTAB Standard Protective Order

The primary issued raised in the USPTO’s request for comments is whether the default version of the protective order’s treatment of higher-level, “attorney eyes only” confidential information should continue to limit the information to outside counsel.

AIPLA believes that whether it is appropriate for in-house counsel to have access to AEO information and documents should be a case-by-case determination, considering a variety of factors, including whether that counsel is in a competitive decision-making position, whether the parties are competitors, whether both parties have in-house counsel, the preference of individual clients, and the issues that may be relevant to the particular matter.

Because of the inherent difficulty of clawing back information that has already been disclosed, AIPLA believes that the default rule should be to deny in-house counsel access to AEO information but provide a transparent mechanism for a party to request such access when appropriate.

In addition, AIPLA recommends, as it has in past comments, that the issue of in-house counsel’s access to AEO information be a mandatory item of discussion at the initial discovery conference.