Additional Discussion of TTAB's Standard Protective Order

Comments on TTAB's standard protective order: Jahn (Jan 2019)

Please provide your answers and comments to the following questions.

1. Please describe the entity or individual submitting the comments (i.e., a law firm, a private practice attorney, a corporation or other business entity, in-house counsel, a trade association, a legal or policy association, professor/academia, other).

Kirstin Jahn - Solo practitioner

2. The SPO currently provides for the protection of information and documents designated as (1) Confidential or (2) Confidential – For Attorneys' Eyes Only (trade secret/ commercially sensitive) (AEO). Under the SPO, AEO material is only available for review by outside counsel, not in-house counsel. Absent agreement by the parties or Board order, in-house counsel currently cannot access AEO information and documents. Should the SPO be amended so that the default is to allow for in-house counsel access to AEO information and documents? YES or NO, and please explain the reason for your response. NO - General Counsel are not allowed to see AEO materials in litigation in federal court either. They have a conflict - period. Excluding them from viewing the materials is no different than excluding your client who does not have general counsel. It discriminates against the small firm that does not have a general counsel.

3. If your answer to question 2 is yes, should it matter if the in-house counsel is domestic or foreign? Please explain.

4. When a party requests that in-house counsel be entitled to access AEO information in a particular case, the TTAB currently relies on the test set forth in Akzo N.V. v. U.S. Int'l Trade Commission, 808 F.2d 1471, 1484, 1 USPQ2d 1241 (Fed. Cir. 1986) to make that determination. The factors to be balanced are:

(1) Whether the party seeking to gain access to AEO information for in-house counsel has "need for the confidential information sought in order to adequately prepare its case."

(2) Any showing of "harm that disclosure would cause the party submitting the information."

(3) The forum's interest in maintaining the confidentiality of the information sought."

Do you believe that this test is still appropriate for assessing in-house counsel access to AEO information? YES or NO, and please explain the reason for your response. NO, I think the test should be more restrictive because it puts the small business owner (or individual) party at a huge disadvantage and is unfair..

5. If your answer to question 2 is no, and you do not think the SPO should be amended so that the default is to allow for in-house counsel access to AEO material, should the SPO instead be amended to incorporate the Akzo test described in question 4. YES or NO, and please explain the reason for your response. NO - a motion is the proper vehicle to change the standard protective order.

6. In addition to the issue of access to AEO material, the USPTO is interested in comments on the SPO's levels of confidentiality for protected information and documents. The previous version of the SPO included three levels: Confidential, Highly Confidential, and Trade Secret/Commercially Sensitive, with a presumption that in-house counsel would not have access to information or documents in the last category. Should the current SPO be amended to re-introduce the "Highly Confidential" tier? Please explain.

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Sincerely,

 

Kirstin Jahn

www.jahnlaw.com

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