A new rule from the USPTO took effect July 20, effectively ending foreign pro se patent prosecution: Patent applicants and patent owners whose domicile is outside the United States or its territories must now be represented by a registered patent practitioner — and, as we’ll see, even some U.S. citizens are caught by it.
Here is a breakdown of who the rule affects, how it applies, and why the USPTO adopted it.
Link to Who the Rule Affects Who the Rule Affects
The rule applies to both patent applicants and patent owners. Per the USPTO, a patent applicant includes any inventor, joint inventor, legal representative, person to whom the inventor has assigned (or is obligated to assign) their rights, or anyone else who shows sufficient proprietary interest to be named as an applicant. A patent owner is the person or entity that holds title to an issued patent, as reflected in USPTO assignment records.
The rule turns on domicile — in other words, an individual’s permanent legal place of residence or a juristic entity’s principal place of business. For an inventor-applicant, domicile is normally determined by the residence information in the application data sheet (ADS) and/or the inventor’s oath or declaration. For a non-inventor applicant, it’s normally based on the mailing address in the ADS’s applicant information section. Where an application has multiple applicants or owners with different domiciles, the representation requirement applies to the group as a whole if any one of them is domiciled outside the United States.
This is not a citizenship test. The USPTO has confirmed it does not collect citizenship information, since doing so would create a significant risk and administrative burden. That means a U.S. citizen who is permanently domiciled abroad is still treated as a foreign pro se applicant and remains subject to the new requirement. That also means that a non-U.S. citizen permanently domiciled in the U.S. can file pro se.
It’s worth noting that juristic entities (corporations, partnerships, government agencies, trusts, and the like) were already required to be represented by a registered patent practitioner, regardless of domicile, when acting as an applicant. This rule extends that same requirement to juristic entities acting as patent owners.
Link to What the Rule Requires What the Rule Requires
Those who qualify must be represented by a registered patent practitioner: a patent attorney or patent agent registered under 37 CFR 11.6, or an individual granted limited recognition under § 11.9(a), § 11.9(b), or § 11.16.
This requirement applies to all filings, including new applications, amendments, replies, and other papers received on or after the effective date, regardless of when the underlying application was originally filed. In practice, that means a foreign pro se applicant who filed before the rule took effect will still need a registered practitioner to respond to the office going forward in that same application. A reply filed without one may require corrective action, but new applications will still be accorded a filing date under the conditions set forth in 37 CFR 1.53.
The rule does not require practitioner representation for paying maintenance fees or the basic filing fee. It does, however, still require a practitioner’s signature to certify micro entity status for a reduced fee.
Link to Why the USPTO Adopted It Why the USPTO Adopted It
According to the USPTO, requiring foreign applicants/inventors and patent owners to be represented by a registered patent practitioner:
- Treats foreign applicants/inventors and patent owners the same way U.S. applicants/inventors and patent owners are treated in other countries;
- Increases efficiency, since the USPTO spends significant resources assisting pro se applicants;
- Enables the USPTO to more effectively enforce compliance with statutory and regulatory requirements in patent matters; and
- Enhances the USPTO’s ability to respond to false certifications, misrepresentations, and fraud.
Consistent with other recent rule changes under Director John Squires, the final rule is also aimed at reducing patent application pendency: Pro se applications generally require additional processing by the Office of Patent Application Processing (OPAP) and additional examination time from patent examiners on procedural matters.
Link to The Bottom Line The Bottom Line
Any applicant or patent owner domiciled outside the U.S. will need a registered patent practitioner to file and respond to the USPTO. If the new rule affects you, Bradley has a number of experienced attorneys registered to practice before the USPTO who can step in on patent drafting, filing, and prosecution.