602.03    Foreign Attorneys and Agents  

37 C.F.R. §11.14(c)  Foreigners.

 Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided:  the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.  Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

37 C.F.R. §11.14 (f)  Application for reciprocal recognition.

An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.

Generally, only an attorney as defined in 37 C.F.R. §11.1  may represent an applicant or registrant before the USPTO.  5 U.S.C. §§500(b), and (d); 37 C.F.R. §§2.17(a), 11.14(a), (e).  In very limited circumstances, Canadian agents or attorneys registered or in good standing before the Canadian Intellectual Property Office may file an application for reciprocal recognition to represent parties located in Canada. 37 C.F.R. §§2.17(e), 11.14(c), (f). See TMEP §602.03(a) regarding Canadian attorneys and agents.

A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney resides and practices, only if:  

  • (1)  He or she applies in writing to the OED Director for reciprocal recognition and pays the fee required by 37 C.F.R. §1.21(a)(1)(i);
  • (2)   He or she proves to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation; and
  • (3)  The patent or trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO.

37 C.F.R. §§11.14(c), (f).  The application for reciprocal recognition must be filed and granted prior to practicing before the USPTO in trademark matters.  A foreign attorney or agent may not practice before the USPTO in trademark matters prior to being recognized by the OED Director.  Practice before the USPTO in trademark matters includes preparing and prosecuting applications for trademark registration and otherwise representing a party to a proceeding before the USPTO.   37 C.F.R. §11.5(b)(2).  The OED Director grants recognition only in the form of a written communication.  A foreign attorney or agent not recognized to practice before the USPTO in trademark cases should allow adequate time to file and obtain recognition before representing a party before the USPTO.

Currently, a Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may be recognized as meeting the above criteria.  See TMEP §602.03(a) regarding Canadian attorneys and agents.

602.03(a)    Canadian Attorneys and Agents

37 C.F.R. §2.17(e)  Canadian attorneys and agents.

  • (1) A Canadian patent agent who is registered and in good standing as a patent agent under §11.6(c) may represent parties located in Canada before the Office in trademark matters.
  • (2) A Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office, but not registered as a patent agent under §11.6(c), may represent parties located in Canada if he or she has been authorized to do so by the Director of the Office of Enrollment and Discipline, pursuant to §11.14(f) of this chapter.

A Canadian attorney or agent may represent parties located in Canada only if:

  • (1) He or she is registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c); or
  • (2)   He or she files an application for and is granted recognition by the OED Director under 37 C.F.R. §11.14(c).  To be recognized under 37 C.F.R. §11.14(c), an individual must file a written application and pay the fee required by 37 C.F.R. §1.21(a)(1)(i) prior to representing a party before the USPTO.  The application must include proof that the individual meets the requirements of 37 C.F.R. §11.14(c), and must be addressed to the OED Director, Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.  37 C.F.R. §11.14(f).  

37 C.F.R. §2.17(e).

Once recognized by OED, a Canadian attorney or agent can only represent parties located in Canada.  37 C.F.R. §2.17(e)(1).  Thus, he or she cannot represent a party located in the United States or in another foreign country before the USPTO.  For example, he or she cannot represent a Canadian national who resides in California and has access to a mailing address in Canada.

If a Canadian attorney or agent is designated or acts as a representative of a party in a trademark matter, the USPTO staff must verify that the attorney or agent is recognized by OED, even if the individual files a document through TEAS and checks a box indicating that he or she is an authorized Canadian attorney or agent who has been granted recognition by OED.  See TMEP §611.02(a) regarding TEAS checkoff boxes. OED maintains a combined list of recognized Canadian trademark attorneys or agents and registered Canadian patent agents, which is available only on the USPTO’s internal computer network.

After verifying that the Canadian attorney or agent is recognized by OED, the USPTO staff should enter an appropriate Note to the File in the record.  If the individual has not been recognized by OED, the USPTO will treat any document filed by that individual as a document filed by an unauthorized person.  See TMEP §§611.05–611.05(c) for information about processing these documents.

If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §§11.6(c)  or 11.14(c)  is engaging in widespread unauthorized practice by representing applicants or registrants, he or she should bring the matter to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy ("Administrator").

602.03(b)    Foreign Attorneys and Agents from Countries Other than Canada

A foreign attorney or agent who resides and practices in a foreign country other than Canada and who is not a member in good standing of the bar of the highest court of a state in the United States may not practice before the USPTO unless he or she establishes that he or she meets the requirements of 37 C.F.R. §11.14.  5 U.S.C. §§500(b), (d).  Any such attorney or agent who attempts to represent a party in a trademark matter should be advised that he or she must file a written application for reciprocal recognition with OED and pay the fee required by 37 C.F.R. §1.21(a)(1)(i); that the application must be filed and granted prior to representing a party before the USPTO; and that the application must include proof that the attorney or agent is in good standing with the foreign patent or trademark office in the country in which the attorney or agent resides, that the attorney or agent is possessed of good moral character and reputation, and that the USPTO Director has recognized that the foreign patent or trademark office provides substantially reciprocal rights to United States attorneys.  37 C.F.R. §§11.14(c), (f).

602.03(c)    Documents Filed by Foreign Attorneys and Agents

A foreign attorney or agent who is not authorized to practice before the USPTO under 37 C.F.R. §11.14  may receive correspondence from the USPTO and transmit it to the applicant or registrant.  However, a foreign attorney or agent cannot prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions.  Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to a requirement or refusal all constitute examples of representation of a party in a trademark matter.   See 37 C.F.R. §11.5(b)(2); TMEP §608.01.  

If a foreign attorney or agent who does not meet the requirements of 37 C.F.R. §11.14(c)  is designated or acts as a representative of a party in a trademark matter, the USPTO will treat any document submitted by the attorney or agent as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05–611.05(c).

602.03(d)    Representatives of Holders of International Registrations

In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a),  or a registered extension of protection, the applicant’s appointed representative as communicated from the International Bureau of the World Intellectual Property Organization ("IB") is considered the correspondence address of record only.  If an individual with an address outside the United States is identified as applicant’s appointed representative for purposes of correspondence, the individual will not be recognized by the USPTO as applicant's attorney or qualified practitioner without further clarification of his or her qualifications under 37 C.F.R. §11.14.  See TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §§611–611.06(h) regarding signature on documents filed in the USPTO.

602.03(e)    Identification of Foreign Attorney in Original Application

If a new application identifies an attorney or agent with an address outside the United States (e.g., if a foreign address is set forth in the "attorney" section of a TEAS form) and the examining attorney must issue an Office action regarding any refusals and/or requirements, the Office action must include an advisory that unless the individual meets the requirements of 37 C.F.R. §11.14, he or she is not authorized to practice before the USPTO in trademark matters and may not represent the applicant in the particular trademark application, and that any power of attorney to the individual is void ab initio.  The Office action should be sent to the correspondence address of record indicated in the original application.  If the identified individual can establish that he or she is a qualified attorney (i.e., a member in good standing of the bar of the highest court of a U.S. state) who has an address outside the United States, he or she is a qualified practitioner under 37 C.F.R. §§11.1, 11.14(a),(c). If the designated attorney does not establish that he or she is a qualified practitioner, the attorney’s name must be removed from the "Attorney" field in the trademark database, and any responses, voluntary amendments, express abandonments, or changes of correspondence signed by the designated attorney must be treated as improperly signed documents. See TMEP §§602.03(c), 611.05–611.05(c).

If an Office action is not necessary (i.e., the application is otherwise eligible for approval for publication or registration on the Supplemental Register), the USPTO staff must ensure that the USPTO database does not include the identified individual in the "Attorney" field.  In addition, the examining attorney must enter a Note to the File indicating the attorney name has been removed. The correspondence address should remain unchanged.

See TMEP §609.04 regarding correspondence with parties not domiciled in the United States.