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Foreign Applicants to the USPTO Must Be Represented

by a United States Certified Attorney

The United States Patent and Trademark Office is implementing a revised measure to rules in parts 2, 7, and 11 of title 37 of the Code of Federal Regulations this summer for potential parties looking to register their patent or trademark with the USPTO. This new rule applies to all foreign trademark, patent, or copyright registrants. So, if you are an overseas entrepreneur considering registering your patent or trademark with the United States Patent and Trademark Office, please keep reading.

When and how will this affect registrants?

Effective as of August 3rd, 2019, the USPTO will require all foreign-domiciled trademark and patent applicants to the Trademark Trial and Appeal Board of the USPTO to be represented by an attorney who is licensed to practice law in the United States. These U.S. certified attorneys will aid in filing paperwork and other legal matters pertaining to the USPTO. Regardless of where in the world your permanent legal residence or principal place of business is, if you would like to register with the USPTO, your attorney must be a United States Bar certified attorney. Additionally, the counsel you select to represent your case are required to confirm and provide ample information on the following:

· Their name, postal address, and email address.

· A statement certifying their active membership in good standing with the American Bar Association.

· Information regarding their bar membership (state, number, and year of admission).

Canadian applicants to the USPTO

As for Canadian applications, the USPTO has made some revisions to the prior regulations as well.

Canadian patent agents are no longer authorized to represent Canadian trademark applicants before the USPTO for any trademark matters. Reciprocally recognized Canadian attorneys and agents, however, will still be authorized to represent Canadian applicant parties in United States trademark matters. Though the Canadian client will have to be appointed a U.S. licensed attorney in order to file any formal responses.

Why is the USPTO enforcing this new regulation?

In the past few years, the USPTO has discovered an increasing number of foreign trademark applicants filing inaccurate or possibly fraudulent submissions with the USPTO. These inaccurate submissions did not comply with USPTO rules and regulations, nor did they comply with United States trademark laws, because the applicants were represented by foreign counsel.

Many other countries have enforced this rule to require a local attorney represent applicants in order to avoid fraudulent activity. Thus, the USPTO is adopting this policy to ensure and maintain integrity of the register for the benefit of all applicants. In addition, this will enforce compliance with U.S. statutory and regulatory requirements. This will be a huge step in combatting fraudulent submissions and safeguarding all applicant’s registers.

Therefore, if you are a potential registrant with the United States Patent and Trademark office, please refer to our firm as the Wang IP Law Group specializes in these cases. It is crucial to recognize this rule change because this can affect whether or not your trademark will be approved with the USPTO.

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