Required Use by Foreign Applicants and Patent Owners of a Patent Practitioner

DEPARTMENT OF COMMERCE <SUBAGY>United States Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 1</CFR> <DEPDOC>[Docket No. PTO-P-2025-0008]</DEPDOC> <RIN>RIN 0651-AD85</RIN> <SUBJECT>Required Use by Foreign Applicants and Patent Owners of a Patent Practitioner</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (USPTO or Office) is proposing to amend the Rules of Practice in Patent Cases to require patent applicants and patent owners whose domicile is not located within the United States (U.S.) or its territories (hereinafter foreign applicants/inventors and patent owners) to be represented by a registered patent practitioner. A requirement that foreign applicants/inventors and patent owners be represented by a registered patent practitioner would bring the United States in line with most other countries that require that such parties be represented by a licensed or registered person of that country. Additionally, this requirement would increase efficiency and enable the USPTO to more effectively use available mechanisms to enforce compliance by all foreign applicants/inventors and patent owners with U.S. statutory and regulatory requirements in patent matters, and enhance the USPTO's ability to respond to false certifications, misrepresentations, and fraud. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> Comments must be received by January 28, 2026 to ensure consideration. </EFFDATE> <HD SOURCE="HED">ADDRESSES:</HD> For reasons of government efficiency, comments must be submitted through the Federal eRulemaking Portal at <E T="03">www.regulations.gov.</E> To submit comments via the portal, one should enter docket number PTO-P-2025-0008 on the homepage and select “Search.” The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this proposed rule and select the “Comment” icon, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe® portable document format (PDF) or Microsoft Word® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of or access to comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Mark Polutta, Senior Legal Advisor, at (571) 272-7709, or Andrew St. Clair, Legal Advisor, at (571) 270-0238, of the Office of Patent Legal Administration or via email addressed to <E T="03">patentpractice@uspto.gov.</E> </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">I. Background</HD> Pursuant to its authority under 35 U.S.C. 2(b)(2), the USPTO is proposing to revise the rules in part 1 of title 37 of the Code of Federal Regulations to require foreign applicants/inventors and patent owners to be represented by a registered patent practitioner, as defined in 37 CFR 1.32(a)(1) ( <E T="03">i.e.,</E> a registered patent attorney or registered patent agent under 37 CFR 11.6 or an individual given limited recognition under § 11.9(a) or (b) or § 11.16) (hereinafter, registered patent practitioner). Requiring all foreign applicants/inventors and patent owners to be represented by a registered patent practitioner (1) treats foreign applicants/inventors and patent owners similarly to how U.S. applicants/inventors and patent owners are treated in other countries and harmonizes U.S. practice with the rest of the world; (2) increases efficiency as the USPTO spends extra resources to handle <E T="03">pro se</E> applicants ( <E T="03">i.e.,</E> an applicant who is prosecuting the application without a registered patent practitioner); (3) enables the USPTO to more effectively use available mechanisms to enforce compliance with statutory and regulatory requirements in patent matters; and (4) enhances the USPTO's ability to respond to false certifications, misrepresentations, and fraud. <HD SOURCE="HD2">A. Harmonization of U.S. Practice With Other Intellectual Property (IP) Offices With Respect to Representation</HD> Almost all IP Offices require foreign applicants/inventors and patent owners to be represented by a person licensed or registered in that country. The USPTO is proposing to implement a similar requirement. Requiring foreign applicants/inventors and patent owners to be represented by a registered patent practitioner would help to harmonize patent filing practice across IP Offices. <HD SOURCE="HD2">B. Increase Efficiency</HD> The USPTO utilizes extra resources to assist <E T="03">pro se</E> inventors. Requiring foreign applicants/inventors and patent owners to use registered patent practitioners will increase efficiency, as the applications will be in better form for examination. Applications from <E T="03">pro se</E> inventors generally require additional processing by the Office of Patent Application Processing because the application papers are often not in condition for publication, examination, or both. Additionally, <E T="03">pro se</E> applications usually require patent examiners to spend examination time on procedural matters, thereby increasing overall patent application pendency. Implementing this proposed rule would help allocate USPTO resources to the merits of examination and, accordingly, decrease patent application processing times. <HD SOURCE="HD2">C. Enforce Compliance With U.S. Statutory and Regulatory Requirements</HD> The requirement for representation by a registered patent practitioner is also necessary to enforce compliance by all foreign patent applicants/inventors and patent owners with U.S. statutory and regulatory requirements in patent matters. Registered patent practitioners are subject to the USPTO Rules of Professional Conduct and disciplinary sanctions for violations of those rules. <E T="03">See</E> 37 CFR 11.15, 11.20, and 11.100-11.901. Accordingly, registered patent practitioners have various obligations to the USPTO, including a duty to cooperate with inquiries and investigations. <E T="03">See, e.g.,</E> 37 CFR 11.303 and 11.801. The USPTO has noticed an increase in the number of false micro entity certifications to claim a reduction in fees and other false certification documents being filed. False certifications unjustly diminish the monetary resources of the USPTO, and false certifications on petitions or requests to expedite examination result in applications being unjustly advanced out of turn. Requiring submissions to be made by registered patent practitioners subject to the USPTO Rules of Professional Conduct and concomitant disciplinary sanctions imposed by the USPTO Director will make it less likely that the submissions will be signed by an unauthorized party or contain inaccurate or fraudulent statements, particularly with regard to any certification of micro entity status to claim a reduction in fees and any certification relevant to expediting the application. <HD SOURCE="HD2">D. Fraud Mitigation and the Integrity of the U.S. Patent System</HD> Requiring foreign patent applicants/inventors and patent owners to use registered patent practitioners will also facilitate fraud mitigation and protect the integrity of the U.S. patent system. As discussed, registered patent practitioners have a duty to cooperate with investigations and respond to lawful requests for information. <E T="03">See</E> 37 CFR 11.801(b). Further, it is professional misconduct for a registered patent practitioner to engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. <E T="03">See</E> 37 CFR 11.804(c). It is also professional misconduct for a registered patent practitioner to engage in conduct that is prejudicial to the administration of justice. <E T="03">See</E> 37 CFR 11.804(d). Because registered patent practitioners are subject to disciplinary sanctions pursuant to 37 CFR 11.15 and 11.20, they have an interest in responding to inquiries and investigations that extends beyond the outcome of a particular application. For example, the USPTO currently sends fee deficiency notices in applications which appear to have false micro entity certifications, and can also send requests for information or show cause orders in applications in which an apparent misrepresentation has been made. In patent applications with <E T="03">pro se</E> inventor-applicants, abandonment of the application effectively terminates the USPTO's ability to gather information. If a subsequent application is filed on the same subject matter, it may be difficult or impossible for the USPTO to establish that the applications are commonly owned or otherwise attributable to the same parties. However, when a registered patent practitioner is of record in the application or files papers in the application, the ability of the USPTO to gather information about the certifications or representations that were made extends beyond abandonment of the application. Therefore, requiring foreign patent applicants/inventors and patent owners to use registered patent practitioners would facilitate fraud mitigation and protect the integrity of the U.S. patent system. <HD SOURCE="HD1">II. Enforcement</HD> Unsigned or improperly signed papers are not entered into the record of the application or patent. <E T="03">See, e.g.,</E> MPEP 714.01. As such, when representation by a ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 58k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━