TMEP 602.03: Foreign Attorneys and Agents

This is the October 2015 Edition of the TMEP

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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.