TMEP 602.03(a): Canadian Attorneys and Agents

October 2017 Edition of the TMEP

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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").