A question was reported as relating to a Canadian patent agent living in America. The relevant sections to review are:
MPEP 402 Power of Attorney – A power of attorney or authorization given to a registered Canadian patent agent, to be valid, must be given by the applicants, all of whom are located in Canada. See 37 CFR 10.6(c).
37 CFR 11.6 Registration of attorneys and agents –
(c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices and who is possessed of the qualifications stated in § 10.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided: The patent office of such country allows substantially reciprocal privileges to those admitted to practice before the United States Patent and Trademark Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain. . .
. . .Upon ceasing to reside in such country, the patent agent registered under this section is no longer qualified to be registered under this section, and the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal.
In addition, Jim Longacre’s Practice Question of the Day (175) provides:
An inventor who is a Canadian citizen residing in Canada has a long standing professional relationship with a Canadian patent agent. Under which of the following circumstances will the USPTO recognize a Power of Attorney to that Canadian agent?
(A) The Canadian agent is resident in the United States, but is not registered as a US attorney.
(B) The Canadian agent is a citizen of Canada living in the United States with a valid visa.
(C) The Canadian agent is related to the inventor.
(D) The Power of Attorney is accompanied by a showing of why the inventor requires representation by this particular agent.
(E) The Canadian agent is registered to practice before the European Patent Office.
The answer is (A) as per 37 CFR 10.6 and MPEP 402.
{ 7 comments… read them below or add one }
The reference above should state:
37 CFR 11.6
– and not 37 CFR 10.6 (which is reserve).
Regardign the above Jim Longacre’s question,
is the answer (A)? I think (B) is right because 37 CFR 11.6 (c) says
“Any foreigner not a resident of the United States~.”
What do you guys think?
There are several agents and patent lawyers that live in Europe, and are regiestered with USPTO that do not meet any of the specifications from these comments, like: resident of US, visa of US living in US. Moreover, the comment is stating:
“Any foreigner not a resident of the United States who shall file proof to the satisfaction of the Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices and who is possessed of the qualifications stated in § 10.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country”
My opinion is that the agent can practice in this country only if he holds “residency”… so A is the correct answer.
B – visa is not enough
C – is not a supporting fact for the USPTO to accept the power of attorney
D – showing of why is not required by MPEP
E – european registration is not required by MPEP
This is kinda vague question, but if you exclude all the wrong questions you get “A” as the most correct one…
I disagree with all of Jim’s answers. I believe 11.6(c) states three things that must be in place for a foreign patent attorney/agent to practice before the USPTO in certain cases:
(1) Foreign attorney/agent must be a resident in the *foreign country*
(2) His or her client must also be a resident of the *foreign country*
(3) The foreign country must allow substantially reciprocal privileges to US attorney/agents
None of Jim’s answers fulfill all of these requirements explicitly. FWIW, the following website talks about a similar provision in the Trademark code and agrees with what I have posted: http://www.zpatents.com/TMEP/tmep_602.htm
I think BOTH A and B are correct answers.
As for A, if the Canadian patent agent is a resident of the US and not a US Attorney, than we should use the provisions of 11.6(b).
11.6(b):
When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided that the alien may remain registered only:
(1)
If the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or
(2)
If the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 11.9(b).
As for B, since the Canadian patent agent is living in the US with a Visa (Visa’s are granted to visitors to this country where residents are given green cards) the provisions of 11.6(c) apply.
Follow-up,
However, if you consider the Visa holder as a resident, than the provisions of 11.6(a) or 11.6(b) would be appropriate where in either case, they would still be allowed to practice in the US.
11.7(b)(1)(D):
For aliens, provide proof that recognition is not inconsistent with the terms of their visa or entry into the United States;
In either case, the Canadian patent agent would be qualified to be registered under paragraph (c) once the alien ceases to reside in the US as 11.6(a)(2) and 11.6(b)(2) requires.
The difference between living in the US on a visum and the resident is: the resident is a visa holder as well, but the type of visa which a resident holds allows that person to fullfill workfunctions. In other words, a resident has a work permit, a general visa holder does not. But yes, both require visa.