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.
{ 16 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?
I think A is incorrect.
B is the most correct answer though (ambiguous nonetheless) and would fall out under 11.6 b if he was a registered agent before the USPTO.
A cannot fall under 11.6 c since the agent does not reside in canada – he is a US citizen. B however can, since he is on a valid visa to the US, he is still a resident of canada and registered to practice in canada.
A – canadian agent resident in the US falls out 11.6 b – where in it is required that he be registered to practice before the PTO
B- on the other hand requires that the agent is on a valid visa (i.e. – not inconsistent with terms of his lawful residence in the US – note this is not a resident status) and can fall under 11.6c.
I meant to say A is a US resident – not citizen, sorry for the second post . This precludes him from being an alien resident with a visa.
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
Agreed with Tex
Resident = Green card
Resident not equal to citizen
Visa not equal to resident
Visa or no visa is irrelevant as Visa does not equal resident (i.e. language per statute)
A.) is not possible, statute requires “not a resident of the U.S….”
B.) is the only other possible choice, although poorly worded. It would have been much easier to answer if they had replaced “citizen” with “resident.”
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.
11.6(c) cannot apply. Consider this language: “Upon ceasing to reside in such country, the patent agent registered under this section [11.6(c)] 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.” The agent would qualify under 11.6(b).
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.
a visa holder is generally not a resident. a visa means the person is there for a particular time to do a particular thing, ie education, work..
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.
I got this question on 10/29/2011.
I do not remember the exact answer choices, but I chose the one that said something like “The Canadian Agent is registered to practice before the Canadian Patent Office, which accords similar privileges regarding representation.”
I do not recall any details specifying where the Canadian agent resided. Although, I may have overlooked them if they were present.
thx
The answer to the original post should be B, not A.
Per 37 CFR 11.9, only one who is not a US Resident (immigrant) may be granted temporary recognition by the Office. I believe some of the above posts are referring to foreigners’ eligibility to become registered by the USPTO rather than their POA being recognized by the USPTO, which is the point of the question.
37 CFR 11.9. Limited recognition in patent matters.
A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the Bureau of Citizenship and Immigration Services to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
In my opinion, none of above choices is correct
The correct answer is that the Canadian
is registered before Canadian office
is living Cananda
AND also registered before USPTO
Also, the cliens are living in Canada.
Not related patent law but immigration/tax law
A resident is anyone living in US
legal or illegal
legal uising VISA or legal using permenant residency (PR)
For citizen, go ahead doing whatever you want (resident or not does not matter for you)
For resident foreigner
a PR has has no limit, just as any citizen
a legal resident using VISA is able to register before USPTO only when the VISA’s purpose is not inconsistent with practice before USPTO
a illegal resident, I guess no way
For non-resident foreigner
Registered in a country
living in a country
the country has mutal agreements with USTPO (only Canada in fact)
then you can register and represent only clients also living in that country.