Q) Canadian Patent Agent in the USA (MPEP 400)

by patentbar on August 1, 2008 · 29 comments

in Exam Questions

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.

{ 29 comments… read them below or add one }

1 angkorgoNo Gravatar August 11, 2008 at 9:12 am

The reference above should state:
37 CFR 11.6
— and not 37 CFR 10.6 (which is reserve).

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2 BennygNo Gravatar July 25, 2013 at 12:22 am

Angkor? As in Cambodia?

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3 please answerNo Gravatar January 8, 2009 at 7:49 am

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?

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4 BigBadVoodoDaddyNo Gravatar June 30, 2011 at 5:13 pm

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.

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5 BigBadVoodoDaddyNo Gravatar June 30, 2011 at 5:14 pm

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.

6 danNo Gravatar June 1, 2009 at 5:56 pm

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…

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7 wanderingNo Gravatar March 27, 2013 at 11:08 pm

Dan is absolutely wrong here. 37 CFR 11.6 states the foreign agent must NOT be a resident of the US, but must be registered before the foreign patent office. Choice A, as it states the Canadian agent is a US resident, is therefore wrong. A visa does not establish residency, and B is the correct answer.

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8 Big TexNo Gravatar November 17, 2009 at 7:28 pm

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

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9 toomuch23No Gravatar October 27, 2010 at 11:56 pm

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.”

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10 JBagNo Gravatar March 8, 2010 at 5:13 pm

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.

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11 misspatentNo Gravatar March 31, 2011 at 9:41 pm

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).

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12 JBagNo Gravatar March 8, 2010 at 5:24 pm

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.

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13 lilyNo Gravatar December 12, 2011 at 5:14 pm

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..

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14 Chemist62No Gravatar April 13, 2010 at 2:56 pm

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.

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15 JamecamNo Gravatar October 30, 2011 at 11:10 pm

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.

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16 maggieNo Gravatar November 15, 2011 at 4:39 pm

thx

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17 lilyNo Gravatar December 12, 2011 at 5:40 pm

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.

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18 SolNo Gravatar April 6, 2012 at 9:05 pm

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.

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19 ChrisNo Gravatar September 12, 2013 at 12:35 pm

You do not need to be registered with the USPTO, only a conuntry “allows substantially reciprocal privileges to those admitted to practice before the patent office”

37 CFR 11.6.

As long as the patent agent is in good standing in Canada (I.E. plays hockey) then he is allowed to practice in the US.

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20 jkpatentlawNo Gravatar June 14, 2012 at 11:50 am

Not sure why we are getting into a discussion over visas and what that means.

anyways, the Canadian must be living in Canada.

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21 wanderingNo Gravatar March 27, 2013 at 11:10 pm

no, the canadian must be a canadian resident, which is a different legal concept.

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22 YZNo Gravatar June 14, 2012 at 5:42 pm

I got this question on 06/09/2012. However, none of the answers posted above was there.
Sorry that I do not remember the exact answer choices. But I chose the one that said something like may be registered as a patent agent to practice before the Office for the limited purpose.

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24 Out of RoundNo Gravatar June 15, 2012 at 12:45 pm

Had a variation of this question on 6/12/12 exam.

I read the regs as meaning the following:
1) Agent had to show that he/she is registered to practice in foreign PTO having reciprocal agreement with USPTO.
2) Agent had to reside in foreign country.
3) Client had to reside in foreign country.

Only one of the answers met all the above criteria.

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25 firefoxNo Gravatar August 27, 2012 at 1:15 pm

I believe the Answer to the Orignal posted Question is (A) based on 37 CRF 11.6(b) and here is why:

(1.) The fact that Answer A remarks that the Canadian Agent is “not a US Attorney” bears relevance. A licensed US attorney would not require a POA, attorney-client privilege is implied as soon as contact is made, even before any retainer agreement is assented to; Remember the examiners specifically asked “when a POA would be recognized by the USPTO”; The best answer will expressly bar any possibility of implied Attorney powers; (NOTE: Answer B makes no mention that the Canadian citizen is NOT a US Attorney; Its perfectly possible for someone to be a Foreign Citizen, A Foreign Agent in Good Standing with a Foreign Authority AND a US Attorney– Just look at Barack Obama. (just kidding of course…). We have such a thing as Dual Citizenship; Canadian Citizenship does not preclude US Citizenship; Even if the Canadian Agent is not a US Citizen, he can still attend a US Law School, Pass the Bar and Register as a US Attorney as a resident alien;)

(2.) It is also expressly listed in 37 CRF 11.6(b) “… any alien who is **not an attorney**, who lawfully resides in the United States…”; Again, there the USPTO makes that all-important distinction that the BEST CHOICE is the answer that eliminates the possibility that the Canadian Agent is also a US Attorney; Furthermore, the congruity between “…resides in” as stated in the code and the use of the word “resident” in choice A rings truer and more accurate than simply “living in the US on a visa; Its perfectly possible to live in the US for 3 months on a Tourist Visa without being a resident, without be able to get a US issued drivers license, etc.

In my opinion, this is a really underhanded question that the USPTO crafted, not because of the code elements it refers to which are straight forward, but rather that it requires you to have a general understanding of immigration law and Attorney powers. It also requires that one adhere to the law of parsimony at arriving to the correct answer–that is to say that the simplest answer is the right one. Sure we can ‘out think’ the problem and delve into the 11.6(c) exception to 11.6(b), and in doing so concoct a scenario on assumptions that are not expressly given to us, but such a line of thinking will not help us arrive at the BEST ANSWER. In conclusion, both A and B are prima facie correct. A, however, is the BEST ANSWER.

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26 gotta get through thisNo Gravatar October 29, 2012 at 5:38 pm

Can anyone CONFIRM this please. What is the REAL answer!!!

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27 ENo Gravatar May 9, 2013 at 11:28 am

I’m still not sure about the answer.

If you look at E8R9 402 under “37 C.F.R. 1.34 Acting in a representative capacity.”, you will see one paragraph that is just a short sentence that states the following:

“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 11.6(c).”

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28 SarahNo Gravatar August 28, 2013 at 10:50 pm

11.6(c) is about registration of Foreigners practicing at USPTO for certain length of time.

11.9 is about limited recognition:
(a) Any individual not registered under § 11.6 may,upon a showing of circumstances which render itnecessary or justifiable, and that the individual is of goodmoral character and reputation, be given limited recognition by the OED Director to prosecute as attorneyor agent a specified patent application or specified patent applications.

In this case, the Canadian agent is for limited recognition.

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29 taking in JanuaryNo Gravatar December 18, 2013 at 4:46 pm

Answer B

402.01 Exceptions as to Registration [R-5]
37 C.F.R. 11.9 Limited recognition in patent matters.
(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
(b) 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.

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