The USPTO will require Foreign Applicants to have US Attorneys

After first publishing a proposal to require foreign-domiciled applicants and registrants to use a U.S. licensed attorney in February, the USPTO has made the rule official. Starting on August 3, 2019, filers residing and businesses headquartered outside the United States—including those in Canada—will have to be represented by an attorney licensed in the United States. 

The new rule will also mean that Canadian patent agents will no longer be able to represent trademark applicants, and while Canadian attorneys may continue to be deemed “additionally appointed practitioners,” the USPTO will no longer correspond directly with them.

Generally, this is part of a series of changes that the USPTO is making to ensure that filings are accurate and comply with USPTO expectations and help “safeguard the integrity of the U.S. trademark register.”

Notably, this also applies to any non-US filers whose applications are assigned office actions, even if their applications were filed or their office actions were assigned before the effective date. Those applicants whose application dates were before August 3rd and whose applications are otherwise satisfactory will be granted registration.