A sweeping new USPTO rule that took effect on July 20 has effectively ended the ability of foreign applicants to prosecute patents without professional representation.
Under the rule, any patent applicant or patent owner whose domicile is outside the United States or its territories must now be represented by a registered patent practitioner.
The rule applies to a broad range of applicants, including inventors, joint inventors, legal representatives, assignees, and anyone else with sufficient proprietary interest to be named as an applicant.
A patent owner is defined as the person or entity holding title to an issued patent, as reflected in USPTO assignment records.
The rule turns on domicile, meaning an individual’s permanent legal place of residence or, for a company, its principal place of business.
Where an application has multiple applicants or owners with different domiciles, the representation requirement applies to the group as a whole if any one of them is domiciled outside the United States.
Importantly, this is not a citizenship test, and the USPTO has confirmed it does not collect citizenship information, as doing so would create a significant risk and administrative burden.
That means a US citizen permanently domiciled abroad is still treated as a foreign applicant and must comply, while a non-US citizen permanently domiciled in the United States can still file without representation.
Those who qualify must be represented by a registered patent practitioner, specifically a patent attorney or patent agent registered under 37 CFR 11.6, or an individual granted limited recognition under relevant provisions.
The requirement applies to all filings received on or after the effective date, including new applications, amendments, and replies, regardless of when the original application was filed.
A foreign pro se applicant who filed before the rule took effect will still need a registered practitioner to continue corresponding with the USPTO on that same application going forward.
The rule does not require practitioner representation solely for paying maintenance fees or the basic filing fee, though a practitioner’s signature is still required to certify micro entity status for reduced fees.
According to the USPTO, the rule treats foreign applicants the same way US applicants are treated in other countries and increases efficiency by reducing resources spent assisting unrepresented filers.
The agency also argues the change enables more effective enforcement of statutory and regulatory requirements and enhances its ability to respond to false certifications, misrepresentations, and fraud.
Consistent with other recent rule changes under Director John Squires, the final rule is also aimed at reducing patent application pendency, with pro se applications generally requiring additional processing and examination time on procedural matters.