Residency requirement for patent agent license

Related post: PTO’s Refusal to Register Temporary Aliens Moves Toward Supreme Court Hearing

The U.S. has a very strict residency requirement for patent agent registration. 37 C.F.R. 11.6(b) provides:

(b) Agents. Any citizen of the United States who is not an attorney, and who fulfills the requirements of this Part may be registered as a patent agent to practice before the Office. 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.

There are ambiguities in the provision but, as far as I know, it isn’t very easy for a foreigner with work visa to satisfy the requirement. To be eligible to be registered,

(i) lawfully reside (work visa will probably do it);
(ii) fulfilles the requirements of this Part (one will probably have to take and pass the patent bar);
(iii) registration as patent agent is not inconsistent with the terms upon which the alien was admitted to,

(iii) is the phrase at issue in Lacavera v. Dudas.

I couldn’t take the patent bar while I was in the U.S. primarily because of (iii).

Interestingly, Canada has a similar law. Canadian Patent Rule Section 12(1) provides:

12. (1) Subject to subsection 14(2), for the purpose of having their name entered on the register of patent agents, a person is eligible to sit for the qualifying examination for patent agents referred to in section 14 if, on March 31 of the year in which the person proposes to sit for the examination,

(a) the person resides in Canada and has been employed for a period of at least 12 months on the examining staff of the Patent Office; or

(b) the person resides in Canada and has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications, for a period of at least 12 months.

On the other hand, Korea does not have a residency requirement for patent attorney registration. One only has to pass the patent bar and that will do it.

As noted in the Patently-O blog, if the U.S. and Canada asks other countries to acknowledge U.S. and Canadian patent agent registration, the negotiation counterparts might ask the U.S. and Canada to remove the residence requirements.

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