This new U.S. rule requiring that non-U.S.-domiciled applicants, registrants and parties to TTAB proceedings be represented by qualified U.S. counsel in proceedings before the USPTO and TTAB will be effective August 3, 2019.
Attorneys will be required to provide the name of a state in which he or she is an active member in good standing, the date of admission to the bar of the named state, and the bar license number, if one is issued by the named state. The practitioner “may be” required to provide evidence that he or she is an active member in good standing of the bar of the specified state. 37 C.F.R. § 2.17(b)(3). There will be special fields in the TEAS forms to enter this information and the information entered in these fields will be “masked” in the TSDR public database (although they note that attorney bar information is widely available online). (It does not say whether there will be special fields for this information in the ESTTA forms.)
If an application is filed without identifying a U.S. counsel, USPTO will examine the application in the usual course and include the requirement that a U.S. attorney be entered in the record as a requirement in the Office action, although it “retains its discretion to defer substantive examination and examine only for this or other requirements in appropriate circumstances.” 84 Fed. Reg. 31,504.
For applications and post-registration filings that are pending on the effective date, August 3, the procedure will depend on where in the process the filing is. if no further action is required to complete the application or post-registration filing, the USPTO will not require appointment of U.S. counsel. If further action is required (such as issuance of an Office action), the USPTO will issue a requirement for representation by a U.S. attorney.
An exception is made for Madrid Protocol applications that do not include appointment of U.S. counsel but that are approved for publication on first examination (no Office action issues). These will not receive an Office action requiring appointment of U.S. counsel.
People who submit letters of protest are not subject to this rule (because they are not applicants, registrants, or parties to a proceeding). 84 Fed. Reg. 31,504.
TTAB generally will apply this rule to all proceedings filed on or after the effective date of this rule, and to all proceedings pending on the effective date of this rule in which the parties must take further action. If it is necessary to require a foreign party to obtain U.S. counsel, the TTAB will suspend the proceedings and inform the party of the time frame within which it must obtain U.S. counsel.