USPTO Final Rule Imposes Mandatory U.S. Counsel Requirement For Foreign Patent Applicants

Highlights

• The United States Patent and Trademark Office (USPTO) is expected to publish a Final Rule that will require patent applicants with at least one non-U.S.-domiciled applicant to be represented by a USPTO-registered patent practitioner for all submissions.
• The requirement will apply to all new applications filed after the effective date and to any papers submitted in pending applications — submissions not signed by a registered U.S. practitioner will not be entered into the record.
• The Final Rule will apply based upon the domicile of the applicants listed on the Application Disclosure Sheet (ADS).
• While applications may still receive a filing date without practitioner representation, key components (e.g., priority claims, small or micro-entity status designations) will not be accepted until a registered U.S. practitioner is appointed.
• Applicants outside the U.S. should plan to engage a registered U.S. patent practitioner promptly to avoid delays, ensure compliance, and preserve rights under the new rule. 

The USPTO is expected to publish a Final Rule on March 20, 2026 that will, once effective (approximately 120 days after the date of publication), require patent applicants with at least one non-U.S.-domiciled applicant to be represented by a patent practitioner that is registered before the USPTO. The Final Rule will apply to all new applications filed on or after the effective date as well as all papers that are submitted for all pending applications on or after the effective date. Before the implementation of this rule, the USPTO's rules had never required inventor/applicants to be represented by a registered U.S. patent practitioner, although existing rules have required all juristic entities to be represented by a registered U.S. patent practitioner.

The change is being implemented by the USPTO to harmonize U.S. practice with the practice of most other foreign countries, which require patent applicants to be represented by a registered patent practitioner in that country. The USPTO's basis for the new requirement includes the goals of increasing USPTO efficiency (due to the substantial resources that the USPTO uses to assist some pro se applicants with initial formalities and during examination); enforcing compliance with the U.S. statutory and regulatory requirements; and providing the USPTO additional tools to investigate and eliminate fraud, in part due to the duty of registered U.S. patent practitioners to cooperate with investigations and respond to lawful requests for information from the USPTO.

The Final Rule will not change the requirements to receive a filing date when a patent application is filed with the USPTO, but after the implementation of the rule, patent application papers that are submitted by an applicant domiciled outside of the U.S. that are not signed by a registered U.S. patent practitioner will not be entered into the record. While a patent application will receive a filing date based on the date that application papers are properly received by the USPTO, for the application to be appropriately processed, the applicant must shortly thereafter retain a registered U.S. practitioner.

For example, the USPTO only will accept a priority claim that is made via an Application Data Sheet (ADS), which once the Final Rule becomes effective can only be signed by a registered U.S. patent practitioner in applications with an applicant domiciled outside of the United States. Similarly, a claim for small or micro-entity status for a patent application can only be signed by a registered U.S. patent practitioner. The Final Rule states that the USPTO will mail a deficiency notice to an applicant domiciled outside of the U.S. if papers are received that are not signed by a registered US patent practitioner, which will provide a time period for the applicant to retain a registered U.S. patent practitioner and submit the necessary papers.

The domicile of the applicant is the domicile of an inventor/applicant or the domicile of assignee/applicant. The address listed in an ADS submitted with an application will control the domicile determination, but the Final Rule states that the USPTO is authorized to investigate the actual domicile of a patent applicant if the USPTO believes that it is appropriate to do so. The Final Rule identifies the domicile of an inventor to be the permanent legal place of residence of a natural person and the domicile of a juristic entity to be its principal place of business.

The Final Rule will not alter any requirements for patent applicants that are domiciled in the U.S., and current USPTO rules require juristic entities to be represented by a registered U.S. patent practitioner. In some situations, an application may be filed with the inventors listed as the applicants on the ADS, even though there may be an existing obligation upon the inventors to assign their rights to another entity. If in that situation one of the inventors is domiciled outside of the United States, the USPTO would require the ADS and other application papers to be signed by a registered U.S. patent practitioner to be processed.

The comments with the to-be-formally-published Final Rule include statistics that are relevant to the new requirement. In 2022, 512,038 new patent applications were filed with the USPTO, with 42.1% of the applications filed by applicants and 57.9% of the applications filed by foreign applicants. Of the foreign patent applications filed in 2022, 1,217 patent applications were submitted without a U.S. registered patent practitioner.

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