[Federal Register Volume 90, Number 245 (Monday, December 29, 2025)]
[Proposed Rules]
[Pages 60594-60602]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-23917]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2025-0008]
RIN 0651-AD85
Required Use by Foreign Applicants and Patent Owners of a Patent
Practitioner
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is proposing to amend the Rules of Practice in Patent Cases to
require patent applicants and patent owners whose domicile is not
located within the United States (U.S.) or its territories (hereinafter
foreign applicants/inventors and patent owners) to be represented by a
registered patent practitioner. A requirement that foreign applicants/
inventors and patent owners be represented by a registered patent
practitioner would bring the United States in line with most other
countries that require that such parties be represented by a licensed
or registered person of that country. Additionally, this requirement
would increase efficiency and enable the USPTO to more effectively use
available mechanisms to enforce compliance by all foreign applicants/
inventors and patent owners with U.S. statutory and regulatory
requirements in patent matters, and enhance the USPTO's ability to
respond to false certifications, misrepresentations, and fraud.
DATES: Comments must be received by January 28, 2026 to ensure
consideration.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, one should
enter docket number PTO-P-2025-0008 on the homepage and select
``Search.'' The site will provide search results listing all documents
associated with this docket. Commenters can find a reference to this
proposed rule and select the ``Comment'' icon, complete the required
fields, and enter or attach their comments. Attachments to electronic
comments will be accepted in Adobe[supreg] portable document format
(PDF) or Microsoft Word[supreg] format. Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of or
access to comments is not feasible due to a lack of access to a
computer and/or the internet, please contact the USPTO using the
contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: Mark Polutta, Senior Legal Advisor, at
(571) 272-7709, or Andrew St. Clair, Legal Advisor, at (571) 270-0238,
of the Office of Patent Legal Administration or via email addressed to
[email protected].
SUPPLEMENTARY INFORMATION:
I. Background
Pursuant to its authority under 35 U.S.C. 2(b)(2), the USPTO is
proposing to revise the rules in part 1 of title 37 of the Code of
Federal Regulations to require foreign applicants/inventors and patent
owners to be represented by a registered patent practitioner, as
defined in 37 CFR 1.32(a)(1) (i.e., a registered patent attorney or
registered patent agent under 37 CFR 11.6 or an individual given
limited recognition under Sec. 11.9(a) or (b) or Sec. 11.16)
(hereinafter, registered patent practitioner). Requiring all foreign
applicants/inventors and patent owners to be represented by a
registered patent practitioner (1) treats foreign applicants/inventors
and patent owners similarly to how U.S. applicants/inventors and patent
owners are treated in other countries and harmonizes U.S. practice with
the rest of the world; (2) increases efficiency as the USPTO spends
extra resources to handle pro se applicants (i.e., an applicant who is
prosecuting the application without a registered patent practitioner);
(3) enables the USPTO to more effectively use available mechanisms to
enforce compliance with statutory and regulatory requirements in patent
matters; and (4) enhances the USPTO's ability to respond to false
certifications, misrepresentations, and fraud.
A. Harmonization of U.S. Practice With Other Intellectual Property (IP)
Offices With Respect to Representation
Almost all IP Offices require foreign applicants/inventors and
patent owners to be represented by a person licensed or registered in
that country. The USPTO is proposing to implement a similar
requirement. Requiring foreign applicants/inventors and patent owners
to be represented by a registered patent practitioner would help to
harmonize patent filing practice across IP Offices.
B. Increase Efficiency
The USPTO utilizes extra resources to assist pro se inventors.
Requiring foreign applicants/inventors and patent owners to use
registered patent practitioners will increase efficiency, as the
applications will be in better form for examination. Applications from
pro se inventors generally require additional processing by the Office
of Patent Application Processing because the application papers are
often not in condition for publication, examination, or both.
Additionally, pro se applications usually require patent examiners to
spend examination time on procedural matters, thereby increasing
overall patent application pendency. Implementing this proposed rule
would help allocate USPTO resources to the merits of examination and,
accordingly, decrease patent application processing times.
C. Enforce Compliance With U.S. Statutory and Regulatory Requirements
The requirement for representation by a registered patent
practitioner is also necessary to enforce compliance by all foreign
patent applicants/inventors and patent owners with U.S. statutory and
regulatory requirements in patent matters. Registered patent
practitioners are subject to the USPTO Rules of Professional Conduct
and disciplinary sanctions for violations of those rules. See 37 CFR
11.15, 11.20, and 11.100-11.901. Accordingly, registered patent
practitioners have various obligations to the USPTO, including a duty
to cooperate with inquiries and investigations. See, e.g., 37 CFR
11.303 and 11.801.
The USPTO has noticed an increase in the number of false micro
entity certifications to claim a reduction in fees and other false
certification documents being filed. False certifications unjustly
diminish the monetary resources of the USPTO, and false certifications
on petitions or requests to expedite examination result in applications
being unjustly advanced out of turn. Requiring submissions to be
[[Page 60595]]
made by registered patent practitioners subject to the USPTO Rules of
Professional Conduct and concomitant disciplinary sanctions imposed by
the USPTO Director will make it less likely that the submissions will
be signed by an unauthorized party or contain inaccurate or fraudulent
statements, particularly with regard to any certification of micro
entity status to claim a reduction in fees and any certification
relevant to expediting the application.
D. Fraud Mitigation and the Integrity of the U.S. Patent System
Requiring foreign patent applicants/inventors and patent owners to
use registered patent practitioners will also facilitate fraud
mitigation and protect the integrity of the U.S. patent system. As
discussed, registered patent practitioners have a duty to cooperate
with investigations and respond to lawful requests for information. See
37 CFR 11.801(b). Further, it is professional misconduct for a
registered patent practitioner to engage in conduct involving
dishonesty, fraud, deceit, or misrepresentation. See 37 CFR 11.804(c).
It is also professional misconduct for a registered patent practitioner
to engage in conduct that is prejudicial to the administration of
justice. See 37 CFR 11.804(d). Because registered patent practitioners
are subject to disciplinary sanctions pursuant to 37 CFR 11.15 and
11.20, they have an interest in responding to inquiries and
investigations that extends beyond the outcome of a particular
application.
For example, the USPTO currently sends fee deficiency notices in
applications which appear to have false micro entity certifications,
and can also send requests for information or show cause orders in
applications in which an apparent misrepresentation has been made. In
patent applications with pro se inventor-applicants, abandonment of the
application effectively terminates the USPTO's ability to gather
information. If a subsequent application is filed on the same subject
matter, it may be difficult or impossible for the USPTO to establish
that the applications are commonly owned or otherwise attributable to
the same parties. However, when a registered patent practitioner is of
record in the application or files papers in the application, the
ability of the USPTO to gather information about the certifications or
representations that were made extends beyond abandonment of the
application. Therefore, requiring foreign patent applicants/inventors
and patent owners to use registered patent practitioners would
facilitate fraud mitigation and protect the integrity of the U.S.
patent system.
II. Enforcement
Unsigned or improperly signed papers are not entered into the
record of the application or patent. See, e.g., MPEP 714.01. As such,
when representation by a registered patent practitioner is required,
papers such as amendments and other replies, application data sheets,
information disclosure statements, or petitions, would not be entered
unless they are signed by a registered patent practitioner. This would
not apply to papers which are required to be signed by a specific
party, such as the inventor's oath or declaration under 37 CFR 1.63.
The definition of the term ``domicile'' is provided in proposed 37
CFR 1.9(p). The domicile of an inventor-applicant will normally be
determined by the residence information provided in the application
data sheet (ADS) under 37 CFR 1.76, or the inventor's oath or
declaration under 37 CFR 1.63 (including a substitute statement under
37 CFR 1.64). The domicile of an applicant who is not an inventor will
normally be determined based on the mailing address provided in the
Applicant Information section of the ADS. If an ADS is inconsistent
with the information provided in another document that was submitted at
the same time or prior to the ADS submission, the ADS will control. See
37 CFR 1.76(d). This is because the ADS is intended to be the means by
which an applicant provides complete bibliographic information. In some
instances, the USPTO may refer to sources other than those listed above
for purposes of assessing compliance with the domicile requirement. For
example, in order to determine whether the domicile is accurate, the
USPTO may refer to the notarized Patent Electronic System Verification
form or other identity verification information.
A paper filed on behalf of the patent owner may indicate the
domicile of the patent owner if such information is not present in the
application file. When it is necessary for the USPTO to act on a paper
submitted in the file of an issued patent and the paper is not signed
by a registered patent practitioner, the paper may not be treated on
its merits. For example, if a petition to accept unintentionally
delayed payment of a maintenance fee in an expired patent under 37 CFR
1.378(b) is filed that is not signed by a registered patent
practitioner, the petition may be dismissed before consideration on the
merits if it cannot be determined whether the paper complies with 37
CFR 1.31 and 1.33(b).
Regarding the assessment of compliance referred to above,
applicants, patent owners, and practitioners are reminded that the
presentation to the Office of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under 37
CFR 11.18(b). A misrepresentation of the domicile of an applicant or
patent owner would not be ``to the best of the party's knowledge,
information and belief, formed after an inquiry reasonable under the
circumstances'' as required under 37 CFR 11.18(b)(2). Violations of 37
CFR 11.18(b)(2) by a party, whether a practitioner or non-practitioner,
may result in the imposition of sanctions under 37 CFR 11.18(c), which
may include termination of the proceedings. See 37 CFR 1.4(d)(5)(i).
III. Discussion of Specific Rules
The following is a discussion of proposed amendments to 37 CFR part
1:
A. Section 1.9
Section 1.9 is proposed to be amended to add new paragraph (p)
defining domicile as the permanent legal place of residence of a
natural person or the principal place of business of a juristic entity.
The domicile of an inventor-applicant will normally be determined by
the residence information provided in the ADS under 37 CFR 1.76, or the
inventor's oath or declaration under 37 CFR 1.63 (including a
substitute statement under 37 CFR 1.64). The domicile of an applicant
who is not an inventor will normally be determined based on the mailing
address provided in the Applicant Information section of the ADS. See
section II. above for further discussion.
B. Section 1.31
Section 1.31 is proposed to be amended to add the title and rule to
include ``patent owner,'' and reformatting the rule language into
paragraphs (a) and (b). The section is further proposed to be amended
to indicate that an applicant as defined in Sec. 1.42 or patent owner
whose domicile is not located within the U.S. or its territories must
be represented by a registered patent practitioner. The section is also
proposed to be amended to require that a patent owner who is a juristic
entity must be represented by a registered patent practitioner. The
section previously required a juristic entity who was the applicant to
be represented by a registered patent
[[Page 60596]]
practitioner, but has now been expanded to make a similar requirement
for patent owners in post-grant proceedings.
The phrase ``an applicant as defined in Sec. 1.42'' in paragraph
(a) encompasses any inventor, joint inventor, legal representative,
person to whom the inventor has assigned, person to whom the inventor
is under an obligation to assign, or person who otherwise shows
sufficient proprietary interest in the matter who is named as an
applicant. Thus, an applicant as defined in Sec. 1.42 must be
represented by a registered patent practitioner if at least one of the
parties identified as the applicant has a domicile that is not located
within the U.S. or its territories. See Sec. 1.31(a)(2). As a
reminder, powers of attorney must be signed by all parties identified
as the applicant in order to be effective.
C. Section 1.32
Section 1.32 is proposed to be amended to add the definition of
patent practitioner to partially parallel Sec. 11.10(a).
D. Section 1.33
Section 1.33 is proposed to be amended to add paragraph (b)(3) to
indicate that for amendments and other papers filed in an application
or patent unless otherwise specified submitted on behalf of a juristic
entity, an applicant as defined in Sec. 1.42 whose domicile is not
located within the United States or its territories, or a patent owner
whose domicile is not located within the United States or its
territories must be signed by a patent practitioner. These revisions to
paragraph (b)(3) are consistent with the changes to Sec. 1.31,
discussed above.
A foreign domiciled inventor who is the applicant may initially
file a U.S. patent application with the USPTO and pay the filing fee at
the time of filing. However, any application data sheet that
accompanies the application papers or is submitted later, as well as
all follow-on correspondence, must be signed by a patent practitioner.
A patent practitioner must also sign any petition that is filed in such
an application, including but not limited to a request for prioritized
examination and a petition to make special. To pay the issue fee, PTOL-
85 Part B would also have to be signed by a patent practitioner.
IV. Rulemaking Considerations
A. Administrative Procedure Act
This rulemaking would revise the procedures governing the
representation of patent applicants and patent owners at the USPTO. The
proposed changes do not change the substantive criteria of
patentability. Therefore, the changes in this rulemaking involve rules
of agency practice and procedure and/or interpretive rules and do not
require notice-and-comment rulemaking, pursuant to 5 U.S.C. 553(b)(A)).
See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015)
(explaining that interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers'' and do
not require notice-and-comment when issued or amended); Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (5 U.S.C. 553,
and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment
rulemaking for ``interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice''); In re Chestek
PLLC, 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes
that ``do[ ] not alter the substantive standards by which the USPTO
evaluates trademark applications'' are procedural in nature and thus
``exempted from notice-and-comment rulemaking.''); and JEM Broadcasting
Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (``[T]he `critical
feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that
it covers agency actions that do not themselves alter the rights or
interests of parties, although [they] may alter the manner in which the
parties present themselves or their viewpoints to the agency.' ''
(quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))).
However, the USPTO has chosen to seek public comment before
implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 or any other law, neither a
Regulatory Flexibility Act analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601, et seq.) is required. See 5
U.S.C. 603. Nevertheless, the USPTO publishes this IRFA to examine the
impact on small entities of the Office's proposed requirement that
patent applicants and patent owners whose domicile is not located
within the United States (U.S.) or its territories (hereinafter
``foreign applicants/inventors and patent owners'') be represented by a
registered patent practitioner, as defined in 37 CFR 1.32(a)(1), and to
seek the public's views. The USPTO developed this IRFA to promote
transparency and to inform the public of the impacts of this rule. The
term domicile is defined as the permanent legal place of residence of a
natural person or the principal place of business of a juristic entity,
as provided in new paragraph (p) under 37 CFR 1.9 of this proposed
rule. Items 1-5 below discuss the five items specified in 5 U.S.C.
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses any
alternatives to this proposal that the Office considered under 5 U.S.C.
603(c).
1. Description of the Reasons That Action by the USPTO Is Being
Considered
The USPTO proposes to require that foreign applicants/inventors and
patent owners be represented by a registered patent practitioner, as
defined in proposed 37 CFR 1.32(a)(1). An ``applicant'' is the person
applying for a patent, and can be any inventor, joint inventor, legal
representative, person to whom the inventor has assigned, person to
whom the inventor is under an obligation to assign, or person who
otherwise shows sufficient proprietary interest in the matter who is
named as an applicant. Under this proposed rule, foreign applicants/
inventors and patent owners must be represented by a registered patent
practitioner if at least one of the parties identified as an applicant
or a patent owner has a domicile that is not located within the U.S. or
its territories. A patent practitioner as defined in proposed 37 CFR
1.32(a)(1) means a registered patent attorney or registered patent
agent under 37 CFR 11.6 or an individual given limited recognition
under Sec. 11.9(a) or (b) or Sec. 11.16. When representation by a
registered patent practitioner is required, papers such as amendments
and other replies, application data sheets, information disclosure
statements, or petitions, will not be entered unless they are signed by
a registered patent practitioner; papers which are required to be
signed by a specific party, such as the inventor's oath or declaration
under 37 CFR 1.63, are excluded. The requirement for a registered
patent practitioner is applicable to all applications types (i.e.,
utility, plant, design, etc.). This proposed rule would bring the
United States in line with most other countries that require that such
parties be represented by a licensed or registered person of that
country. Additionally, this proposed rule would increase efficiency and
enable the USPTO to more effectively use available mechanisms to
enforce compliance by all foreign applicants/inventors and patent
owners with U.S. statutory and regulatory requirements in patent
matters, and enhance the USPTO's ability to respond to false
certifications, misrepresentations, and fraud. The rule
[[Page 60597]]
is also amended to require that a patent owner who is a juristic entity
must be represented by a registered patent practitioner. The rule
previously required a juristic entity who was the applicant to be
represented by a registered patent practitioner, and has now been
expanded to make explicit a similar requirement for patent owners in
post-grant proceedings.
2. Succinct Statement of the Objectives of, and Legal Basis for, the
Proposed Rule
The USPTO undertakes this proposed rule pursuant to its authority
under 35 U.S.C. 2(b)(2), which authorizes the USPTO Director to
establish regulations, not inconsistent with law, governing the conduct
of proceedings in the Office. The policy objectives of the proposed
rule are to: (1) treat foreign applicants/inventors and patent owners
similarly to how U.S. applicants/inventors and patent owners are
treated in other countries and harmonize U.S. practice with the rest of
the world; (2) increase efficiency by reducing the extra resources the
USPTO spends to handle pro se applicants (i.e., an applicant who is
prosecuting the application without a registered patent practitioner);
(3) enable the USPTO to more effectively use available mechanisms to
enforce compliance with statutory and regulatory requirements in patent
matters; and (4) enhance the USPTO's ability to respond to false
certifications, misrepresentations, and fraud.
3. Description of and, Where Feasible, an Estimate of the Number of
Small Entities to Which the Proposed Rule Will Apply
The Small Business Administration (SBA) small business size
standards that are applicable to most analyses conducted to comply with
the RFA are set forth in 13 CFR 121.201. These regulations generally
define small businesses as those with fewer than a specified maximum
number of employees or less than a specified level of annual receipts
for the entity's industrial sector or North American Industry
Classification System (NAICS) code. As provided by the RFA, and after
consulting with the SBA, the USPTO formally adopted an alternate size
standard for the purpose of conducting an analysis or making a
certification under the RFA for patent-related regulations. See
Business Size Standard for Purposes of United States Patent and
Trademark Office Regulatory Flexibility Analysis for Patent-Related
Regulations, 71 FR 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60
(Dec. 12, 2006). The USPTO's alternate small business size standard is
SBA's previously established size standard that identifies the criteria
entities must meet to be entitled to pay reduced patent fees. See 13
CFR 121.802.
If patent applicants assert or certify entitlement for reduced
patent fees, the USPTO captures this data in its patent application
data repository (formerly the Patent Application Locating and
Monitoring (PALM) system and now called the One Patent Service Gateway
(OPSG) system), which tracks information on each patent application
submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for the USPTO is not industry specific. The
Office's definition of a small business concern for RFA purposes is a
business or other concern that: (1) meets the SBA's definition of a
``business concern or concern'' set forth in 13 CFR 121.105; and (2)
meets the size standards set forth in 13 CFR 121.802 for the purpose of
paying reduced patent fees, namely, an entity: (a) whose number of
employees, including affiliates, does not exceed 500 persons; and (b)
which has not assigned, granted, conveyed, or licensed (and is under no
obligation to do so) any rights in the invention to any person who made
it and could not be classified as an independent inventor, or to any
concern that would not qualify as a nonprofit organization or a small
business concern under this definition. See Business Size Standard for
Purposes of United States Patent and Trademark Office Regulatory
Flexibility Analysis for Patent-Related Regulations, 71 FR at 67112
(Nov. 20, 2006), 1313 Off. Gaz. Pat. Office at 63 (Dec. 12, 2006).
Thus, for the purpose of this analysis, the USPTO defines small
entities to include applicants/inventors and patent owners who pay
``small'' or ``micro'' entity fees at the USPTO.
In fiscal year (FY) 2022, the USPTO received 512,038 patent
applications.\1\ As discussed above, this proposed rule would impact
those applications from foreign applicants/inventors or patent owners
who are not represented by counsel. An applicant is considered to be a
foreign applicant/inventor or patent owner if at least one party who
was identified as an applicant or a patent owner had a domicile that
was not located within the U.S. or its territories.
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\1\ Fiscal year (FY) 2022 data is being used for this analysis
to correspond with the most current available estimates of legal
costs as published by American Intellectual Property Law Association
in its 2023 Report on the Economic Survey. Patent application data
show that filing trends in FY 2023 and FY 2024 have been consistent
with FY 2022, with filings in FY 2023 totaling 516,915 and filings
in FY 2024 totaling 527,538.
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As seen in Table 1 below, of the total 512,038 patent applications
filed in FY 2022, 215,459 (42.1%) were filed by U.S. applicants/
inventors and patent owners, and 296,579 (57.9%) were filed by foreign
applicants/inventors and patent owners.
Table 1--Filings From Foreign or U.S. Applicants as a Percentage of
Total Filings
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Percentage
Applicant FY 2022 (%)
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US............................................ 215,459 42.1
Foreign....................................... 296,579 57.9
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Total....................................... 512,038 100.0
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Table 2 below shows the number of applications that were filed
without a registered patent practitioner (i.e., pro se) and those that
were filed with a registered patent practitioner, in addition to the
entity status of the applicant(s). Of the total 296,579 filings made by
a foreign applicant/inventor or patent owner, 295,362 were represented
by a registered patent practitioner (foreign represented) and 1,217
were not represented by a registered patent practitioner (foreign pro
se).\2\ The 1,217 foreign pro se applications would be impacted by the
requirement to retain representation by a registered patent
practitioner under this proposed rule.
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\2\ An application is determined to be pro se if there are no
current attorney(s) associated with the application or if no
attorney(s) has been directly associated with the application over
the application's prosecution history.
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The USPTO anticipates that this proposed rule would not have a
substantial impact on foreign small entities. Of the total 295,362
foreign represented applications, 75,111 are considered to be small
entities for the purposes of this analysis because they paid the
``small'' or ``micro'' entity fee (foreign represented small entities),
and of the 1,217 foreign pro se applications, 1,102 are considered to
be small entities because they paid the ``small'' or ``micro'' entity
fee (foreign pro se small entities). The USPTO acknowledges that
representation status in an application is dynamic, and some number of
applicants change their status of representation after filing by either
retaining a registered patent practitioner or separating from a
registered patent practitioner and proceeding pro se. For the purposes
of this analysis, the USPTO will assume that the 1,102 applications
filed by foreign pro se small entities did not change their
[[Page 60598]]
representation status and thus would be subject to the requirement to
be represented by a registered patent practitioner. This proposed rule
is not expected to significantly impact foreign small entities, as the
vast majority are represented by a registered patent practitioner. Only
1,102 foreign pro se small entities, or 1.4% of the 76,213 total
foreign small entities filing patent applications, would be affected.
Table 2
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Total number of applications filed in FY 2022 (per OPPDA data obtained in June 2025)
Application type -----------------------------------------------------------------------------------------------
Undisc. Small Micro Total Percentage (%)
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US Pro Se............................................... 1,664 1,747 2,180 5,591 1.09 215,459
US Represented.......................................... 129,805 67,318 12,745 209,868 40.99
---------------
Foreign Pro Se.......................................... 115 490 612 1,217 .24 296,579
Foreign Represented..................................... 220,251 60,720 14,391 295,362 57.86
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Totals.............................................. 351,835 130,275 29,928 512,038 100.0
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4. Description of the reporting, recordkeeping, and other compliance
requirements of the proposed rule, including an estimate of the classes
of small entities which will be subject to the requirement and the type
of professional skills necessary for preparation of the report or
record:
The proposed rule imposes no new reporting or recordkeeping
requirements. Compliance with the rule will be enforced by requiring an
appropriate signature on papers submitted in patent matters. Any
registered patent practitioner retained by the foreign applicants/
inventors and patent owners as a result of this proposed rule would be
required to be a registered patent attorney or registered patent agent
under 37 CFR 11.6 or an individual given limited recognition under
Sec. 11.9(a) or (b) or Sec. 11.16.
5. Identification, to the extent practicable, of all relevant Federal
rules which may duplicate, overlap or conflict with the proposed rule:
This proposed rule does not duplicate, overlap, or conflict with
other Federal rules.
6. Description of any significant alternatives to the proposed rule
which accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rule on small entities:
The USPTO considered one alternative before proposing the
requirement that foreign applicants/inventors and patent owners be
represented by a registered patent practitioner, as defined in proposed
37 CFR 1.32(a)(1). A description of the proposed rule and the one
alternative follows.
Proposed Rule: Under the proposed rule, the USPTO proposes to
require that foreign applicants/inventors and patent owners be
represented by a registered patent practitioner, as defined in proposed
37 CFR 1.32(a)(1). An applicant must be represented by a registered
patent practitioner if at least one of the parties identified as the
applicant or patent owner has a domicile that is not located within the
U.S. or its territories. When representation by a registered patent
practitioner is required, papers such as amendments and other replies,
application data sheets, information disclosure statements, or
petitions, will not be entered unless they are signed by a registered
patent practitioner; papers which are required to be signed by a
specific party, such as the inventor's oath or declaration under 37 CFR
1.63, are excluded. The requirement for a registered patent
practitioner is applicable to all applications types (i.e., utility,
plant, design, etc.).
Due to the difficulty in quantifying the intangible benefits
associated with the proposed rule, the Office provides a discussion of
the qualitative benefits to patent applicants/inventors and patent
owners. The primary benefits of the proposed rule are ensuring
compliance by all foreign patent applicants/inventors and patent owners
with U.S. statutory and regulatory requirements in patent matters, and
facilitating fraud mitigation and protecting the integrity of the U.S.
patent system. The USPTO has noticed an increase in the number of false
micro entity certifications to claim a reduction in fees and other
false certification documents being filed. False certifications
unjustly diminish the monetary resources of the USPTO, and false
certifications on petitions or requests to expedite examination result
in applications being unjustly advanced out of turn. Requiring
submissions to be made by registered patent practitioners subject to
the USPTO Rules of Professional Conduct and concomitant disciplinary
sanctions imposed by the USPTO Director will make it less likely that
the submissions will be signed by an unauthorized party or contain
inaccurate or fraudulent statements, particularly with regard to any
certification of micro entity status to claim a reduction in fees and
any certification relevant to expediting the application.
The proposed rule also addresses the increasing problem of patent
application pendency. Pro se applications generally require additional
processing by the Office of Patent Application Processing because the
application papers are often not in condition for publication,
examination, or both. Additionally, pro se applications usually require
patent examiners to spend examination time on procedural matters,
thereby increasing overall patent application pendency. This proposed
rule would help allocate USPTO resources to the merits of examination
and, accordingly, decrease patent application processing times.
Requiring foreign applicants/inventors and patent owners to use
registered patent practitioners will increase efficiency, as the
applications will be in better form for examination. Thus, the proposed
rule would provide qualitative value to all applicants/inventors and
patent owners because this rule would help allocate USPTO resources to
the merits of examination and, accordingly, generally decrease
processing times for all patent applications.
The RFA requires agencies to consider the economic impact of their
regulatory proposals on small entities, specifically
[[Page 60599]]
U.S. small businesses, small governmental jurisdictions and small
organizations. This proposed rule would require all applicants/
inventors and patent owners, in which at least one party identified as
the applicant or patent owner has a foreign domicile, to be represented
by a registered patent practitioner. Although there will be some number
of U.S.-domiciled applicants/inventors and patent owners that will be
affected because at least one party identified as the applicant or
patent owner has a foreign domicile, the USPTO estimates that the
number of foreign pro se small entities impacted by this rule (1,102)
is small when compared to the 76,213 total foreign small entities that
file patent applications. The costs incurred by the 1,102 foreign pro
se small entities would vary depending on the nature of legal services
provided and complexity of the application.
---------------------------------------------------------------------------
\3\ See Am. Intellectual Prop. Law Ass'n, Report of the Economic
Survey 43 (2023).
\4\ Copy, drawing, and government fees are not included in the
rates.
\5\ The Report on the Economic Survey provides professional
rates for legal services rendered only in utility applications.
Because the professional rates in utility applications typically
represent the upper range of legal costs, these rates will be used
as a proxy to calculate the costs for legal services rendered for
all applications, including plant and design applications.
---------------------------------------------------------------------------
Tables 3, 4, and 5 below provide the estimated costs for a U.S.
patent practitioner to prosecute an application based on professional
rates as reported by the American Intellectual Property Law Association
in the 2023 Report on the Economic Survey.\3\ The professional rates
\4\ shown below are the median charges in FY 2022 for legal services
rendered for a utility application.\5\ The tables do not include
services for which legal counsel is not required (e.g., payment of
maintenance fees) or services that are not part of prosecution (such as
ex parte reexamination, novelty search, validity and infringement
opinions, and reference management). The figures in Tables 3 and 4 show
the estimated legal cost for prosecuting applications that are of
minimal complexity as well as applications that are relatively complex.
Table 3 below provides the estimated cost to impacted entities if a
U.S. patent practitioner is retained prior to filing of a non-
provisional application. These cases include applications of foreign
origin where no substantive direction is provided by the foreign
attorney, and thus the patent practitioner would be required to provide
substantive legal advice to prosecute the application, including legal
services connected with preparing, filing, and prosecuting an
application. Based on the total estimated number of applications filed
by foreign applicants/inventors and patent owners that are also
considered to be small entities, the total legal cost for non-
provisional applications to comply with this proposed rule would range
from $13,124,820 to $13,334,200 for minimal complexity applications, to
$16,430,820 to $19,395,200 for relatively complex applications.
Table 3--Cost for Legal Services by Performed U.S. Patent Practitioners
(FY 22) Patents of U.S. Origin
------------------------------------------------------------------------
Cost for relatively
Cost for minimal complex applications
Service complexity (biotech/chemical;
applications electrical/computer;
mechanical)
------------------------------------------------------------------------
Original (not divisional, $8,000 $10,000 to $12,000
continuation, or CIP) non-
provisional application on
invention..................
Application amendment/ $2,000 $3,000 to $3,500
argument...................
Issuing an allowed $750 $750
application................
Preparing and filing $360 to $550 $360 to $550
Information Disclosure
Statement (IDS), less than
50 references and more than
50 references..............
Patent Term Adjustment $400 $400
calculation................
Formalities, including $400 $400
preparing and filing formal
declarations, assignment,
and powers of attorney,
responding to pre-
examination notices and
preparing papers to make
corrections................
-------------------------------------------
Cost.................... $11,910 to $12,100 $14,910 to $17,600
Pro Se Foreign 1,102 1,102
Applicants/Inventors
and Patent Owners
(Small Entities) Non-
Provisional............
-------------------------------------------
Total Cost.......... $13,124,820 to $16,430,820 to
$13,334,200 $19,395,200
------------------------------------------------------------------------
Table 4 below provides the estimated cost to impacted entities if a
U.S. patent practitioner is retained to file a non-provisional
application of foreign origin that is in condition for filing and in
which the foreign attorney provides substantive direction. In these
cases, the U.S. patent practitioner would provide only minimal legal
services connected with the initial filing an application and the
subsequent filing of other documents. Based on the total estimated
number of applications filed by foreign applicants/inventors and patent
owners that are also considered to be small entities, the total legal
cost for a non-provisional application to comply with this proposed
rule would range from $4,336,370 to $4,545,750 for minimal complexity
applications, to $5,190,420 to $5,399,800 for relatively complex
applications.
Table 4--Cost for Legal Services Performed by U.S. Patent Practitioners
(FY 22) Patents of Foreign Origin
------------------------------------------------------------------------
Cost for relatively
Cost for minimal complex applications
Service complexity (biotech/chemical;
applications electrical/computer;
mechanical)
------------------------------------------------------------------------
Filing in USPTO, received $1,200 $1,200
ready for filing...........
[[Page 60600]]
Application amendment/ $1,225 $2,000
argument, where foreign
counsel or client provides
detailed response
instructions...............
Issuing an allowed $750 $750
application................
Preparing and filing $360 to $550 $360 to $550
Information Disclosure
Statement (IDS), less than
50 references and more than
50 references..............
Formalities, including $400 $400
preparing and filing formal
declarations, assignment,
and powers of attorney,
responding to pre-
examination notices and
preparing papers to make
corrections................
-------------------------------------------
Total Cost.............. $3,935 to $4,125 $4,710 to $4,900
Pro Se Foreign 1,102 1,102
Applicants/Inventors
and Patent Owners
(Small Entities) Non-
Provisional............
-------------------------------------------
Total Cost.......... $4,336,370 to $5,190,420 to
$4,545,750 $5,399,800
------------------------------------------------------------------------
Table 5 below provides a list of services that may be provided to
impacted entities before or during prosecution, but are dependent on
the nature of the application. The prosecution of a patent application
is highly variable and a particular application may or may not require
any of these services. If these services are provided, then the costs
below would be added to the total legal costs in Tables 3 or 4, as
applicable. The table below provides the percentage of all applications
that have utilized these services.
Table 5
----------------------------------------------------------------------------------------------------------------
Applications Percentage
Service Cost utilizing service (%)
----------------------------------------------------------------------------------------------------------------
Appeal to Board with/without oral argument................ $5,000 to $8,000 8,205 2
Preparing and filing formal drawings...................... 600 30,822 6
Preparing for and conducting examination interview........ 1,000 176,908 35
Providing a continuation recommendation (including 1,000 151,130 30
proposed claim strategy).................................
Filing previously prepared US applications as PCT 1,090 57,112 11
application in US........................................
Entering National Stage in US Receiving Office from 1,200 108,855 21
foreign Origin PCT application...........................
Provisional application................................... 3,900 to 5,000 147,275 29
----------------------------------------------------------------------------------------------------------------
As seen above, the USPTO estimates that only 1,102 (or 1.4%)
foreign pro se small entities would be impacted by this proposed rule.
This is a very small number when compared to the 76,213 total foreign
small entities that file patent applications. Although the number of
impacted small entities is not expected to be substantial, the economic
impact varies depending on the nature of legal services provided and
complexity of the application. Because prosecution of patent
applications is highly variable, the legal costs incurred by the 1,102
foreign pro se small entities would depend on whether the application
is of U.S. origin or foreign origin, with applications of U.S. origin
incurring more cost than those of foreign origin, and the level of
complexity of the application, with relatively complex applications
incurring more cost than minimally complex applications. Legal costs
would increase if any of the additional available services are utilized
before or during prosecution.
Alternative 1: The USPTO also considered the alternative to take no
action and maintain the status quo (``Alternative 1''). Alternative 1
was rejected because the USPTO has determined that the requirement that
foreign applicant/inventors and patent owners to be represented by a
registered patent practitioner is needed to accomplish the stated
objectives to increase efficiency and enable the USPTO to more
effectively use available mechanisms to enforce compliance with U.S.
statutory and regulatory requirements in patent matters, and to enhance
the USPTO's ability to respond to false certifications,
misrepresentations, and fraud.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The USPTO has complied with Executive Order 13563 (January 18,
2011). Specifically, and as discussed above, the USPTO has, to the
extent feasible and applicable: (1) reasonably determined that the
benefits of the rule justify its costs; (2) tailored the rule to impose
the least burden on society consistent with obtaining the agency's
regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches
[[Page 60601]]
that reduce burdens while maintaining flexibility and freedom of choice
for the public; and (9) ensured the objectivity of scientific and
technological information and processes.
E. Executive Order 14192 (Deregulation)
This regulation is not an Executive Order 14192 regulatory action
because it is not significant under Executive Order 12866.
F. Executive Order 13132 (Federalism)
This rulemaking pertains strictly to federal agency procedures and
does not contain policies with federalism implications sufficient to
warrant preparation of a Federalism Assessment under Executive Order
13132 (August 4, 1999).
G. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (November 6, 2000).
H. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
I. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (February 5, 1996).
J. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (April 21, 1997).
K. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (March
15, 1988).
L. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801, et seq.),
the USPTO will submit a report containing the final rule and other
required information to the United States Senate, the United States
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this rulemaking are not expected
to result in an annual effect on the economy of $100 million or more, a
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this
rulemaking is not expected to result in a ``major rule'' as defined in
5 U.S.C. 804(2).
M. Unfunded Mandates Reform Act of 1995
The changes set forth in this rulemaking do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of $100 million (as
adjusted) or more in any one year, or a Federal private sector mandate
that will result in the expenditure by the private sector of $100
million (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
N. National Environmental Policy Act of 1969
This rulemaking will not have any effect on the quality of the
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
O. National Technology Transfer and Advancement Act of 1995
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions that
involve the use of technical standards.
P. Paperwork Reduction Act of 1995
The Paperwork Reduction Act of 1995 (44 U.S.C. 3501, et seq.)
requires that the USPTO consider the impact of paperwork and other
information collection burdens imposed on the public. The collection of
information involved in this proposed rule has been reviewed and
previously approved by OMB under control number 0651-0035. The USPTO
will submit an update to the 0651-0035 information collection in the
form of a nonsubstantive change request.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
Q. E-Government Act Compliance
The USPTO is committed to compliance with the E-Government Act to
promote the use of the internet and other information technologies, to
provide increased opportunities for citizen access to Government
information and services, and for other purposes.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the preamble, the USPTO proposes to amend
37 CFR part 1 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Amend Sec. 1.9 by adding paragraph (p) to read as follows:
Sec. 1.9 Definitions.
* * * * *
(p) The term domicile as used in this chapter means the permanent
legal place of residence of a natural person or the principal place of
business of a juristic entity.
0
3. Revise Sec. 1.31 to read as follows:
Sec. 1.31 Applicant and patent owner may be represented by one or
more patent practitioners or joint inventors.
(a) An applicant for patent or patent owner may file and prosecute
the applicant's or patent owner's own case, or the applicant or patent
owner may give power of attorney so as to be represented by one or more
patent practitioners or joint inventors, except that the following
persons or entities must be represented by a patent practitioner:
[[Page 60602]]
(1) a juristic entity (e.g., organizational assignee);
(2) an applicant as defined in Sec. 1.42, in which the domicile of
at least one of the parties identified as the applicant in the
application is not located within the United States or its territories;
and
(3) a patent owner, in which the domicile of at least one of the
parties identified as the patent owner is not located within the United
States or its territories.
(b) The Office cannot aid in the selection of a patent
practitioner.
0
4. Amend Sec. 1.32 by revising paragraph (a)(1) to read as follows:
Sec. 1.32 Power of attorney.
(a) * * *
(1) Patent practitioner means a practitioner registered under Sec.
11.6 or an individual given limited recognition under Sec. 11.9(a) or
(b) or Sec. 11.16. Only these persons are permitted to represent
others before the Office in patent matters. An attorney or agent
registered under Sec. 11.6(d) may only act as a practitioner in design
patent applications or other design patent matters or design patent
proceedings.
* * * * *
0
5. Amend Sec. 1.33 by revising paragraph (b)(3) to read as follows:
Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
* * * * *
(b) * * *
(3) The applicant (Sec. 1.42) or patent owner. Unless otherwise
specified, all papers submitted on behalf of a juristic entity, an
applicant as defined in Sec. 1.42 in which the domicile of at least
one of the parties identified as the applicant is not located within
the United States or its territories, or a patent owner in which the
domicile of at least one of the parties identified as the patent owner
is not located within the United States or its territories must be
signed by a patent practitioner.
* * * * *
John A. Squires,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2025-23917 Filed 12-23-25; 8:45 am]
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