Effective July 20, 2026, foreign-domiciled patent applicants and patent owners must be represented by a registered patent practitioner in patent matters before the United States Patent and Trademark Office (USPTO). The change is particularly important for foreign applicants who previously handled their own U.S. patent prosecution.
The USPTO’s new U.S. Counsel Rule applies to submissions made on or after July 20, 2026. For foreign applicants with pending U.S. applications, the key point is that the rule can apply even if the application itself was filed before that date.
Does the Rule Apply to Applications Filed Before July 20, 2026?
Yes. The requirement applies to documents submitted on or after the effective date, regardless of when the underlying application was filed.
A foreign applicant who previously prosecuted an application without a registered practitioner therefore cannot assume that the earlier filing date permits continued self-representation.
The USPTO has also clarified that an existing application does not automatically become abandoned merely because no registered practitioner is currently associated with it. However, where the rule applies, a registered practitioner is required for future submissions, including replies, amendments, Information Disclosure Statements (IDSs), issue-fee transmittals, responses to notices, and other submissions.
What If the USPTO Sends a Notice of Missing Parts?
The USPTO may issue a Notice of Missing Parts when applicable filing requirements have not been satisfied. Its U.S. Counsel Rule FAQ specifically addresses a situation in which such a notice indicates that an Application Data Sheet (ADS) was not properly signed.
A foreign applicant receiving such a notice should therefore determine whether the deficiency involves the new representation requirement, rather than simply resubmitting the document in the same manner.
Who Is Subject to the Requirement?
The rule concerns the domicile of the applicant of record, not simply whether an application includes a foreign inventor.
The USPTO instructs its personnel to identify the applicant from the most recent filing receipt. If any one of the parties identified as the applicant is foreign domiciled, representation by a registered practitioner is required.
For example, if several joint inventors are identified as applicants and one is foreign domiciled, the requirement applies.
What Happens If a Submission Is Not Properly Signed?
Where the representation requirement applies, prosecution documents must be signed by a registered practitioner.
The USPTO memorandum identifies several consequences:
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- an improperly signed amendment or reply will not be entered;
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- an improperly signed IDS should not be considered; and
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- an improperly signed ADS is treated as a transmittal letter.
For foreign applicants who previously handled their own prosecution, this makes it important to address representation before the next USPTO deadline arises.
Can a Foreign Applicant Continue Conducting Examiner Interviews?
A foreign applicant subject to the rule cannot simply continue handling examiner interviews independently while using a practitioner only for written submissions.
Where the representation requirement applies, an examiner interview must include a registered practitioner. The USPTO states that this also applies to an interview involving authorization of an examiner’s amendment.
What If the USPTO’s Foreign-Domicile Determination Is Incorrect?
An applicant who believes the USPTO has incorrectly determined that the applicant is foreign domiciled may respond to that determination. Thus, receiving a notice based on foreign domicile does not necessarily mean the USPTO’s determination must simply be accepted if the applicant believes it is incorrect. The applicant may be able to traverse a domicile determination.
Is a Power of Attorney Required?
Not necessarily.
The USPTO distinguishes between the requirement to be represented by a registered practitioner and the separate question of whether a Power of Attorney must be filed. Its implementation memorandum specifically notes that required representation does not itself make submission of a Power of Attorney mandatory and refers to practice under 37 CFR 1.34. Certain actions, however, may require a Power of Attorney or may not be available solely through representation under 37 CFR 1.34, depending on the particular procedural posture and action being taken.
Does the Rule Affect Maintenance Fee Payments?
The rule does not create a new representation requirement for maintenance fee payments.
The USPTO states that it will not consider a patent owner’s domicile when accepting maintenance fee payments. This is an important exception for foreign owners of already-issued U.S. patents.
What Should Foreign Applicants Do?
The most significant change is for foreign applicants who previously handled some or all of their U.S. patent prosecution themselves.
If such an applicant has a pending U.S. application, the fact that it was filed before July 20, 2026 does not exempt future prosecution activity from the new requirement. Representation should therefore be addressed before an upcoming Office Action response, IDS, USPTO notice response, examiner interview, or other prosecution event.
Mattis IP Can Assist with U.S. Patent Prosecution
If you have a pending U.S. patent application affected by the new representation requirement or have received a USPTO notice concerning representation, please contact Mattis IP to discuss how we may assist with your U.S. patent matter.
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This article provides general information regarding USPTO patent practice and is not legal advice.
