The USPTO may afford individuals limited recognition to practice in patent and/or trademark matters before the USPTO when they are not otherwise eligible for registration under the rules. This article discusses some of the most common reasons for an individual to obtain limited recognition, and practical issues to consider in applying for limited recognition.
Nonimmigrant Aliens
A common reason the Director of the Office of Enrollment and Discipline (OED) may grant limited recognition would be based upon an individual’s passage of the Registration Exam (Patent Bar), but failure to maintain U.S. Citizenship or permanent residence status. That is, non-U.S. persons are generally not eligible to obtain a registration number and therefore must seek reciprocity or limited recognition. For those who wonder whether this registration prohibition violates equal protection, the Federal Circuit opined that it does not. See Lacavera v. Dudas, Case No. 05-1204 (Fed. Cir. Feb. 6, 2006).
Notably, limited recognition for nonimmigrant aliens requires the individual to demonstrate that they are authorized to be employed or trained by a specific employer in the capacity of preparing and prosecuting patent applications. Many applicants fail to meet that goal because of complications related to their employment, a lack of adequate assurances of supervision, or issues related to the type of employment authorization granted by the U.S. Citizenship and Immigration Services.
USPTO Law School Clinic Certification Program
Law students participating in an approved clinic program may be eligible to apply for limited recognition to practice before the USPTO. These students would generally possess the technical and moral character qualifications, but have not yet completed the legal education requirements. This program is aimed to allow students to gain practical experience while providing pro bono services under the supervision of an approved Faculty Clinic Supervisor.
Disciplined Practitioners
Practitioners who are excluded, suspended, resigned from practice, or are transferred to disability inactive status are generally granted limited recognition for a period of thirty days. While not applicable to a large number of practitioners, this limited recognition affords the practitioner the ability to withdraw, notify clients, and take appropriate action after the effective date of the final order.
Exigent Circumstances
The OED Director is given broad discretion to grant limited recognition to an individual to prosecute certain patent applications because of justifiable or necessary circumstances. While not commonly granted, this provision might be used in instances when a family member of an applicant desires to help prosecute the application or applications, but who is not otherwise applying for registration to practice before the USPTO.
Working Within the Bounds of Limited Recognition
Individuals who have been granted limited recognition, especially nonimmigrant aliens and clinic participants, should be mindful that they are not considered registered practitioners. That is, their conduct must comport to the USPTO Rules of Professional Conduct, as well as their grant of limited recognition. For example, many individuals who have been granted limited recognition often call themselves patent agents and patent practitioners. While technically correct, the OED Director offers individuals a stern warning accompanying the grant of limited recognition by indicating that any statements about an individual’s status (i.e. biographical information) should indicate that the person has been granted limited recognition, rather than registration. Additionally, those granted limited recognition should carefully review any further requirements for the limited recognition, including a limitation on clients, automatic termination upon a change in employer, and other key factors.
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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