As we noted in a prior post, the USPTO has gone on record allowing U.S. practitioners to partner with foreign attorneys by way of ownership of law firms, without violating the USPTO Rules of Professional Conduct. However, practitioners continue to be surprised when they are told that practitioner relationships with foreign associates and agents outside of their law firm may not be appropriate or, worse yet, could violate the USPTO Rules of Professional Conduct.
Prior to forming a relationship with a third party (whether foreign or domestic), especially a non-practitioner, the practitioner must ensure that all parties to the arrangement understand who, exactly, is the “client.” Additionally, practitioners must ensure that their independent professional judgment is not compromised due to potential or perceived conflicts of interest.
Practitioners also should be mindful that their clients understand that they are, in fact, the practitioner’s clients. Practitioners have a duty to communicate with their clients, of course, and there is no exception for foreign clients. But for language, cultural and historic purposes, foreign associates often are instrumental in ensuring that the patent or trademark applicants or owners—the “clients”—are informed about material facts relevant to the relations.
With the advent of the U.S. Counsel Rule, which requires trademark applicants and registrants not domiciled in the U.S. to be represented by practitioner who is a licensed attorney in the U.S., many practitioners have been flooded with solicitations to work with foreign associates. This is likely due to the requirements for Amazon Brand Registry, along with the U.S. Counsel rule, resulting in the need to seek for trademark protection in order to become an Amazon seller. While some foreign associates may be experienced law firms, others may be something other than a typical law firm. Whether they are foreign lawyers or non-lawyer agents and intermediaries, they may be unfamiliar with the USPTO’s regulatory structure. As such, practitioners should vet these third parties and work to confirm if they are a good fit, fully understand each other’s roles, and that the “end” client is on board with the relationship.
Communication with Clients
In most situations, the IP practitioner communicates directly with their “end” client—the applicant or owner of intellectual property rights. For example, when a practitioner receives a referral from a friend, the practitioner will not ordinarily funnel all communications through the friend. Ideally, we should all be able to speak to our clients directly. But international IP protection frequently does not involve direct client-to-practitioner communications. Whether because of language issues, cultural differences, or simply client choice, many foreign consumers of U.S. IP services—particularly in the patent and trademark prosecution arena—work through some form of local correspondent who serves as an intermediary between themselves and their U.S. attorneys.
In the 1980’s, the USPTO published a notice in the Official Gazette confirming that U.S. counsel could send and receive instructions, and otherwise communicate with the client through a foreign associate—something that otherwise could have been seen as violative of a practitioner’s duties. The USPTO’s notice described relationships with bona fide corporate liaisons or foreign agents who convey instructions. The notice stated that: “the practitioner may rely upon instructions of, and accept compensation from, the corporate liaison or the foreign agent as to the action to be taken in a proceeding before the Office so long as the practitioner is aware that the client has consented to have instructions conveyed through the liaison or agent.” See 1086 OG 457 (Jan. 12, 1988). The notice went on to suggest that the practitioner could secure written authorization from the client to ensure that the practitioner is permitted to accept instructions from the third party.
Practitioners should still be mindful that, even with written authorization, the practitioner must exercise their own independent judgment. Furthermore, practitioners must conduct a reasonable inquiry before filing a document in the USPTO. While intermediaries are helpful in conveying client wishes and facilitating the legal services, practitioners remain responsible for whatever filings they submit. Accordingly, “blind reliance” on the work product of others could lead to unexpectedly bad consequences for a U.S. attorney.
Various USPTO regulations, as well as federal law, govern the responsibility of practitioners and applicants regarding submissions to the USPTO. See, e.g., 18 U.S.C. § 1001; 37 CFR §§ 11.18 and 11.303. Therefore, when a practitioner files a new patent or trademark application, or responds to an Office Action issued by the USPTO, the practitioner may be certifying that the submissions are true, or on information and belief are true—and that representations were formed after an inquiry reasonable under the circumstances. For example, practitioners should be mindful that, in the case of a trademark application, the client has an understanding regarding the use in commerce and specimen requirements. In other words, accepting information from a foreign agent without even a cursory examination of the representations could violate the USPTO Rules of Professional Conduct.
Further to the conversation regarding filings, above, practitioners should be mindful of their obligations regarding signatures. Succinctly stated, only the named signatory should enter their electronic signature into any USPTO form. See 37 CFR § 11.18(a) (“…except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.”). In other words, whether you are submitting an information disclosure statement in a patent application, or a statement of use in a trademark application, the practitioner’s name that appears on the document should personally enter their own signature—not their colleague, paralegal, or legal assistant. Very recently, the OED suspended a practitioner for, inter alia, allowing an agency to sign his name on numerous trademark filings. See In re Lou, Proceeding No. D2021-04 (May 12, 2021).
To the extent the practitioner requires the inventor or applicant (or an officer of the same) to sign a filing, the practitioner should prepare safeguards to ensure the third party does not sign on the client’s behalf. Moreover, having the inventor or applicant directly sign the document does not negate any obligations of the practitioner to verify facts under 37 CFR § 11.18.
While working with foreign agents can seem daunting under the USPTO’s regulatory structure, it can easily become compliant with a few changes to a practitioner’s procedures. Most importantly, if a foreign agent expresses frustration or a desire to not allow you to comport your conduct to the USPTO Rules of Professional Conduct, it is likely time to reevaluate any affiliation with them.