Proposed Patent Application Rule Change for Foreign Filers

Right at the end of December, the United States Patent and Trademark Office (USPTO) issued a proposal for a new rule that would require foreign patent applicants and owners to have a registered patent practitioner represent them.

The big change here is that foreign inventors would no longer be allowed to represent themselves before the USPTO. Inventors representing themselves is also called pro se representation. Pro se representation is usually a bad idea, because the process of successfully prosecuting a patent application is so convoluted and technically difficult that it really helps to have a trained practitioner do that work.

I should note here that I am a trained practitioner - I'm a patent agent. I'm not an attorney, so nothing in this post is legal advice in any way. Perhaps it's just my own self-interest that's leading me to encourage inventors to work with a patent practitioner. But (as usual when I'm making a claim in an argument) the statistics support my assertion. A study back in 2012 found that pro se applicants abandoned their applications about three quarters of the time, a substantially and statistically significantly higher rate than for applicants working with a practitioner, who abandoned their applications about a third of the time. And of the pro se applicants who were successful, many of them were patent practitioners. The USPTO offers support for pro se applicants, and those programs are important, but even with that help, an inventor is likely to have a major challenge getting a patent to issue, especially with strong claims that protect the full scope of their invention.

The USPTO says that this rule change will bring the US closer to the policies of other countries. Further, the USPTO announcement also claims that this change will save them some work, which is their way of complaining about how difficult it is for them to help pro se applicants.

The impact of this change will likely be minor. Although about 58% of USPTO patent applications are by foreign entities, less than 0.25 percentage points are pro se, about 1200 in fiscal year 2022. For the total volume of patent applications that the USPTO handles, that's a pretty small amount.

If you do find yourself in that situation, though, I might be able to help. As a solo patent practitioner, I can keep costs low and offer individualized attention to my clients. If your invention is anything biological, in the food/beverage industry, a plant, forestry-related, or just general mechanical, I can probably help. And if I can't I can probably help you find someone who can. Please don't hesitate to reach out!