Liberalized foreign filing requirement is deceptive

The US Patent and Trademark Office has liberalized its rule on the designation of a domestic representative by a party who is not domiciled in the United States. This change is meant to comply with the electronic filing provisions of the recently adopted Technical Corrections in Trademark Law Act.

Under the old rule, any trademark application filed by a non-US company had to designate a domestic representative upon whom service of process could be made. Under the new rule, the designation of a domestic representative is no longer mandatory. Thus, a foreign company may now file electronically without designating a US representative.

However, there are some inherent dangers in following this practice. In a case where no US domestic representative has been named, notices or process concerning any proceedings may be served on the director of the PTO.

Many US practitioners have expressed concern about this change. Some practitioners are of the opinion that the PTO is not the most efficient or reliable representative, and many have experienced situations where their own domestic client's documents have been lost, misplaced for lengthy periods of time or contained errors created by the PTO. For these reasons, the continued appointment of a domestic representative in the United States for all new trademark filings is strongly recommended.

Robert Lyon, Holland & Knight LLP, Los Angeles