The U.S. Court of Appeals for the Federal Circuit held that the U.S. Patent and Trademark Office (USPTO) decision granting only limited recognition to Lacavera, a non-immigrant alien, was not arbitrary and capricious. Lacavera v. Dudas, Case No. 05-1204 (Fed. Cir. Feb. 6, 2006) (Mayer, J.).

Lacavera is a Canadian citizen who held an H-1B visa, which restricted her employment in the United States. Her visa listed her employment activity as preparing and prosecuting patent applications for Google. In 2002, Lacavera passed the USPTO registration examination and was granted limited recognition by the USPTO pursuant to regulation 37 C.F.R. § 10.9 [now 37 C.F.R. 11.9(b)]. Lacavera challenged the USPTO decision asserting she should receive the same full recognition as U.S. practitioners.

The Federal Circuit held the USPTO decision granting limited recognition was a reasonable interpretation of the regulation. Lacavera’s visa restrictions on employment were inconsistent with full recognition since she could not prepare and prosecute patent applications for any entity other than Google without prior approval by U.S. immigration authorities. The regulation did not exceed the statutory authority proscribed in 35 U.S.C. § 2(b)(2)(D) because the statute gave broad authority for the USPTO to determine if applicants for registration possessed the "necessary qualifications" to render "valuable service" to patent applicants. According to the Court, the USPTO’s interpretation of this statute through the regulation was reasonable. Lacavera asserted the USPTO decision denied her due process, but the Court found she had offered "no evidence that she was treated unequally as compared to other aliens with visa restrictions."

Practice Note

A Canadian patent agent who is a Canadian citizen, registered with the Canadian Patent Office (CPO) and employed in Canada can become registered as a U.S. patent agent and practice directly before the USPTO. Agents must merely apply to the USPTO and show that they possesses good moral character and repute. As opposed to the requirement for U.S. citizens, the Canadian practitioner is not required to take and pass the U.S. registration examination. On the other hand, a U.S. citizen who is registered to practice before the USPTO can be recognized by the CPO by merely signing up, but the U.S. practitioner cannot practice directly before the CPO. The U.S. practitioner must go through a registered Canadian patent agent to practice before the CPO.

However, if a Canadian practitioner registered before the USPTO enters the United States through a visa for gainful employment, the Canadian practitioner is no longer considered USPTO registered. He or she is then required, just as any other non-immigrant alien who enters the United States on a restricted visa, to make application for registration and take and pass the USPTO registration examination.

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