概  述

Introduction

On 15 February 2019, the United States Patent and Trademark Office (USPTO ) proposes to amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the US. A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will ensure that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.

2019年2月15日，USPTO（美国专利商标局）提出一项新的提案：要求美国境内没有住所或营业场所的外国申请人，应由一名持有美国执业资格的律师代理其美国商标或专利申请业务，以减少或避免外国申请人因签名和使用声明不当等原因而导致商标失效的问题。同时，可以使USPTO更有效地利用现有机制强制外国申请人遵守商标的法定和监管要求。

主要内容

Main Contents

Requirement for Representation：The proposed requirement is similar to the requirement that currently exists in many other countries, such as Brazil, Chile, the Peoples Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, and South Africa, as well as the European Unions Intellectual Property Office. The majority of countries with a similar requirement condition the requirement on domicile. The USPTO intends to follow this practice. Moreover, requiring a qualified attorney to represent applicants, registrants, and parties whose domicile or principal place of business is not located within the U.S. or its territories is an effective tool for combating the growing problem of foreign individuals, entities, and applicants failing to comply with U.S. law.

代理要求：正如中国，巴西，智利，以色列，日本，约旦，韩国，摩洛哥和南非，以及欧盟知识产权局一样：对代理人的住所提出要求。美国专利商标局也打算遵循这种做法。更重要的是，要求美国有资质的执业律师代表这些居住地或主要营业场所不在美国境内的申请人去申请商标，这被认为是解决日益严重的外国申请人未能遵守美国法律法规的有效工具。

The applicant would be required to obtain U.S. counsel to prosecute the application. When the USPTO receives an application filed by a foreign domiciliary, with a filing basis that does not comply with the requirements of proposed, the applicant would be informed in an Office action that appointment of a qualified U.S. attorney is required. The applicant would have the usual period of six months to respond to an Office action including the requirement, and failure to comply would result in abandonment of the application. 

当USPTO收到外国人提交的申请，若申请基础不符合拟议的要求，USPTO将下发审查意见：要求申请人聘请合格的美国律师。申请人通常有6个月的时间来答复审查意见，若不按要求答复，则视为放弃申请。

Although applications based on Madrid would be subject to the requirement to appoint a qualified U.S. attorney, the USPTO is assessing its procedures for a small set of applications (2.9% of all Madrid applications in fiscal year 2017) that are submitted with all formalities and statutory requirements already satisfied, and therefore are in a condition ready for publication upon first action. Madrid applications are initially filed with the International Bureau of the World Intellectual Property Organization and subsequently transmitted to the USPTO. There is currently no provision for designating a U.S. or any other local attorney in an application submitted to the IB, and the USPTO does not expect that the IB will update its capabilities prior to the anticipated implementation of this proposed rule. Therefore, the USPTO may consider waiving the requirement to appoint a qualified U.S. practitioner prior to publication in this limited situation, until such time as the Madrid system is updated to allow for the designation of a U.S. attorney.

仅管基于马德里的申请按统一规定也要求指定一名合格的美国律师，但考虑到马德里申请最初是向世界知识产权组织国际局提交的，随后转交给美国专利商标局。目前尚未规定在提交给国际局的申请时就要指定美国律师，并且USPTO不认为国际局也能及时接受这一项新的规定。因此，美国专利商标局很可能会考虑基于马德里指定美国的申请部分放弃要求指定合格的美国律师的要求，直到马德里体系更新为允许指定美国律师为止。

Reciprocal recognition：Under this proposed rule, only registered and active foreign attorneys or agents who are in good standing before the trademark office of the country in which the attorney or agent resides and practices may be recognized for the limited purpose of representing parties located in such country, provided the trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges. The proposed rule would also require that in any trademark matter where an authorized foreign attorney or agent is representing an applicant, registrant, or party to a proceeding, a qualified U.S. attorney must also be appointed pursuant to be as the representative with whom the Office will communicate and conduct business.Currently, only Canadian attorneys and agents are reciprocally recognized

相互认可原则：该提案表示USPTO可以与各国商标局达成共识：在互许特权的前提下，允许那些声誉良好的外籍商标代理律师代理本国申请人申请美国商标。但拟议规则还要求，若是代表申请人处理商标诉讼业务，还是需指定一名合格的美国律师为代表，与官方沟通并处理相关业务。目前，只有加拿大的代理得到相应的认可，允许加拿大商标律师代理美国商标事宜。

为什么要求申请人必须指定美国律师代理申请？

Why A U.S. Licensed Attorney Is Required in Application Process?

In recent years, the USPTO has experienced a significant surge in foreign filings, with the number of applications from foreign applicants increasing as a percentage of total filings, as shown in the following table. The numbers in parentheses indicate the number of applications represented by each percentage:

近年来，USPTO的外国申请量大幅增加。如下表所示：外国申请人的申请数量占申请总量的百分比逐年增加。

Filings from foreign or U.S. applicants as a   percentage of total filings

FY15

FY16

FY17

Foreign

19% (70,853)

22% (87,706)

26% (115,402)

U.S

81% (301,098)

78% (306,281)

74% (320,885)

Data as of  12/10/2018.

The USPTO predicts that the number of foreign filings will continue to rise based on a variety of economic factors, including the strength of the U.S. economy. This growth is coupled with a significant growth in the number of filings by foreign pro se applicants in FY15 through FY17, especially as compared with filings by U.S. pro se applicants. The information shown below reflects the representation status at the time the USPTO electronic record was searched to obtain the data. Representation status may change over the course of prosecution. However, system limitations only permit the USPTO to retrieve representation status at the time a search is done.

综合各方面经济因素和美国经济实力，USPTO预估：国外申请美国商标的数量将继续增加。在15年至17年中，申请量增加的同时，国外申请人自行代理或者国外律师代理的数量不断增加，这一情况在下表中得以体现：

Filings from foreign or U.S.   applicants—Representation Status

FY15

FY16

FY17

U.S.—Pro Se

25.3% (76,140)

27.2% (83,161)

28.5% (91,593)

U.S.—Represented

74.7% (224,958)

72.8% (223,120)

71.5% (229,292)

Foreign—Pro Se

25.4% (17,967)

35.9% (31,475)

44.0% (50,742)

Foreign—Represented

74.6% (52,886)

64.1% (56,231)

56.0% (64,660)

Data as of 12/10/2018.

The requirement for representation by a qualified U.S. attorney is being proposed in response to the increasing problem of foreign trademark applicants who purportedly are pro se (i.e., one who does not retain a lawyer and appears for himself or herself) and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act (Act) and the USPTOs rules. For example, such foreign applicants file applications claiming use of a mark in commerce, but frequently support the use claim with mocked-up or digitally altered specimens that indicate the mark may not actually be in use.

由合格的美国律师代理的提案旨在妥善处理越来越多的外国商标申请人自行代理的问题，这些外国商标申请人没有聘请美国合格律师而是自行代理提交。他们提交的申请不够准确，或者违反商标法和USPTO规则。例如，这些外国申请人在提交商标注册申请时声明已在商业中使用，但经常通过制作模型或数字合成的使用证据支持该使用声明，而这种使用证据在实际商业中可能并未被使用。

The proposed requirement for representation by a qualified U.S. attorney is necessary to enforce compliance by all foreign applicants, registrants, and parties with U.S. statutory and regulatory requirements in trademark matters. It will not only aid the USPTO in its efforts to improve and preserve the integrity of the U.S. trademark register, but will also ensure that foreign applicants, registrants, and parties are assisted only by authorized practitioners who are subject to the USPTOs disciplinary rules.

由合格的美国律师代理可以强制所有外国申请人、注册人及其他各方当事人遵守美国法律法规，这不仅有助于USPTO努力改善和保护美国商标制度的完整性，还将确保外国申请人、注册人和各方当事人可以得到经USPTO认可的美国律师的专业代理。

Comments must be received by Mar. 18, 2019 to ensure consideration.

关于此提案的意见征集将截止2019年3月18日

届时，来自各方的意见和建议将纳入美国专利商标局的参考范围。

Official Notification:

官方公告如下：

https://www.federalregister.gov/documents/2019/02/15/2019-02154/requirement-of-us-licensed-attorney-for-foreign-trademark-applicants-and-registrants

We will take good care of the moving direction on the matter and inform you immediately as long as it makes progress.

我们将持续关注这个提案的进展，并及时告知大家新动态。