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Visa Restrictions Limit Authorization To Practice Before Patent And Trademark Office

Feb.21.2006

There is no abuse of discretion in a Patent and Trademark Office denial of full registration to practice before the PTO to a nonimmigrant foreign individual, as full registration would have authorized that individual to do work in which she could not lawfully engage and would have been inconsistent with the terms of her visa, a Federal Circuit panel concludes in Catherine Lacavera v. Jon W. Dudas (No. 05-1204; February 6, 2006).

Lacavera, a Canadian citizen and nonimmigrant alien, began working in the United States as an attorney pursuant to a one year visa which permitted her only to prepare and prosecute patent applications at a New York law firm. Lacavera then successfully passed the patent bar examination but, because of legal restrictions imposed by her visa, was granted only limited recognition to practice before the PTO. Lacavera then challenged the PTO's decision to deny her full registration, initially before the PTO General Counsel and subsequently by filing suit in the United States District Court for the District of Columbia under the Administrative Procedure Act. Following denial of Lacavera's motion for summary judgment and grant of summary judgment in favor of the PTO, Lacavera appeals.

The CAFC panel affirms. 35 U.S.C. § 2(b)(2), the statute providing the PTO with authority to govern the conduct of proceedings before it and to govern the recognition and conduct of attorneys, is silent as to whether the PTO may consider visa restrictions in determining whether or not to grant recognition. However, the statute states that the PTO may require applicants to show that they are “possessed of the necessary qualifications to render to applicants” valuable service. It was reasonable for the PTO to enact regulations that limit an alien's ability to practice before it to those activities in which the alien may lawfully engage, and the PTO did not exceed its statutory authority in promulgating the regulations in question.

[http://www.fedcir.gov/opinions/05-1204.pdf]

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