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Do foreigners need a us agent for USPTO patent prosecution
boxerballsbrendan's Avatar
brendan reen
boxerballsbrendan

Do foreigners need a US agent for USPTO patent prosecution
I would love opinions on the above query, I hired a U.S. attorney for the filing through pct but to respond to USPTO request for amendments I would have to do it myself for financial reasons, can I ??
Any opinions or thoughts gratefully received

sorry I just realised I posted in wrong section

http://www.boxerballs.com/

posted February 20, 2010 07:00 (
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vergulito's Avatar
Joaco Colmenar
vergulito

If these amendments are treated as US patent applications, you should be able to do it “Pro-se”, and would not need a practitioner. However, you would need a US address. US patent applications are ‘prosecuted’ by mail only, ansd they only mail to US addresses.

Please, verify this info, as I am not an attorney or agent. Youu could get it from the horse’s mouth at www.uspto.gov

posted February 20, 2010 10:24 (
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accountremoved's Avatar
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accountremoved

Hi Brendan,

I have papers from the USPTO and I live outside of the USA. They mail to me no problem.

Hope that helps :-)

posted February 20, 2010 11:42 (
)
vergulito's Avatar
Joaco Colmenar
vergulito

What kind of papers? We are talking about prosecution papers, that must be addressed in a timely manner to prevent abandonment. The question is: Does the PTO send “Office Actions” (the term for official, formal replies to applications and amendments) to foreign contries?

When I said: ‘verify this’, I meant with the PTO or a qualified source. I am not one. As I said, get it from the horse’s mouth.

I might be wrong, but I am sure I read it either in the USPTO site many moons ago, or in “Patent It Yourself” book by David Pressman, which BTW should be very handy to any inventor, whether or not they intend to "Patent-It-Themselves.

The link below answers most of the questions that anybody may have about patenting in a very general way. In full compliance with Murphy’s law, this link failed to specifically address the issue at hand, i.e. whether or not the PTO will mail O.A. outside the US.

Beyond Brendan’s question, and since it is a fact that “business are to be conducted in writing” whether using or not a US address, I would determine the speed and reliability of international correspondence. I come from a country that well… you never know.

Enjoy reading from the horse’s mouth.

CAVEAT: I just realize the info is obsolete. They have a chapter about the “Disclosure Document” program, which is no longer in effect. You can not fully trust the horse, I guess.

Finally, the link:

http://www.uspto.gov/web/offices/pac/doc/genera...

posted February 20, 2010 14:30 (
)
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accountremoved

Yes, prosecution papers is what I was meaning.
regardless, that is a great link to read :-) I too am not a qualified source, I can only comment on what my personal experience was.

I can’t stand patent talk, I just wanted to let Brendan know they mail to my address outside of the USA.

posted February 20, 2010 15:42 (
)
vergulito's Avatar
Joaco Colmenar
vergulito

Tania;

To prosecute your own application, you need to at least tolerate ‘patentese’. If you can’t stand it…

Let me guess… Canada? With so many treaties, Canada is in many respects practically one country with the US. And given the relatively short distance, postal rates might be very similar to domestic rates.

I haven’t worked on a regular applicationn for a long, long time. I don’t know if the examiner still sends copies of prior art references she/he finds. That was common practice way back. Say the examiner cites 10 patents. At about 7 pages per patent, that would be 70 pages. Then you need to add about at least 10 more pages between the O.A. text and the protocolary forms, that always accompany the O.A.

About 1 lb? or more? How much would it cost to send to Shangai? How would the USPTO determine the freight? Would they go to the USPS Offices to handle all the international correspondence?

I suggest that Brendan checks this out, before taking any potentially fatal to his application risks.

posted February 20, 2010 16:01 (
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accountremoved

I could get into my entire transaction and conversation with the USPTO, but I won’t because this is starting to feel silly. I agree that Brendan should find out for himself anyway. So I’ll leave it at that :-)

posted February 20, 2010 16:17 (
)
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brendan reen
boxerballsbrendan

Thanks for your opinions, jaoco and t-tee
I will have a further search, the baby and the cartoon character, discussing it, out made me laugh a little,
Cheers for your opinions and efforts.

posted February 22, 2010 07:43 (
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