How should a foreign assignee designate a domestic representative for patent matters?

According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:

  1. Prepare a written document signed by the assignee.
  2. State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
  3. Submit this document to the USPTO as a separate paper from any assignment document.
  4. Clearly label the document as “Designation of Domestic Representative.”
  5. Ensure the document is signed in accordance with 37 CFR 1.33(b).

As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”

Topics: MPEP 300 - Ownership and Assignment, MPEP 302 - Recording of Assignment Documents, Patent Law, Patent Procedure
Tags: domestic representative, foreign assignee, patent assignment