PTO’s Refusal to Register Temporary Aliens Moves Toward Supreme Court Hearing

DudasLacavera v. Dudas (on Petition for Certiorari).

Catherine Lacavera is an attorney admitted to practice in New York, Massachusetts, and before the Supreme Court of the United States.  She has litigated patent cases in Federal Courts, drafted patent applications, passed the PTO registration examination, and now is an attorney for Google in California. Unfortunately for Ms. Lacavera, she is Canadian and does not hold a green card.  (Lacavera holds a non-immigrant work visa). 

Under USPTO rules, Lacavera’s “nonimmigrant status is ‘inconsistent’ with [PTO] registration because [the nonimmigrant status] is limited in time and scope whereas registration is not so limited.”  The CAFC agreed with the PTO in denying Lacavera her full registration, and Lacavera has now petitioned the Supreme Court for a writ of certiorari.

The petition presents three questions:

 1. Does the USPTO . . . have the authority to refuse to register nonimmigrant aliens as patent practitioners solely on the basis of their immigration status, where the nonimmigrant aliens are otherwise qualified for registration and authorized by United States Citizenship and Immigration Services ("USCIS") to practice as patent practitioners in the United States?

 2. Did the Federal Circuit, in upholding a USPTO rule denying registration to nonimmigrant aliens, inappropriately apply only a "rational review" standard where it should have applied at least "heightened scrutiny," if not "strict scrutiny," to a federal agency rule that discriminates against nonimmigrant aliens without serving any special national interest?

3. Do bar admission rules, such as the state rule that is before this Court in Leclerc v. Webb and Wallace v. Calogero, and the federal rule that is the basis of this case, that deny aliens lawfully within the United States access to employment opportunities based on the duration and employment restrictions of their current visas, violate the aliens' rights to "equal protection" in the absence of any evidence that the visa restrictions relate to valid state or federal interests in ensuring competency of practitioners?

On the issue of equal protection, Lacavera argues that the CAFC “set a dangerous precedent” by denying equal protection because “the USPTO treats all nonimmigrant alien's the same by refusing to register any of them. Equal discrimination is not equal protection.”

Interestingly, because she is Canadian and a U.S. attorney, Lacavera is the perfect test case.  If she were residing in Canada, the PTO would permit her registration even without any U.S. immigration status.  Additionally, her visa specifically authorizes her to practice as a patent attorney in the U.S.

The Coalition of Service Industries has filed a brief in support of the petition — arguing that we should open our doors to legally admitted temporary residents as a bargaining chip for reciprocity.

The U.S. has for example asked many other nations not to discriminate against American lawyers who provide or wish to provide legal services in foreign countries. Because reciprocity plays a large role in trade negotiations, the USPTO rule adversely affects our legal community in the several important trade negotiations that are currently underway or planned.

The Supreme Court has expressed its interest in the case — requesting that the government file a responsive brief by November 1, 2006.

Notes:

  • Interestingly, soon after Lacavera filed her petition for certiorari, her application for permanent residence was granted.  The PTO may end up mooting this issue by granting her full registration.

Documents:

23 thoughts on “PTO’s Refusal to Register Temporary Aliens Moves Toward Supreme Court Hearing

  1. I am a postdoctoral fellow in a major research University in the Midwest and have a PhD in Cell Bio. I am very interested to transition to patent law and would like to appear for the patent bar. From the comments here and elsewhere, it appears that since I am on a temporary work visa, I would first need find employment in area of patent law(maybe as a technology specialist in a law firm or pharma) before I can take the exam. So, my question is- does anyone know how often do law firms or pharmas sponsor H1Bs for such positions? Also, would it be easier for someone in my position to try to get into tech transfer in Univ(since I assume they would be exempt from annual H1B cap)- Is my assumption correct?

  2. I am a second year graduate student with an F 1 Visa. Am i elliglible to appear in the patent bar exam or do i need to wait for my OPT(Optional Practical training) visa status.

  3. I suspect that the CAFC decision regarding Lacavera will be upheld either by denial of certiori or by a review by the Supremes.

    Rational basis review will be something that is going to be hard to beat. The bottom line is that Lacavera is not a citizen. She doesn’t have full rights that would otherwise allow her to pursue an equal protections clause case. Of course, since she isn’t a citizen, the privileges and immunities issue won’t apply. When it comes to alienage, rational basis scrutiny will surely dominate.

    The Supremes won’t want to upset the status quo by having an alien essentially rewrite employment law. It will be a political question that they will say is solely within Congress’s reach.

    Additionally, remember that since Lacavera is an immigrant, you may have the problem of adequate representation of your client. At the drop of a hat, INS can revoke Lacavera’s immigrant status (unless I’m mistaken). Then where would the client be in the patent prosecution/litigation chain of events? This would be a tantamount to a loss of rights issue on patent protection. While not on the table as one of the issues, this is a concern that the Supremes may address.

    Finally, my take is that the Supremes will not take away the discretionary review power of the CAFC. I don’t know if this is related but the ebay v. Mercexchange ruling may have an impact of the Court’s refusal to disturb the lower court’s discretionary powers (barring any outrageous or “eyebrow raising” conduct).

    In short, Lacavera has to overcome many hurdles: federal jurisdictional issues, rational basis review, immigration, etc. Quite frankly, I don’t see a Lacavera win in the “tea leaves.”

  4. Hi,
    I just read all the news on this case. I am a current 3rd year law student, an international student here in the U.S. holding an F-1 Visa. Will I be able to sit for the patent bar exam. I am otherwsise qualified since I have an Engineering degree. Having it helps to get potential job offers. Thanks.

  5. The domestic debate on the issue has an important implication in the international bilateral trade negotiations. I put a tidbit on this issue on my blog.

  6. Hi folks, I have a question. I am a foreign student in US now holding F1 visa. Am I qualified to take the patent bar exam?

    Thank you

  7. If 2.5% are non-immigrant aliens with L numbers, the number of immigrant aliens with permanent registration is potentially much larger, and we still face the restriction that we are removed from the register if we cease to maintain resident status.

    If the Supreme Court were to decide that the PTO can’t enforce immigration law, then that restriction would also have to fall. OTOH, they could make a narrower ruling that only affected limited recognition.

    At the other extreme, if they were to rule that other agencies can’t enforce immigration law by placing limits on licencing, then the biggest impact would be on drivers’ licences!

    We have recently seen Maryland legislate to strike down an MVA rule requiring aliens to prove legal status to get a drivers’ licence, almost simultanelusly with Virginia introducing a law to require the same thing. It is funny watching neighbouring states move in opposite directions simultaneously.

    Now, however, there is likely to be a federal law setting standards for ID for drivers’ licences, which may require proof of immigration status. I don’t know what stage it is at, but this case could affect it.

    I would love to know what is in the petition. I would assume that equal protection of aliens before a federal agency (rather than a state) would have to go in by the back door and rely on the right to due process, for the reasons explained in my previous post. Can anyone provide a link to the petition for cert?

  8. When I took the exam in 1978, I was not an attorney and held a green card. To be registered (and I did get full registration), I needed a registered patent attorney to sponsor my application. Had I been an attorney, I would not have. The PTO’s rules were and remain less than fully sensible. By the way, I believe that the CIPO still grants full registration to US registered agents/attorneys, but has a rule that correspondence will only go to a Canadian address, thereby limiting the ability of a non-Canadian resident to practice before the CIPO in a meaningful way.

  9. Thanks, Dennis. I took another look at the cert petition, and it says that this 2.5% figure means that about 100 people per year are affected by this particular PTO rule.

    I’m horrible at reading the tea leaves on Supreme Court cases, but I’m thinking: (1) if only 100 people are affected each year, the Supremes might be disinclined to take the case unless they have a broad principle in mind that would go beyond this particular PTO rule, but (2) the constitutional due process and equal protection arguments look like losers unless the Justices are all excited by the press that the national immigration issues have been getting lately. The cert petition all but acknowledges that it is asking the Supremes to make new Equal Protection law.

    So, I could see the Supreme Court granting cert to tell the PTO that its statutory authority doesn’t extend to enforcing the immigration laws, and maybe writing the opinion broadly enough that other agencies that do similar things might revisit their policies, but I have no idea whether that result would square with the rest of the Supreme Court’s administrative law decisions.

    I look forward to seeing what the Court decides to do with this case.

  10. The USPTO “allows” immigrants on work visas to take the exam – I did it myself – because they have a limited recognition rule (CFR 11.9). What they don’t allow is registration (once you pass). You are granted the right to practice under limited recognition, which basically means that you can only practice for the company for which your work visa was provided. A work visa generally only gives you permission to work for a single company. The PTO gives out Limited Recognition numbers (L numbers instead of R numbers) until someone gets their green card, when you can have your L number turned into an R number. One problem I note with this is that my R number makes it look as if I have been practicing for much less time than I actually have, since it took about 3 years from passing the exam to get the R number. Since L numbers are not a well-known practice of the PTO, one must be prepared to explain to potential employers this whole situation. In any case, the explanation I was given is that it prevents L-numbered persons from starting up their own practice, which their work visa does not entitle them to do. You used to have to submit a copy of your statement of limited recognition in every case you handled, but since they came out with the L-number (about a year after I passed), you can just give the L number and I think the statement isn’t needed any more.

  11. Forgive my ignorance on the question of how many people are affected by the PTO’s rules. I wonder what the actual number is. I wonder if/to what extent that information would affect the Supreme Court’s decision on granting cert.

  12. I am in a similar situation. I have now been practicing for 6 years, and each year I need to renew my limited registration because of the awful delay in the Dept. of Labor that most greencard applicants suffer.

    For the past four years my application, along with many other people’s, has been sitting at the D.O.L. My “temporary” visa is renewed each year automatically. However, becuase the “proof” that I’m able to legally reside here takes about 4 months to come through from the INS each year (which I then send to the PTO), I am for 4 months of the year without a limited registration no., and someone else has to sign for me. Its quite ridiculous that I am a state bar member, and I can defend a criminal on trial for his life in court, but I can’t file and IDS.

  13. One aspect I don’t quite understand is how Lacavera passed the PTO registration examination. I just took the exam a few weeks ago and remember the USPTO explicitly asking about my immigration status. Why did the USPTO allow her to take the exam if they won’t allow her become registered?

  14. (Apologies for rambling on!)

    I could also be affected by this case, or not, depending on how broad any eventual opinion might be, assuming it is not mooted. I am a British citizen with a green card, and have permanent registration.

    However, under current PTO rules, if I cease to reside in the US I become removed from the register. This affects me in that if I went home I would not be a foreign patent agent, but instead an ex-patent agent, which is not such a good thing to be.

    Whether that rule applies to Canadians specifically is somewhat complicated. The PTO grants reciprocity only to foreign patent agents and patent attorneys whose countries give reciprocity to the US, and notes that only Canada does so.

    This may have been true at one time (?), but according to my own enquiries although Canada keeps a register of US patent agents who pay a small fee to be listed, this confers no right to represent anyone before the CIPO, but is merely a list of US patent agents for the convenience of inventors. However, despite that it may still be possible that the USPTO would waive in a Canadian patent agent who resides in Candada, or maybe not.

    As for state bars, they cannot discriminate against immigrant aliens under In Re Griffiths, which in turn relies upon Yick Wo v Hopkins that established that resident (immigrant) aliens were persons under the 14th amendment and thus had equal protection rights against the states.

    The main additional holding of In Re Griffiths is that attorneys, although officers of the court, should not be treated in the same way as government employees, for whom discrimination on citizenship grounds is permitted, Renquist dissenting!

    Although it seems obvious that a non-immigrant alien is also a person, I beleive there is no decision that says that. Also, the _other_ equal protection clause that applies to the federal government has different wording that says citizens instead of persons (of course the 14th is supposed to extend the Bill of Rights to the States, but in some cases it is not worded the same).

    State bars are also prevented from discriminating against non-residents under New Hampshire v Perkins. That is probably not in play here, though.

    An alien seeking redress for discrimination by the federal government as opposed to the states has to fall back upon the due process clause of the 5th amendment, as we can apparently only make use of those clauses that say persons instead of citizens, which varies randomly according to the whims of the founding fathers.

    I beleive there was a case in federal court in Puerto Rico where two aliens were permitted to be registered as professional engineers (I think the wording cites the 5th and the 14th in the alternative). This seems highly relevant, but unfortunately I have lost the cite! I think it was In Re Marti or something like that, and I would be grateful if anyone could find it.

  15. This is an interesting case to me. I am a PhD student (F-1 visa Non-immigrant alien with visa upto 2009). I was wondering if I should take up IP as career and try to get patent agent certification in front of USPTO. This is not allowed to me unless my school clears it by saying it is relevant to my education or with the visa that has been granted to me to study science. If I am remembering correctly then foreign nationals are allowed to get the certification but it does not mention about the place of residence. (I am not planning to get law degree yet just the patent agent.)

  16. Crouch could post the exact wording from the reference. This would leave little room for reader discussion and produce yet another unread Patent Blog. Alternatively, Crouch could continue doing what he has successfully been doing – make postings that are interesting to read and prompt readers to debate the issues. That is why the patent community looks here for their Blog information and not other places. Don’t hate the player; hate the game. Nonetheless, if you want to let others know how more learned you are than Dennis, read the reference and post your exacting thoughts on the reference. I do this all the time and I imagine that it sends Dennis weeping the weekends away like a little cry baby.

  17. This is about the fourth time I’ve seen Crouch make a comment about what the Supreme Court is doing that betrays ignorance of Supreme Court practice.

    The Court did not “express an interest” in this case. The Court called for a response to the petition. That means that the respondent (Dudas) waived a brief in opposition and PRECISELY ONE justice actually cared enough to write “CFR” on a piece of paper. That is not the Court expressing an interest, that is one justice doing something totally costless and probative of nothing.

  18. My understanding is the same as David’s–the PTO refuses to give her registration rights that would last beyond the end of her work visa.

    Hal Wegner’s been keeping tabs on this case, and according to him it’s very similar to two Fifth Circuit cases that deal with state bar admission policies and which are also at the cert petition stage.

    I would not be surprised if the PTO decided to try to moot this. Lacavera seems to be the only person affected by this, or at least one of a tiny set of people affected by this. If the Supreme Court finds the case cert-worthy, it might be because it thinks that this is a good test case for a broader principle (rather than because it cares about the PTO’s registration practices), and might be inclined to rule broadly.

  19. My understanding is that Ms. Lacaveras is registered with the PTO, the issue is that she only has a limited registration. Thus, she can only work within the US and (if memory serves) can only work for Google, unless she changes jobs (she was previously with White & Case, there she could represent various clients, but only for White & Case). To me, the question seemed to be whether the PTO had the right to reimpose the INS’ immigration restrictions.

  20. Let me get this straight: if she never set foot in the US, should could have registered, but since she resides here she can’t? That, on its face, seems ludicrous. One might be able to imagine that the USPTO prevents all foreigners from registering, but to only prevent those foreigners residing in the US seems particularly crazy. What interest could possibly be served?

    Also – is Canada a special case or can anyone residing anywhere take the Patent Bar and obtain a reg. number (excepting places where trade is barred, e.g. Cuba, N. Korea)?

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