Non-Resident Alien Patent Attorneys and Agents are Entitled to Limited Recognition but not Full Registration

Catherine Lacavera v. Jon W. Dudas (Fed. Cir. 2006).

By Baltazar Gomez, Ph.D.

The Court of Appeals for the Federal Circuit affirmed the judgment of the District Court for the District of Columbia that the USPTO’s decision to grant Catherine Lacavera only limited recognition was consistent with the PTO’s regulations, did not exceed the statutory authority, and did not deny Lacavera equal protection.


Lacavera, a Canadian citizen and nonimmigrant alien, was authorized to work in the United States as an attorney to prepare and prosecute patent applications. Upon passing the patent examination, Lacavera was granted limited recognition because of the legal restrictions imposed by her immigration visa. After failing to convince the PTO to grant her full registration, Lacavera filed suit in the district court under the Administrative Procedure Act (5 U.S.C. §§702-706). The trial court denied Lacavera’s motion for summary judgment and granted summary judgment in favor of the PTO.


The PTO has statutory authority to regulate attorney practice under 35 U.S.C. § 2(b)(2)(D). From this general authority, the PTO formulated rules to govern the recognition of attorneys under 37 C.F.R. §§10.6, 10.7 and 10.9. (now 37 C.F.R. §§11.6, 11.7 and 11.9).  Regarding an alien, the rules state that an alien “may be registered” provided that registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States.  For nonimmigrant aliens, the PTO has interpreted the rules to dictate that nonimmigrant aliens are not registered upon passing the patent examination, but rather are entitled to “limited recognition” status that allows an alien to practice before the PTO, but confines their activities to those authorized by the United States Bureau of Citizenship and Immigration Services.


In her appeal, Lacavera contended that the PTO’s decision to deny her full registration was an abuse of discretion because it was improper to find that full registration was inconsistent with the legal restrictions of her visa. The CAFC disagreed, reasoning that the PTO’s decision to grant limited recognition is a reasonable interpretation of the rules in view of Lacavera’s visa restrictions that would be inconsistent with full registration. Lacavera also argued that the PTO exceeded the authority granted by statute by taking into account visa restrictions when determining whether or not to grant full registration. The CAFC noted that the PTO has broad statutory authority to govern the recognition and conduct of attorneys.  The CAFC further noted that although the statute is silent as to whether the PTO may consider visa restrictions, the statute states that the PTO may require applicants to show that they have the necessary qualifications. Thus, the CAFC concluded that it was reasonable for the PTO to enact rules that limit an alien’s ability to practice to those activities in which the alien may lawfully engage as being necessary qualification. As to whether Lacavera was denied equal protection, the CAFC concluded that she suffered no individual equal protection violation because Lacavera offered no evidence that she was treated unequally as compared to other aliens with visa restrictions.


Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.