By Joshua Goldberg, Co-Managing Partner 

The previously announced U.S. Patent & Tardemark Rule requiring patent applicants,
assignees, and owners who are not domiciled in the U.S. to be represented by a USPTO
registered patent attorney or agent entered into force on July 20, 2026. This seems
straightforward enough. The two weeks’ worth of data we have from the USPTO since then,
though, tells something of a different story.

Specifically, last week we started receiving “Informational Notices” from the USPTO in certain
applications we filed on behalf of non-US Applicants indicating “documents submitted in this
patent application must be signed by a patent practitioner”. No reason was given as to why this
notice was sent, nor whether a reply had to be submitted.

That gap matters.

It has caused confusion.

A great deal of confusion.

Both for us and our clients.

For us, without any guidance from the USPTO, we do not know:

  • If a Response to these notifications is necessary to avoid application
    abandonment.
  • Whether filed documents were not properly received by the USPTO.
  • Why we received the notice in the first place.
  • How any unresolved issues could be addressed.
  • The deadline for doing so

For our clients, they thought they were doing everything right by hiring us, a licensed U.S.
patent law firm, to make their U.S. patent application filing. Receipt of these notices caused a
great deal of concern and confusion, despite our assurances, with no further guidance from the
USPTO.

As is often true in patent prosecution, an administrative issue can quickly become a rights issue.
While this might seem innocuous on its face, it was entirely foreseeable that submitting no reply
could result in application abandonment, and a loss of rights.

The good news is that we have since started receiving follow-up “Notices of Inadvertent
Informational Notices” indicating no reply was needed and these informational notices would no
longer be sent.

So, if you received one of these notices, don’t panic! And if not, consider yourself among the
lucky ones! Either way, I am available to answer any remaining concerns you have.

Stay tuned for the next surprise USPTO update!