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PTO May Limit Recognition of Aliens Practicing Before It

February 06, 2006
McAnulty, Timothy P.

Decision icon Decision

Last Month at the Federal Circuit - March 2006

Judges: Newman, Mayer (author), Gajarsa

In Lacavera v. Dudas, No. 05-1204 (Fed. Cir. Feb. 6, 2006), the Federal Circuit affirmed the district court’s grant of SJ in favor of the PTO and denial of SJ for Lacavera regarding the PTO’s decision to grant Lacavera limited recognition to practice before the PTO.

Lacavera is a Canadian citizen and nonimmigrant alien who began working in the United States as an attorney in September 2001 pursuant to a one-year visa permittingher to prepare and prosecute applications for a law firm. Lacavera passed the patent examination in April 2002 and was granted limited recognition by the PTO because of the legal restrictions imposed by her visa. Lacavera timely extended her visa and changed employers. Her visa listed preparation and prosecution of patent applications for a single company as her sole employable activity. After the PTO denied Lacavera’s challenge to its grant of only limited recognition, she filed suit, asserting that (1) the PTO’s decision was inconsistent with its regulations governing recognition; (2) the PTO’s regulations exceeded the authority of its enabling statute; and (3) the PTO’s decision denied her equal protection. The district court denied Lacavera’s motion for SJ and granted SJ in favor of the PTO.

On appeal, the Federal Circuit held that the PTO’s grant of limited recognition was not an abuse of discretion because granting full recognition would have given Lacavera approval to do work that she could not lawfully engage in under the conditions of her visa. The Court noted that the scope of review for claims of abuse of discretion is narrow and that the Court is not to substitute its judgment for that of an agency. In this case, the Court held that the PTO correctly applied 37 C.F.R. §§ 10.6(a) and 10.9(b) and the General Requirements Bulletin.

With regard to Lacavera’s claim that the PTO exceeded its statutory authority in considering visa restrictions when determining whether to grant full recognition, the Federal Circuit noted that the PTO has broad authority to govern the recognition of attorneys pursuant to its enabling statute and the statute is silent regarding the consideration of visa restrictions and determining grants of recognition. The statute does authorize the PTO to require applicants to show that they possess the necessary qualifications to render applicants valuable service. Thus, the Federal Circuit held that it was reasonable for the PTO to consider legal authority, e.g., visa restrictions limiting an alien’s lawful employment, when determining if applicants have shown that they possess the necessary qualifications to render applicants valuable service.

With regard to Lacavera’s equal protection claim, the Federal Circuit applied the rational review standard and noted that Lacavera presented no evidence that she was unequally treated as compared to other aliens with visa restrictions. Additionally, because the regulations are rationally related to a legitimate government interest, minimizing public harm associated with unauthorized practice before the PTO, the Federal Circuit concluded that the regulations do not violate the equal protection clause and are, therefore, valid.

Accordingly, the Federal Circuit affirmed the judgment of the district court.