Our patent attorney handles this at home. Why do we need someone in America?
Because representation before the USPTO is a separate licence from the one your attorney holds. The USPTO maintains its own register of attorneys and agents, and only people on it may represent an applicant before the Office.
This is a filing requirement, not a knowledge requirement. Your existing attorney can and should stay involved in strategy. What they cannot do is sign the reply into the USPTO record on your behalf unless they are registered there.
The representation requirement
The requirement applies by reference to the domicile of the applicant, not the nationality of the inventor and not the location of the invention. A company headquartered outside the United States is within it even if the inventors live in California; a US-domiciled applicant is outside it even if the inventor is a foreign national.
There is a narrow provision under which foreign patent practitioners can be recognised in limited circumstances, but it is not a general route and it does not cover ordinary prosecution of a US application. If your application is being prosecuted from outside the United States without a registered US representative, that is worth resolving before the next deadline rather than after it.
The applicant’s domicile, not the inventor’s nationality
An attorney or agent on the USPTO register
Read the document, understand it, calculate the deadline
From the mailing date printed on the action, in US Eastern time
USPTO electronic filing operates on Eastern time, which can cost a day
The time-zone problem nobody mentions
Deadlines are computed in United States Eastern time. If you are in Central Europe, the last day of your reply period ends in the small hours of the following morning your time; if you are in East Asia, the effective working window closes a day earlier than the printed date suggests. Treat the printed date as the last date on which a US-based representative can file during their working day, and plan backwards from there.
A sensible order of operations
Establish the real deadline
From the mailing date and the type of action, with the extension dates and the six-month statutory limit. Do this before anything else, because everything else depends on it.
Understand what the action actually says
Which grounds of rejection, which claims, which references. This does not require US counsel and it makes every later conversation shorter.
Confirm your representation position
Whether a registered US practitioner is already of record for the application, and if not, what has to happen for one to file.
Decide with your existing advisers
Your home attorney knows the portfolio and the commercial context. The US practitioner handles US procedure. Both matter.
Establish the real deadline
From the mailing date and the type of action, with the extension dates and the six-month statutory limit. Do this before anything else, because everything else depends on it.
Understand what the action actually says
Which grounds of rejection, which claims, which references. This does not require US counsel and it makes every later conversation shorter.
Confirm your representation position
Whether a registered US practitioner is already of record for the application, and if not, what has to happen for one to file.
Decide with your existing advisers
Your home attorney knows the portfolio and the commercial context. The US practitioner handles US procedure. Both matter.
What we do and do not do here
We read and explain the document and calculate the deadline. We are not a law firm and we do not represent anyone before the USPTO. Where a filing is needed we connect you with a registered US practitioner who takes professional responsibility for it.