Five Important Decisions for Foreign Companies When Selecting U.S.-Based Intellectual Property Counsel

Choosing U.S. IP Counsel Is a Strategic Decision, Not a Formality

Foreign companies entering the U.S. market or protecting brands, patents, and copyrights here face a legal system that differs sharply from their home jurisdiction—in procedure, in cost structure, and increasingly, in who is even permitted to represent them before the U.S. Patent and Trademark Office and the U.S. Copyright Office. Recent rule changes have raised the stakes further: as of 2026, U.S.-licensed counsel is now required not just for foreign trademark filings, but for most foreign-domiciled patent filings as well. Selecting the right U.S. IP counsel early, and for the right reasons, can determine whether a company's rights are properly secured and whether it can actually enforce them if infringement occurs. Here are five decisions foreign companies should get right from the start.

1. Confirm Your Counsel Satisfies Mandatory U.S. Representation Rules

For trademarks, USPTO rules effective August 3, 2019 (37 C.F.R. § 2.11) require every foreign-domiciled trademark applicant, registrant, and party to a Trademark Trial and Appeal Board proceeding to be represented by an attorney licensed to practice law in the United States—a foreign attorney or agent cannot file or prosecute the application alone. Patents now carry a parallel requirement: a USPTO rule effective July 20, 2026 requires foreign-domiciled patent applicants and patent owners to engage USPTO-registered U.S. patent counsel for most new filings, post-issuance submissions, and corrective filings (ministerial actions like maintenance fee payments remain exempt). "Foreign-domiciled" turns on principal place of business or permanent residence, not on citizenship or where a company is incorporated. Before engaging counsel, confirm the attorney is actively licensed and registered to practice before the relevant office—this is no longer optional paperwork, it is a jurisdictional prerequisite to filing at all.

2. Look for Real Enforcement and Litigation Reach, Not Just Filing Experience

Many foreign companies select U.S. counsel based solely on trademark or patent prosecution experience—preparing and filing applications. But registration is only half the picture. If a competitor infringes, the company needs counsel who can actually litigate in U.S. federal court: filing suit, seeking injunctive relief, and navigating discovery, a process far more extensive than in most civil-law jurisdictions abroad. Ask prospective counsel directly about their federal court litigation experience, not just their USPTO or Copyright Office docket. A firm skilled at prosecution but unfamiliar with litigation strategy may leave a company unable to respond quickly when enforcement actually becomes necessary.

3. Understand That Registering or Enforcing U.S. IP Rights Can Create Jurisdiction

Foreign companies sometimes assume that having no U.S. office or employees shields them from being sued in U.S. courts. That assumption can be wrong. Courts have found that a foreign company's own act of registering a U.S. trademark, or sending cease-and-desist letters to U.S.-based parties to enforce its rights, can itself support personal jurisdiction in U.S. federal court—meaning the very steps taken to protect IP can expose the company to litigation here. A competent and diligent U.S. counsel will walk through this risk before enforcement letters go out or litigation begins, and will structure enforcement strategy (where to file, what to say in a demand letter, whether to use a U.S. subsidiary) with jurisdictional exposure in mind from the start, not as an afterthought once a countersuit is filed.

4. Confirm Fluency with Cross-Border Filing Mechanisms

Most foreign companies entering the U.S. IP system are not starting from zero—they typically already hold rights at home or under an international filing system, and want to extend priority into the United States correctly. Effective counsel should be well versed in claiming priority under the Paris Convention (generally six months for trademarks, twelve months for patents, from the first foreign filing), in the Madrid Protocol process for extending international trademark registrations into the U.S., and in the PCT national-phase entry process for patents. Mistakes here, including missed priority deadlines, improperly claimed priority documents, or mismatched goods and services descriptions between the home filing and the U.S. filing, can permanently compromise a company's filing date or scope of protection, so this is not an area to leave to a firm without a genuine cross-border filing practice.

5. Set Up Communication and Fee Structures Built for a Cross-Border Relationship

Time zone differences, language, and unfamiliar billing conventions can quietly undermine an otherwise sound legal strategy. Before engaging counsel, foreign companies should establish a single, consistent point of contact rather than being routed through multiple attorneys for each matter, agree on realistic response-time expectations across time zones, and get a clear, written explanation of fee structures. For instance, flat fees for standard filings, hourly rates for litigation or contested proceedings, and estimated total costs for multi-stage matters like trademark prosecution through registration or a PCT national-phase filing. Clear expectations up front prevent the two most common cross-border friction points: deadlines missed because instructions were not confirmed in time, and unexpected invoices that were never adequately explained.

Get U.S. IP Counsel That Understands Cross-Border Practice

As U.S. representation requirements tighten for both trademarks and patents, foreign companies have less room than ever to treat U.S. counsel as an afterthought. The right firm will confirm it meets mandatory representation rules, bring genuine litigation capability, understand jurisdictional risk before enforcement action is taken, navigate international filing mechanisms fluently, and communicate clearly across borders from day one.

If your company is evaluating U.S. intellectual property counsel or needs help protecting and enforcing trademarks, patents, or copyrights in the United States, contact us today at RThornburg@AllenDyer.com.