The Inventhelp Innovation News recently proposed changes which will force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers. The proposed changes, published by means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the USA Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of work is not located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer that is a dynamic member in good standing from the bar in the highest court of a state within the U.S. (like the District of Columbia as well as any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons including improper signatures and utilize claims and allow the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
At Michael Buck IP, we already work closely with a number of licensed US attorneys who will carry on and aid in expanding protection of our client’s trade marks into the United States . No changes to those arrangements will likely be necessary and we remain available to facilitate US trade mark applications for our local clients.
U . S . designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance in order that a US Attorney do not need to be appointed in this situation. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging How To Patent An Idea to respond to Office Actions for our local clients is not going to change.
A large change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of rely on the commencement of infringement proceedings as being a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this may soon not be possible.
This amendment for the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the sole act to allow this defense. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to become interpreted just like the Invention Companies. Thus, we feel chances are that in case infringement proceedings are brought against an event who vafnjl ultimately found to not be infringing or perhaps the trade mark can be found to become invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.
In addition, a new provision is going to be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages when a person is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, like the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.