The How To Patent An Invention 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 would otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Before America Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business will not be located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who is a dynamic member in good standing in the bar from 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 by way of a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants usually are not subjected to invalidation for reasons like improper signatures and use claims and encourage the USPTO to better 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 numerous licensed US attorneys who can continue to aid in expanding protection of our own client’s trade marks into the USA . No changes to those arrangements will be necessary and we remain accessible to facilitate US trade mark applications on the part of our local clients.
U . S . designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. This transformation will affect self-filers into the USA – our current practice of engaging Inventhelp Success to respond to Office Actions on behalf of our local clients is not going to change.
A large change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will not be able to rely on the commencement of infringement proceedings being a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment for the Trade Marks Act brings consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the sole act to permit this defense. We expect that removing this section of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to become interpreted similar to the Inventhelp Wiki. Thus, we feel it is likely that in the event that infringement proceedings are brought against a party who vafnjl ultimately found never to be infringing or even the trade mark is located to be invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Additionally, a brand new provision will 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 in the event that a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat as well as the flagrancy in the threat, in deciding whether additional damages should be awarded from the trade mark owner.