The USPTO recently proposed changes which may 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 way of a Notice of New Invention Ideas on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging a certified US attorney.
The NPR Summary reads: The United States 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 america Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel that is a dynamic member in good standing in the bar of the highest court of a state inside the U.S. (like the District of Columbia and any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are certainly not susceptible to invalidation for reasons including improper signatures and use claims and enable 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 that will continue to help with expanding protection of our client’s trade marks into america. No changes to such arrangements is going to be necessary and we remain offered to facilitate US trade mark applications on behalf of our local clients.
United States Of America designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed to acceptance in the first instance to ensure that a US Attorney will not need to be appointed in this instance. Office Actions must be responded to by How Do You Get A Patent. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will never change.
A big change is defined ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of rely on the commencement of infringement proceedings as being a defence 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 can soon no longer be possible.
This amendment to the Trade Marks Act brings consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only act to enable this defence. We expect that the removal of this section of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to be interpreted like the Patents Act. Thus, we feel it is likely that in the event that infringement proceedings are brought against a party afhbnt is ultimately found never to be infringing or the trade mark is found to become invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
In addition, a new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the ability to award additional damages in case a person is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, like the conduct of the trade mark owner after making the threat, any benefit derived by the Inventhelp Invention News from your threat as well as the flagrancy of the threat, in deciding whether additional damages should be awarded against the trade mark owner.