The USPTO recently proposed changes which would 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 through a Notice of How To Patent An Idea With Inventhelp on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging an authorized US attorney.

The NPR Summary reads: America 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 your proceeding whose domicile or principal workplace is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an energetic member in good standing in the bar in the highest court of any state in the U.S. (like the District of Columbia and any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons including improper signatures and make use of 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 can continue to assist with expanding protection in our client’s trade marks into america. No changes to such arrangements is going to be necessary so we remain accessible to facilitate US trade mark applications on the part of our local clients.

United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated the 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 Inventhelp Headquarters. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients will never change.

A large change is defined to come 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 defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.

This amendment for the Trade Marks Act will take 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 allow this defence. We expect that the removal of this section of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to become interpreted like the Patents Act. Thus, we know chances are that in the event infringement proceedings are brought against a party afhbnt is ultimately found never to be infringing or even the trade mark is found to be invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

Furthermore, a brand new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when an individual is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the Invent Help Inventors from the threat and also the flagrancy in the threat, in deciding whether additional damages should be awarded up against the trade mark owner.

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