The USPTO recently suggested 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 through a Notice of Inventhelp Corporate Headquarters 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 and the rules regarding Representation of Others Before the usa Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney who is an energetic member in good standing from the bar of the highest court of the state within the U.S. (including the District of Columbia and then any Commonwealth or territory in 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 in the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and use 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 numerous licensed US attorneys that will still help with expanding protection of our own client’s trade marks into america. No changes to those arrangements is going to be necessary and that we remain available to facilitate US trade mark applications for our local clients.
U . S . designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance in order that a US Attorney will not need to be appointed in this instance. Office Actions must be responded to by Inventhelp Phone Number. This transformation will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients is not going to change.
A large change is set to come 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 will soon no longer be possible.
This amendment for the Trade Marks Act will take consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the only real act to allow this defence. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we believe chances are that in case infringement proceedings are brought against a celebration afhbnt is ultimately found to not be infringing or even the trade mark can be found to become invalid, the trade mark owner will be deemed to possess made unjustified or groundless threats.
Additionally, a new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages in case an individual is deemed to possess made unjustified threats of proceedings for infringement. The court will consider a number of factors, such as the conduct of the trade mark owner after making the threat, any benefit derived through the What To Do With An Invention Idea through the threat and also the flagrancy of the threat, in deciding whether additional damages have to be awarded against the trade mark owner.