The Inventhelp Pittsburgh 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed 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 also the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be a dynamic member in good standing from the bar from the highest court of the state within 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 inside the public that U.S. registrations that issue to foreign applicants usually are not subject to invalidation for reasons such as improper signatures and utilize claims and encourage 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 several licensed US attorneys that will still help with expanding protection of our client’s trade marks into the usa. No changes to these arrangements is going to be necessary and we remain accessible to facilitate US trade mark applications on the part of our local clients.
United States Of America designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed through to acceptance at the first instance so that a US Attorney will not need to be appointed in this instance. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into america – our current practice of engaging Innovation to answer Office Actions for our local clients will never change.
A big change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able to 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 can soon not be possible.
This amendment for the Trade Marks Act will take consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the sole act to enable this defence. We expect that removing this portion of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to become interpreted just like the Inventhelp Inventions Store. Thus, we believe it is likely that in the event that infringement proceedings are brought against a party who vafnjl ultimately found to not be infringing or even the trade mark is found to become invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
Furthermore, a brand new provision is going to 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. The legal court will consider a number of factors, such as the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and also the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.