The USPTO recently suggested 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 by way of a Notice of Invent Help 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 Usa Patent and Trademark Office (USPTO or Office) proposes to amend the principles 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 a proceeding whose domicile or principal place of business is not really located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an active member in good standing in the bar of the highest court of any state in the U.S. (including the District of Columbia as well as 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 within the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and utilize 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 who will still help with expanding protection in our client’s trade marks into america. No changes to such arrangements is going to be necessary and that we remain offered 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 anticipated that this USPTO will review procedures for designations which proceed through to acceptance at the first instance to ensure that a US Attorney need not be appointed in this situation. Office Actions will need to be responded to by How To Patent A Product Idea. This change 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 ahead into force for Australian trade mark owners, who, from 25 February 2019, will not 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 the cross-claim of groundless or unjustified threats. However, this may 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 also the Trade Mark Act, which up to now, was the only act to permit this defence. We expect that the removal of this portion of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to become interpreted just like the Patents Act. Thus, we feel chances are that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found never to be infringing or even the trade mark is located to get invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

Furthermore, a whole new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, like the conduct from the trade mark owner after making the threat, any benefit derived by the Inventhelp Patent Services from your threat as well as the flagrancy from the threat, in deciding whether additional damages should be awarded up against the trade mark owner.

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