The How To Get A Patent On An Idea 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 by means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will 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 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 workplace is not located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel that is an active member in good standing of the bar of the highest court of a state within the U.S. (including 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 are certainly not subject to invalidation for reasons including improper signatures and make use of 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 a number of licensed US attorneys who will carry on and aid in expanding protection in 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 for our local clients.
United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney need not be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This transformation will affect self-filers into America – our current practice of engaging Can You Patent An Idea to answer Office Actions on the part of our local clients is not going to 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 being a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this may soon no longer 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 so far, was the only act to allow this defense. We expect that the removal of this section of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to get interpreted like the Inventhelp Stories. Thus, we know chances are that in the event infringement proceedings are brought against a celebration who vafnjl ultimately found never to be infringing or perhaps the trade mark is located to be invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
In addition, a brand new provision will 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 the event that a person is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider several factors, like the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and also the flagrancy in the threat, in deciding whether additional damages have to be awarded from the trade mark owner.