The Inventhelp Patent Referral Services 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 way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and the rules regarding Representation of Others Before America Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not really located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who is an active member in good standing from the bar in the highest court of a state inside the U.S. (including the District of Columbia and then any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons including 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 can carry on and help with expanding protection of our client’s trade marks into America . No changes to those arrangements will likely be necessary and we remain offered to facilitate US trade mark applications on the part of our local clients.
United States designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance in order that a US Attorney will not need to be appointed in this situation. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into America – our current practice of engaging New Invention to answer Office Actions on the part of our local clients is not going to change.
A big change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings as a defense 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 no longer be possible.
This amendment for the Trade Marks Act brings consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the sole act to allow this defense. We expect that the removing of this section of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to get interpreted like the Inventhelp Commercial. Thus, we know it is likely that in the event that infringement proceedings are brought against an event who vafnjl ultimately found never to be infringing or the trade mark is found to be invalid, the trade mark owner will likely be deemed to get made unjustified or groundless threats.
In addition, a brand new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages when a person is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct in the trade mark owner after making the threat, any benefit derived by the trade mark owner from the threat as well as the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.