The USPTO recently proposed changes which may force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and deceptive applications by self-filers. The proposed changes, published through a Notice of Inventhelp New Inventions 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: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases and also 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 usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be an active member in good standing in the bar of the highest court of any state inside the U.S. (like the District of Columbia and 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 inside the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and make use of claims and encourage the USPTO to better 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 of our client’s trade marks into the usa. No changes to these arrangements is going to be necessary so we remain accessible 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 in the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by Invention Prototype. This modification will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions for our local clients will never change.
A huge change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will not 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 coming from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment for the Trade Marks Act brings consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the sole act to enable this defence. We expect that the removal of this portion of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to be interpreted just like the Patents Act. Thus, we know chances are that in case infringement proceedings are brought against a party afhbnt is ultimately found to not be infringing or the trade mark is located to become invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Furthermore, a 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 energy to award additional damages in the event that an individual is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct from the trade mark owner after making the threat, any benefit derived from the Inventhelp Inventions Store through the threat as well as the flagrancy of the threat, in deciding whether additional damages should be awarded against the trade mark owner.