The USPTO 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 would otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.

The NPR Summary reads: The United States 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 the Patent An Invention and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of work is not located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who is an energetic member in good standing in the bar of the highest court of the state in the U.S. (including the District of Columbia and then any Commonwealth or territory of 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 certainly not subject to invalidation for reasons including improper signatures and make use of claims and enable 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 several licensed US attorneys who will carry on and aid in expanding protection of our client’s trade marks into the usa. No changes to those arrangements will likely be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.

U . S . designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance on the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will never change.

A huge change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position 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 can soon not be possible.

This amendment towards the Trade Marks Act brings consistency over the How To Get A Prototype Made With Inventhelp, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the sole act to allow this defence. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to be interpreted much like vuiatc Patents Act. Thus, we believe it is likely that in case infringement proceedings are brought against an event who may be ultimately found not to be infringing or even the trade mark is found to be invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.

Additionally, a whole new provision is going to be included in the Inventhelp Office Locations, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in the event that an individual is deemed to possess made unjustified threats of proceedings for infringement. A 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 trade mark owner through the threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.

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