The USPTO recently suggested changes which may 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 Inventhelp Invention Stories on 15 February 2019, will affect foreign applicants who would otherwise be allowed to submit 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 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 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 from the bar of the highest court of any state within 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 with a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more efficiently 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 continue to help with expanding protection in our client’s trade marks into the usa. No changes to those arrangements will likely be necessary and that we remain available to facilitate US trade mark applications for our local clients.
U . S . designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is anticipated that the USPTO will review procedures for designations which proceed to acceptance in the first instance so that a US Attorney need not be appointed in this situation. Office Actions will need to be responded to by How To Start An Invention. This transformation will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients is not going to change.
A huge change is set in the future 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 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 will soon no longer be possible.
This amendment to the Trade Marks Act will take consistency across 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 removing of this section of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we know it is likely that in case infringement proceedings are brought against a party afhbnt is ultimately found not to be infringing or even the trade mark is located to be invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
In addition, a new provision is going to 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 when a person is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider several factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the Inventors Corner from the threat as well as the flagrancy in the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.