The Inventhelp Phone Number 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 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 principles 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 your proceeding whose domicile or principal place of work is not located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an active member in good standing of the bar in the highest court of any state in the U.S. (including the District of Columbia and then any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons including improper signatures and use 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 numerous licensed US attorneys that will still help with expanding protection of our own client’s trade marks into America . No changes to those arrangements will be necessary and 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 inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance so that a US Attorney do not need to be appointed in this instance. Office Actions will need to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging How To Patent A Product Idea to respond to Office Actions on the part of our local clients will never change.
A big change is defined ahead 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 from the cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment for 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 until now, was the only real act to enable this defense. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to become interpreted like the Invention Help. Thus, we know it is likely that in case infringement proceedings are brought against a celebration who vafnjl ultimately found to not be infringing or perhaps the trade mark is located to be invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.
Furthermore, a new provision is going to be put into 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 one is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat and the flagrancy from the threat, in deciding whether additional damages have to be awarded from the trade mark owner.