The Inventhelp Successful Inventions 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed 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 Rules 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 place of business is not really located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel that is an active member in good standing in the bar from the highest court of any state in the U.S. (including the District of Columbia and 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 susceptible to invalidation for reasons like improper signatures and make use of claims and allow 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 can still 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 offered to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed right through to acceptance at the first instance in order that a US Attorney will not need to be appointed in this instance. Office Actions will need to be responded to by qualified US Attorneys. This change will affect self-filers into the United States – our current practice of engaging How To Obtain A Patent to answer Office Actions on the part of our local clients will never change.
A huge change is set in the future 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 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 towards the Trade Marks Act will take consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to permit this defense. We expect that the removal of this area of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to become interpreted like the Inventhelp Store. Thus, we feel it is likely that in the event that infringement proceedings are brought against an event who vafnjl ultimately found to not be infringing or the trade mark is located to be invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
In addition, a new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the ability to award additional damages when one is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider several factors, such as the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat and the flagrancy in the threat, in deciding whether additional damages are to be awarded from the trade mark owner.