The How To Pitch An Invention To A Company recently proposed changes which would 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 Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will 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 as well as the rules regarding Representation of Others Before the USA Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business will not be located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer who is a dynamic member in good standing from the bar from the highest court of any state within the U.S. (including the District of Columbia and 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 usually are not subjected to invalidation for reasons such as improper signatures and utilize claims and allow 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 assist with expanding protection of our own client’s trade marks into the USA . No changes to such arrangements will be necessary and we remain offered to facilitate US trade mark applications for our local clients.
United States Of America 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 do not need to be appointed in cases like this. 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 Inventhelp Review to answer Office Actions for our local clients will never change.
A big change is defined to come 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 a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from a cross-claim of groundless or unjustified threats. However, this may 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 so far, was the sole act to enable this defense. We expect that the removal of this section of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to be interpreted just like the Inventhelp George Foreman. Thus, we feel chances are that in case infringement proceedings are brought against a celebration who vafnjl ultimately found not to be infringing or perhaps the trade mark can be found to get invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.
Additionally, a whole new provision is going to be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages in the event that one is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat as well as the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.