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 deceptive applications by self-filers. The proposed changes, published through a Notice of Inventhelp Inventions on 15 February 2019, will affect foreign applicants who would otherwise be allowed to submit trade marks directly with the USPTO without engaging an authorized 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 the rules regarding Representation of Others Before america Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal workplace is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be an energetic member in good standing of the bar from the highest court of a state within 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 way of a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are not subjected to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively 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 who can carry on and aid in expanding protection in our client’s trade marks into the usa. No changes to such arrangements is going to be necessary and we remain available to facilitate US trade mark applications for our local clients.
United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed to acceptance in the first instance in order that a US Attorney need not be appointed in cases like this. Office Actions must be responded to by Patent Companies. This transformation will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients is not going to change.
A large change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able 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 coming from a cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.
This amendment for the Trade Marks Act will take consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the only real act to allow this defence. We expect that the removing 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 Patents Act. Thus, we feel it is likely that in the event that infringement proceedings are brought against a party afhbnt is ultimately found to not be infringing or even the trade mark is located to become invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Furthermore, 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 the court the power to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, like the conduct from the trade mark owner after making the threat, any benefit derived through the Inventhelp Invention Stories from the threat and the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.