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The USPTO recently proposed changes which would 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 Invention on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging a certified 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 america Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of work is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by an attorney that is an active member in good standing in the bar from the highest court of any state within the U.S. (including the District of Columbia and then any Commonwealth or territory from 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 in the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons like improper signatures and use 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 a number of licensed US attorneys who can continue to help with expanding protection of our client’s trade marks into america. No changes to such arrangements will likely be necessary so we remain offered to facilitate US trade mark applications on behalf of our local clients.

United States designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed through to acceptance at the first instance to ensure that a US Attorney do not need to be appointed in this situation. Office Actions will have to be responded to by How To Pitch An Invention Idea To A Company. This transformation will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions for our local clients is not going to change.

A huge change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will not be able to rely on the commencement of infringement proceedings as being a defence 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 towards the Trade Marks Act will take consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to allow this defence. We expect that the removing of this portion of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to become interpreted like the Patents Act. Thus, we believe chances are that in the event that infringement proceedings are brought against a celebration afhbnt is ultimately found to not be infringing or the trade mark is located to be invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

Additionally, a brand new provision will likely be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in the event that an individual is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, including the conduct from the trade mark owner after making the threat, any benefit derived by the Inventhelp New Products from your threat as well as the flagrancy from the threat, in deciding whether additional damages should be awarded from the trade mark owner.

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