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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 by means of a Notice of Patent Help Companies on 15 February 2019, will affect foreign applicants who would otherwise be permitted to submit 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 also 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 usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who may be an active member in good standing in the bar of the highest court of the state inside the U.S. (such as 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 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 such as improper signatures and utilize claims and encourage 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 several licensed US attorneys who can continue to help with expanding protection in our client’s trade marks into the usa. No changes to those arrangements will be necessary and that we remain available to facilitate US trade mark applications on the part of our local clients.

United States Of America designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed right through to acceptance in the first instance in order that a US Attorney do not need to be appointed in this instance. Office Actions must be responded to by Inventhelp Patent Invention. This transformation will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will never change.

A huge change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of rely on the commencement of infringement proceedings as a defence 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 no longer be possible.

This amendment to the Trade Marks Act brings consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to enable this defence. We expect that the removing of this area of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we know chances are that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found not to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner will likely be deemed to get 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 legal court the ability to award additional damages in the event that an individual is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider a number of factors, including the conduct of the trade mark owner after making the threat, any benefit derived by the Inventions Ideas through the threat and also the flagrancy in the threat, in deciding whether additional damages should be awarded from the trade mark owner.

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