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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 fraudulent applications by self-filers. The proposed changes, published by way of a Notice of How To Patent Your Idea on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging a certified US attorney.

The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines 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 place of business is not really located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer that is a dynamic member in good standing from the bar of the highest court of a 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 with a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are certainly not susceptible to invalidation for reasons like improper signatures and utilize claims and encourage 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 still help with expanding protection of our own client’s trade marks into the United States. No changes to those arrangements will be necessary and we remain offered to facilitate US trade mark applications for our local clients.

U . S . designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed to acceptance at the first instance in order that a US Attorney will not need to be appointed in this situation. Office Actions will need to be responded to by How To Patent An Idea Or Product. This modification will affect self-filers into the usa – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients will not change.

A large change is set to come 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 as 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 can soon no longer be possible.

This amendment for the Trade Marks Act will bring consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the only act to permit this defence. We expect that the removal of this portion of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to become interpreted just like the Patents Act. Thus, we know it is likely that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found never to be infringing or perhaps the trade mark is located to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.

In addition, a brand 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 ability to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, such as the conduct in the trade mark owner after making the threat, any benefit derived by the Inventhelp Inventions Store from the threat and also the flagrancy in the threat, in deciding whether additional damages should be awarded up against the trade mark owner.

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