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The How To Submit A Patent recently proposed changes which will 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.

The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines 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 workplace is not located within America or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who may be an energetic member in good standing from the bar from the highest court of any state in the U.S. (like the District of Columbia and then 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 are not subject to invalidation for reasons such as improper signatures and utilize 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 several licensed US attorneys that will carry on and help with expanding protection of our client’s trade marks into America . No changes to such arrangements will be necessary and that we remain accessible to facilitate US trade mark applications on behalf of our local clients.

U . S . designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed to acceptance on the first instance to ensure that a US Attorney need not be appointed in this situation. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into the USA – our current practice of engaging How To Patent A Product to respond to Office Actions on behalf of our local clients will not change.

A huge change is set in the future into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of rely on the commencement of infringement proceedings being a defense 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 not 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 also the Trade Mark Act, which so far, was the sole act to permit this defense. We expect that the removal of this section of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to be interpreted like the Inventhelp. Thus, we believe it is likely that in the event infringement proceedings are brought against an event who vafnjl ultimately found to not be infringing or the trade mark can be found to get invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.

Furthermore, a whole new provision will be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the ability to award additional damages when one is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, such as the conduct from the trade mark owner after making the threat, any benefit derived by the trade mark owner through the threat as well as the flagrancy of the threat, in deciding whether additional damages have to be awarded up against the trade mark owner.

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