The How To Patent A Product 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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would 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 Rules 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 some proceeding whose domicile or principal place of business is not located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an active member in good standing in the bar in the highest court of a state inside 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 by way of a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as 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 that will carry on and assist with expanding protection of our client’s trade marks into the United States . No changes to such arrangements will likely be necessary so we remain available to facilitate US trade mark applications for our local clients.
United States Of America designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance in the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions will need to be responded to by qualified US Attorneys. This change will affect self-filers into the USA – our current practice of engaging How To Pitch An Idea To A Company to respond to Office Actions on behalf of our local clients will not change.
A large change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position to rely on the commencement of infringement proceedings as being a defense 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 to the Trade Marks Act will take consistency throughout 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 permit this defense. 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 similar to the How Do You Get A Patent. Thus, we feel it is likely that in the event that infringement proceedings are brought against a celebration who vafnjl ultimately found not to be infringing or even the trade mark is found to be invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Additionally, 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 legal court the ability to award additional damages in the event that a person is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat and also the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.