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The USPTO recently proposed 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 way of a Notice of New Invention on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging an authorized US attorney.

The NPR Summary reads: America 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 United States Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is a dynamic member in good standing in the bar in the highest court of any state inside the U.S. (including 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 a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons such as improper signatures and use 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 still assist with expanding protection of our client’s trade marks into the usa. No changes to such arrangements will be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.

United States designations filed through 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 at the first instance so that a US Attorney do not need to be appointed in this instance. Office Actions will need to be responded to by Invent Help Invention Ideas. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions on the part of our local clients will never change.

A large change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of 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 will soon not be possible.

This amendment for the Trade Marks Act will take consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the only real act to allow this defence. We expect that the removing of this portion of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to be interpreted just like the Patents Act. Thus, we believe chances are that in the event that infringement proceedings are brought against a party afhbnt is ultimately found to not be infringing or even the trade mark can be found to get invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.

Additionally, a brand new provision will 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 in case a person is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider several factors, including the conduct from the trade mark owner after making the threat, any benefit derived through the Invention Help from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.