Inventhelp Patent Information – Why Is This Significant..

The USPTO 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 by way 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 an authorized US attorney.

The NPR Summary reads: The Usa 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 Prior to the Inventhelp Innovation to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an energetic member in good standing in the bar in the highest court of any state inside the U.S. (like the District of Columbia and any Commonwealth or territory in 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 usually are not subjected to invalidation for reasons including improper signatures and make use of claims and allow 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 of our client’s trade marks into the United States. No changes to these arrangements will likely be necessary and that we remain available to facilitate US trade mark applications for our local clients.

United States Of America designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed to acceptance at the first instance to ensure that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. This modification will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions for our local clients will not change.

A huge change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be able to 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 a cross-claim of groundless or unjustified threats. However, this can soon no longer be possible.

This amendment to the Trade Marks Act brings consistency across the Inventhelp Wiki, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the sole act to enable this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to become interpreted similar to the Patents Act. Thus, we feel chances are that in the event infringement proceedings are brought against a celebration who fwhdpo ultimately found not to be infringing or even the trade mark is located to be invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

Additionally, a whole new provision will likely be put into the How To Submit A Patent, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages when a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider several factors, including the conduct of the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat as well as the flagrancy of the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.