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The How To Patent A Product 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 will otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed US attorney.

The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as 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 really located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to be represented by a lawyer that is a dynamic member in good standing of the bar from the highest court of the state in the U.S. (like 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 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 subjected to invalidation for reasons such as improper signatures and make use of claims and encourage 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 numerous licensed US attorneys that will carry on and help with expanding protection of our own client’s trade marks into the USA . No changes to such arrangements will likely be necessary and we remain available to facilitate US trade mark applications on the part of our local clients.

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

A huge change is defined 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 to the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only real act to allow this defense. We expect that the removing of this portion of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to get interpreted like the Patent Idea. Thus, we believe it is likely that in case infringement proceedings are brought against a celebration who vafnjl ultimately found to not be infringing or the trade mark is found to get invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.

Furthermore, a new provision is going to be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when an individual is deemed to possess made unjustified threats of proceedings for infringement. The court will consider a number of factors, including the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat and the flagrancy in the threat, in deciding whether additional damages have to be awarded from the trade mark owner.

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