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The Inventhelp Product Development 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 allowed 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 the USA Patent and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal workplace will not be located within America or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel that is a dynamic member in good standing of the bar of the highest court of a state within the U.S. (including the District of Columbia as well as any Commonwealth or territory from 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 including improper signatures and utilize claims and allow the USPTO to better 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 continue to help with expanding protection in our client’s trade marks into the United States . No changes to these arrangements will likely be necessary and we remain offered to facilitate US trade mark applications on behalf of our local clients.
U . S . designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed to acceptance in the first instance so that a US Attorney do not need to 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 Invention Companies to respond to Office Actions for our local clients will not change.
A large change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to 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 coming from a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment for the Trade Marks Act will bring consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the only act to permit this defense. We expect that removing this section of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to the How To Pitch An Invention To A Company. Thus, we feel it is likely that in case infringement proceedings are brought against a celebration who vafnjl ultimately found to not be infringing or even the trade mark is found to be invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.
Furthermore, a whole 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 power to award additional damages in case an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and the flagrancy in the threat, in deciding whether additional damages should be awarded against the trade mark owner.