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The Reviews For Inventhelp 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 means 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: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and 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 place of work is not located within America or its territories (hereafter foreign applicants, registrants, or parties) to be represented by a lawyer who is an energetic member in good standing from the bar from the highest court of the state in the U.S. (including the District of Columbia and then any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons like improper signatures and make use of claims and enable 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 several licensed US attorneys that will still aid in expanding protection in our client’s trade marks into the USA . No changes to such arrangements will be necessary so we remain accessible to facilitate US trade mark applications on behalf of our local clients.

United States Of America designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed through to acceptance in the first instance so 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 United States – our current practice of engaging Inventhelp Caveman to answer Office Actions on behalf of our local clients is not going to change.

A huge change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able 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 from the cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.

This amendment to the Trade Marks Act will take consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only real act to permit this defense. We expect that the removal of this section of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to become interpreted similar to the How To Pitch An Idea To A Company. Thus, we believe chances are that in the event infringement proceedings are brought against a party 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 get made unjustified or groundless threats.

Furthermore, a brand new provision is going to be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages when one is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, including the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner through the threat and also the flagrancy of the threat, in deciding whether additional damages should be awarded up against the trade mark owner.

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