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The Inventhelp Store Products 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.

The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines 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 will not be located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who is an energetic member in good standing in the bar of the highest court of a state within the U.S. (including the District of Columbia and 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 are certainly not subject to invalidation for reasons such as improper signatures and make use of 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 numerous licensed US attorneys who will continue to help with expanding protection of our client’s trade marks into America . No changes to such arrangements is going to be necessary and we remain offered to facilitate US trade mark applications for our local clients.

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

A big change is defined to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer 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 from the cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.

This amendment to the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the only real act to enable this defense. We expect that removing this section of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to become interpreted like the Inventhelp Reviews. Thus, we know it is likely that in the event infringement proceedings are brought against a party who vafnjl ultimately found never to be infringing or the trade mark can be found to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.

Furthermore, a brand new provision is going to be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the energy to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider several factors, such as the conduct in 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.