Intellectual Property Owners Association

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2002 Board Resolutions

Passed May 2, 2002

[Amicus Brief on the Copyright Term Extension] – RESOLVED, that the Amicus Brief Committee prepare a draft amicus brief for review by the IPO board in support of the respondent, the US government, stating that Congress’ enactment of the Copyright Term Extension Act was constitutional.

[PCT and delayed search and examination procedures] – RESOLVED, IPO favors in principle a more flexible system for the searching and examination of all U.S. applications for patent that would permit patent applicants to delay commencement of search and/or examination (and to delay the payment of fees associated therewith) for approximately the same period an international application under the Patent Cooperation Treaty can delay the commencement on National Stage processing, provided that such delay period is not longer than six months after the PCT Chapter II deadline.

Passed June 21, 2002

[Expert Witness Fees] – RESOLVED, that IPO will advocate legislative change to 35 U.S.C. 285 that would permit the recovery of expert witness fees in exceptional cases.

Passed Sept. 10, 2002

[Quality, Early Clarification of Rights, and Cost-Effectiveness] – RESOLVED, That IPO favors a patent system that: (1) grants high quality, valid, and enforceable patents, (2) achieves the earliest possible clarification of the scope of protection for patent owners and the areas of freedom of action for the public, and (3) operates in the most cost-effective manner possible, including in the determination of patent rights in the U.S. Patent and Trademark Office (USPTO) and the enforcement of those rights in the courts.

[Fee Increases to be Used for USPTO] –RESOLVED,  that IPO supports reasonable and necessary fee increases as required to fund improvements to the USPTO if assurances are provided that such funds will be used exclusively by the USPTO.”  (Staff authorized to edit)

[Fees to Reflect Cost of Services] – RESOLVED, That IPO urges individual fees be set at levels to cover the costs of providing services to users of the USPTO, and not be set at higher levels than cost for the purpose of penalizing users of USPTO services. (Staff authorized to edit)

[Support Amendment to Make Previously Withheld Services Available] – RESOLVED, That IPO urges Congress to make previously withheld USPTO fees available for use by the USPTO, and SPECIFICALLY, supports an amendment to the Senate Appropriations bill in order to make previously withheld fees available to the USPTO in 2003.

[Support 18 Months Pendency From Actual Filing Date] – RESOLVED, That IPO favors completion of examination of all patent applications as soon as reasonably practical after filing and affirms its support for the longstanding goal of achieving an18-month average pendency of all patent applications in the U.S. Patent and Trademark Office (USPTO) measured from the time applications are actually filed in the USPTO, and, SPECIFICALLY, IPO supports the development of a comprehensive plan by the USPTO to achieve that goal as soon as practicable.

[Oppose Incorporating New Forms of Deferred Examination into Statute] – RESOLVED, That IPO opposes incorporating into the Patent Act any statutory provisions to institutionalize any new form of deferred examination.

[Support Worksharing With Foreign Offices If No Deferral Beyond 30 Mos.] – RESOLVED, That IPO supports bilateral efforts with foreign patent offices that would result in some “work sharing,” but opposes any agreement that would produce an opened-ended deferral of the start of substantive U.S. patent examination for any foreign-origin patent application and, SPECIFICALLY, IPO opposes any deferral extending beyond the National Stage Entry date, 30 months from the priority date, under the Patent Cooperation Treaty.

[Support Unity of Invention and Any Necessary Increase in Fees] – RESOLVED, That IPO affirms its support for a change in the patent statute to adopt the “unity of invention” standard as the basis for restricting the examination of patent applications to a single invention and, FURTHER, IPO supports an increase in patent fees to the extent necessary to recover any incremental increase in the cost of examining a patent application under this standard for restriction.

Passed Nov. 3, 2002

[Universal 18-Month Publication] – RESOLVED, that Intellectual Property Owners Association favors legislation requiring publication of all United States patent applications promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under Title 35 of the United States Code.

[First-to-File Patent System]– RESOLVED, that Intellectual Property Owners Association favors legislation granting priority to the inventor having the earliest filing date for which a benefit is sought under Title 35 of the United States Code, in the event interfering patent applications are filed.

[Assignee Filing, Oath, Misjoinder, Inventor’s Right to Apply, Naming of the Inventor] – RESOLVED, the Intellectual Property Owners Association supports in principle a coordinated set of amendments to the U.S.patent laws that–

  • remove the prohibition on assignee filing (35 U.S.C. §118),
  • simplify the filing of the applicant’s filing oath (35 U.S.C. §115),
  • remove misjoinder as a defense to patent validity (35 U.S.C. §256),
  • secure the inventor’s rights by granting the inventor the sole right to apply for a patent, unless assigned (35 U.S.C. § 101), and
  • simplify the correction of naming of the inventor in patents and applications for patent (35 U.S.C. §25).

[European Patent Litigation Protocol] – RESOLVED, that the IPO supports in principle efforts by European governments to establish a European Patent Litigation Protocol to improve the enforceability and legal certainty of European patents and, SPECIFICALLY, the IPO supports the establishment of a centralized patent enforcement system that will provide common procedural laws and rules, including first-instance and second-instance courts, that will ensure uniform interpretation of European patents and will provide adequate infringement damages to patent owners.