Intellectual Property Owners Association

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2003 Board Resolutions

Passed January 28, 2003


[Jurisdiction over IP Counterclaims]
 – RESOLVED, that IPO will advocate a legislative change to 28 U.S.C. §1338(a) to provide original jurisdiction in federal district courts over all claims for relief under the patent laws, whether by claim or counterclaim.

Passed April 7, 2003

(Below resolutions approved in principle by IPO Board of Directors in email vote completed March 26, 2003; Final edited versions approved at the April 7, Board meeting)

[Effective Date Of Fee Legislation] – RESOLVED, IPO urges that legislation to increase patent and trademark fees for the purpose of implementing the revised “21st Century Strategic Plan” not take effect before
October 1, 2003.

[Sunsetting of Increased Fees] – RESOLVED, IPO urges that any legislation to increase patent and trademark fees for the purpose of implementing the revised “21st Century Strategic Plan”  provide that on October 1, 2006 fees will revert to a level that will make total fee collections equal to the amount, adjusted for inflation, that would have been collected without the legislation, unless the legislation is extended by act of Congress based on the success of the strategic plan.

[Administration Opposition to Diversion of Fees] –  RESOLVED, that IPO urges the Administration to issue a policy statement disapproving of diversion of patent and trademark fees from the USPTO to unrelated government programs.

[Search Fee Fixed by Congress] – RESOLVED, that IPO supports legislation establishing a fee for searching patent applications only if the amount of the fee is fixed by Congress in the legislation.

[Support for Fee Bill to Raise Amount Equal to FY04 Appropriations] – RESOLVED, that IPO supports (1) an FY04 USPTO appropriation of up to $1.5 billion determined by Congress to be needed for implementation of the revised “21stCentury Strategic Plan” and (2) legislation to increase patent and trademark fees to raise the projected amount collected by the USPTO for FY04 to the amount of such appropriation.

[Publication of Search Report At Same Time as 18-Month Publication of Patent Application] –RESOLVED, that IPO supports legislation allowing the USPTO the option of  obtaining patent application search reports before examination begins, provided, for applications filed after a transition period following enactment, the legislation (1) requires making the search report available to the applicant in advance of the expiration of the period in which to request examination and (2) requires the USPTO to publish (i) the application, (ii) the search report, and (iii) the fact that examination has been requested, no later than18 months after the effective filing date.

[Support for Revised Strategic Plan Subject to Testing] – RESOLVED, that IPO supports the USPTO’s 21st Century Strategic Plan as revised February 3, 2003, subject to the reporting of satisfactory results from timely and comprehensive testing and evaluation of new patent searching and examining procedures to determine their cost effectiveness and effect on patent quality, after an opportunity for the public to comment, and, where appropriate, prompt and successful completion of pilot projects before office-wide introduction of new procedures.


Passed
 June 4, 2003

[Affirmative Requirements For Enhanced Damages; Mere Knowledge of A Patent Insufficient]  – RESOLVED, that Intellectual Property Owners Association supports in principle the amendment of Title 35 of the United States Code to ensure that enhanced patent infringement damages may not be awarded:

  • based merely upon the knowledge of a patent or its contents by the defendant prior to suit, nor
  • for any infringement occurring prior to the defendant’s receipt of written notice from the plaintiff of a charge of infringement, which must identify the specific patent, claims and allegedly infringing products or process at issue and be sufficient to give the defendant an objectively reasonable apprehension of suit on such patent, unless:
    • the infringer intentionally copied the patented subject matter with knowledge that it is patented; or
    • the patent was asserted against the infringer in a previous U.S. judicial proceeding, and the present infringement is not more than colorably different than the conduct asserted to be infringing in the previous proceeding.

[Effect of Opinion of Counsel on Willfulness Determination] — RESOLVED, that Intellectual Property Owners Association supports in principle the amendment of Title 35 of the United States Code to ensure that:

  • a finding of willful infringement shall not be based solely upon the absence of an opinion of counsel, and
  • the absence of an opinion of counsel shall not create a negative inference that the infringement was willful.

[USPTO PROPOSAL FOR POST-GRANT OPPOSITION] – RESOLVED, that the Intellectual Property Owners Association favors, in principle, that the patent laws should be amended to establish proceedings in which patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Appeals and Interferences of the United States Patent and Trademark Office.

PROVIDED that the proceedings are implemented with sufficient mechanisms in place to achieve the public’s interest in readily available, reasonably prompt and cost effective procedure for a determination of the patentability of one or more patent claims, without creating an undue burden on patentees to defend their patents against frivolous assertions and with adequate procedures designated to protect a patentee from harassment.

[USPTO Proposal for Expanded Reexamination] – RESOLVED, that the Intellectual Property Owners Association favors, in principle, that in the event that a post-grant opposition proceeding is not established in the near future that will allow for review of the patentability of issued patent claims, the patent laws should be amended to expand the existing reexamination proceedings of the United States Patent and Trademark Office.


Passed
 September 14, 2003

[No Expansion of Declaratory Judgment] – RESOLVED, that IPO does not favor the expansion of declaratory judgment to allow a party that does not have a reasonable apprehension of being sued under a patent to nonetheless institute suit seeking a declaration that that patent is invalid, unenforceable and/or not infringed.

[Repeal of 35 U.S.C. § 135(b)(2)] – RESOLVED, that IPO favors, in principle, that the patent laws should be amended to eliminate the provisions of 35 U.S.C. 135(b)(2), which creates a bar to a determination of priority of invention in those instances in which a claim to the same invention is not presented in an application for patent within one year of the publication date of claims to the same invention, either in a publication of a U.S. patent application or in a WIPO publication of an International application.

[Clarifying the Law of Double Patenting] – RESOLVED, that IPO favors in principle limiting the law of obviousness-type double patenting so that it will apply only if and when, respecting two claims in two patents, all of the following three conditions apply:

(a) neither patent qualifies under sections 102 and 103(c) as prior art with respect to the claim in the other patent;

(b) the two patents have different expiration dates, or are not commonly owned; and

(c) the claim having the later priority date, or either of two claims having the same priority date, is an obvious variation of the other claim.