Intellectual Property Owners Association

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2005 Board Resolutions

Passed December 6, 2005

[Amendment to 35 U.S.C. 271(g)] — RESOLVED, IPO opposes legislation to remove the words “for the purposes of this title” from 35 U.S.C. Sec. 271(g).

[PTO Fees and Funding ] — RESOLVED, IPO supports, in principle, legislation to permanently end the practice of diverting PTO user fees for unrelated government programs, and specifically, IPO supports enactment of H.R.2791, 109th Congress, 1st Session, as long as it permanently ends the practice of diverting PTO user fees for unrelated government programs.

Passed September 13, 2005

[IPO Support for 9/1/2005 Coalition Print, 109th Congress] — RESOLVED, IPO Supports in principle the Coalition Print compromise draft bill dated September 1, 2005 and urges the House of Representatives to pass such legislation in lieu of patent reform bill, H.R.2795.

Passed June 24, 2005

[Third-Party Submission of Prior Art at the USPTO] — RESOLVED, that IPO supports amendment of the patent laws to add a new section 122(e) in order to afford patent applicants the advantage of having published art submitted by third parties, with concise descriptions of purported relevance, considered during examination, rather than waiting to do so during a post-grant opposition, and to amend section 122(c) to allow for submissions in compliance with new section 122(e), provided such proceedings include the following attributes:

  1. the submission permitted under the amendment is limited to provision of published art to be considered under 35 U.S.C. §§ 102, 103 or 112 and a concise description of its purported relevance;
  2. no submission may be made under the amendment once a notice of allowance has been mailed to the applicant, and
  3. prior to mailing of a notice of allowance, no submission may be made under the amendment after the later of: (a) six months after the date on which the application for patent is published, or (b) the date of an office action indicating that one or more claims in the application have been rejected.

Passed January 30, 2005

[Trademark Dilution] — RESOLVED, that the IPO, in order to strengthen the rights of trademark owners, supports, in principle, legislation to amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment to provide greater clarity regarding protection afforded under the statute, better define the standard of proof of dilution and clarify protection for free speech interests.

[Anti-Counterfeiting] – RESOLVED, that the IPO supports, in principle, H.R.32, the Stop Counterfeiting Manufactured Goods Act, legislation which would strengthen the criminal statute to effectively address trafficking in counterfeited goods.

[Patent Law Harmonization: “One Application”] – RESOLVED, Patent offices should move towards the adoption of a common patent application standard so that conforming applications can be electronically filed and prosecuted in any patent office without the need for any change to accommodate local rules. A first step towards this goal should be the adoption of a common patent application format by the trilateral offices, based generally on PCT format, so that conforming applications (i) can be filed, preferably electronically without the need for any change in the submitted application to accommodate national/regional rules, and (ii) aid in facilitating machine translation of the application.

[Establishing a Post-Grant Opposition System] — RESOLVED, that the Intellectual Property Owners Association supports amendment of the patent laws to establish post-grant opposition proceedings in which patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, provided such proceedings include the following attributes:

 

1. [Time for Filing] – Any request for a post-grant opposition must be made no later than 9 months after the date of the patent grant;

2. [Grounds] – Any ground of patentability, with the exception of “best mode” (35 U.S.C.§ 112, 1) and derivation (35 U.S.C. § 102(f)), may be raised in the request, but no issues of priority of invention (35 U.S.C. § 102(g)) nor enforceability shall be considered;

3. [Threshold Showing] – Any party requesting initiation of an opposition proceeding shall be required to make a threshold showing of unpatentability of at least one claim of the patent before the patent owner is required to respond to the opposition;

4. [Discovery] – Discovery from a party to an opposition shall be limited to cross-examination of declarants;

5. [Additional Evidence] – Following initiation of a post-grant opposition proceeding, the party requesting the proceeding shall not be permitted to advance a new ground of unpatentability in the opposition proceeding;

6. [Claim Amendments] – The patent owner shall have the right to amend its claims in its response to the initial request and after any new prior art is presented by an opponent after filing its initial request;

7. [Other USPTO Proceedings] – No party to the opposition proceeding shall be prevented by the opposition proceeding from filing other concurrent or subsequent proceedings in the United States Patent and Trademark Office;

8. [Standard of Proof] – The standard of proof to be applied for determining patentability* of a claim during a post-grant opposition proceeding shall be the clear and convincing evidence standard;

* NOTE: A Board member pointed out after the meeting that technically “patentability” should be “unpatentability.” The standard referred to is the standard faced by the party challenging the patent.9. [Estoppel] – A judgment in favor of patentability of any claim in the opposition proceeding shall estop the opposer from challenging validity of that claim in other proceedings on the basis of evidence and prior art presented during the opposition proceeding;

10. [Duty of Disclosure] – The patent owner’s duty of disclosure during the opposition shall be no greater than that applicable to a party in litigation before a Federal court;

11. [Length] – The opposition proceeding shall conclude within 12 months of the expiration of the 9-month post-grant request period and any patent claim surviving the opposition proceeding unamended shall be subject to day-for-day patent term adjustment for any period of pendency of the proceeding beyond the 12 months, excluding delays caused by the patent owner;

12. [Identity of Opposer] – Any party requesting initiation of a post-grant opposition proceeding must disclose its identity to the patent owner in the opposition proceeding;

13. [Infringement Suit] – In the event an infringement action is brought against an accused infringer prior to the filing of a post grant opposition request by the accused infringer, then any opposition proceedings involving the patent shall be stayed until the infringement action is finally resolved;

14. [Appeal] – Judicial review of a post-grant opposition proceeding shall be exclusively by way of appeal to the Court of Appeals for the Federal Circuit;

15. [Consolidation] – Multiple oppositions against a single patent shall be consolidated into a single opposition action following the expiration of the nine-month filing period; and,

16. [Right to Hearing] – Parties to an opposition shall have the right to a hearing before the decision of USPTO on the opposition is reached.

[IPO responses to the National Academy of Sciences (NAS) report recommendations issued in 2004:]

 

[Patent System Principle, NAS Rec. 1] – IPO agrees with NAS that it is vital to “Preserve an open-ended, unitary, flexible patent system.”[Title 35 USC §101, NAS Rec. 1] – IPO agrees with NAS that Title 35 USC § 101, the present U.S. statute providing the definition of subject matter that can be patented, should not be changed. This statute, as interpreted by the Supreme Court and the United States Circuit Court of Appeals for the Federal Circuit (“Federal Circuit”), is open to new technologies.

[USPTO Examination Guidelines, NAS Rec. 1] – IPO agrees with NAS that the USPTO should continue to develop examination guidelines for new or newly-patented technologies, as it has done for computer programs, business method inventions, living subject matter, and genetic inventions. In developing such guidelines, IPO agrees that the USPTO should continue to seek advice from a wide variety of sources and maintain a public record of the submissions, so the parties to a court proceeding and other interested members of the public can cite the public record of the results of development of examination guidelines, as they deem suitable.

[Federal Circuit Amicus Briefs, NAS Rec. 1] – IPO agrees with NAS that the Federal Circuit should encourage the submission of amicus briefs to address any significant public policy concerns.

[Federal Circuit Operations, NAS Rec. 1] – IPO agrees with NAS that the Court of Appeals for the Federal Circuit should continue to arrange for temporary exchanges of members with other courts.

[Federal Circuit Judges, NAS Rec. 1] – IPO agrees with NAS that judges appointed to the Federal Circuit should include people familiar with innovation from a variety of perspectives.

[Post Grant Review, NAS Rec. 3] – IPO is on record as favoring the adoption of a new administrative procedure to allow post-grant review of, and opposition to, patents.

[PTO Fee collections, NAS Rec. 4] – IPO has consistently advocated that the USPTO must receive all of the fees it collects, to achieve the goals of high quality, reasonably short pendency, and cost efficiency.

[Inequitable Conduct, NAS Rec. 6] – IPO does not favor de novo review by the Federal Circuit of district court findings of inequitable conduct.