Intellectual Property Owners Association

Serving the Global Intellectual Property Community

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2008 Board Resolutions

Adopted December 3, 2008

[Principles for ACTA Negotiators] — RESOLVED, IPO urges U.S. negotiators to consider the following principles as provisions of the Anti-Counterfeiting Trade Agreement (ACTA) are discussed:
(a) Seek provisions that are consistent with IP provisions in existing U.S. Free Trade agreements and U.S. Law;
(b) Require parties to address the pervasive use of the Internet to facilitate dissemination and marketing of pirated works and counterfeit goods;
(c) Eliminate burdensome evidentiary requirements such as monetary or quantitative thresholds for administrative and criminal liability that may frustrate enforcement efforts; and
(d) Focus the agreement on trademark counterfeiting and copyright piracy offenses and advocate against addressing patents within ACTA’s legal framework, particularly any provisions on criminal liability and enforcement.

Adopted September 21, 2008

[Legislation addressing Biosimilars] — RESOLVED, IPO supports, in principle, legislation that would allow approval of a biological product as biosimilar to a reference biological product which:

  1. ensures patient safety by granting the FDA authority to approve biosimilars using a scientifically-based, case-by-case approach;
  2. promotes continued innovation by providing at least 14 years of data exclusivity for an innovator’s biological product with additional periods of exclusivity available for new indications and/or for approval for use in the pediatric population; and
  3. encourages efficient clarification of intellectual property issues by allowing confidential access to information reasonably relating to the infringement of any patents, including manufacturing and product information, and mechanisms for enforcing the confidential access requirement.

[Orphan Works Legislation] — RESOLVED, IPO, in principle, supports S. 2913, “The Orphan Works Act of 2008,” and urges the following changes to this legislation, or legislation relating to the same subject matter, before passage:

  1. Require that a determination of “reasonable compensation” take into account standard fees charged in the industry for similar works;
  2. Remove provision on injunctive relief;
  3. Remove provision on derivative works;
  4. Provide a shorter timeframe (4 years instead of 6) for the Register of Copyrights to develop a report to Congress on the effect of the legislation; and
  5. Require a reasonably diligent search before allowing another provision in the copyright act to override this legislation by allowing a statutory license.

[Commitments Articulated by and Made to Standards Organizations] — RESOLVED, that IPO policy is to support, in principle, that a Standards Setting Organization (SDO)’s patent policies and patent holder commitments should clearly state whether or not those commitments are (i) irrevocable, and (ii) binding on successors and assigns; and further, that IPO believes that patent owners and their assigns should comply with their commitments made to a SDO.

[Principles to Guide Local Patent Rules] — RESOLVED, IPO supports, in principle, adoption of Local Patent Rules and inclusion of provisions therein fostering the following practices:

  1. Early identification and mutual mandatory disclosure of essential infringement and validity related discovery and consideration of staying of non-essential discovery until after a Markman decision is issued in a case;
  2. Early disclosure and appropriate staging of detailed infringement and invalidity contentions;
  3. Early supplementation of detailed infringement and invalidity contentions supported by identification of specific evidence produced in the early mandatory disclosures;
  4. Scheduling the Markman hearing early in the case but after detailed contentions have been exchanged;
  5. Identification of claim limitations most important to outcome of the case; and
  6. Consideration of dispositive motions as early as appropriate to narrow issues or resolve cases without non-essential discovery.

Adopted June 20, 2008

[Judge’s Discretion in Issuing Protective Orders] — RESOLVED, IPO opposes S.2449, which would limit a judge’s discretion in issuing protective orders restricting the disclosure of information obtained through discovery, approving a settlement agreement, or restricting access to court records in a civil case.

Adopted March 18, 2008

[Counterfeiting Legislation: IP Enforcement Legislation Generally] — RESOLVED, that IPO supports, in principle, legislation that would (i) strengthen civil and criminal remedies and enforcement procedures for copyright piracy and trademark counterfeiting; (ii) enhance interagency coordination of intellectual property policy and enforcement through the creation of a permanent office within the Executive Office, with adequate funding, authority and accountability; and (iii) increase intellectual property enforcement resources within the various Federal agencies charged with combating counterfeiting and piracy offenses.

[Counterfeiting Legislation: Civil and Criminal Intellectual Property Laws] — RESOLVED, that IPO supports provisions of H.R. 4279 that would strengthen civil and criminal intellectual property laws by:
• Enhancing civil remedies for copyright infringement and trademark counterfeiting;
• Strengthening prohibitions and remedies against exports of infringing copyrighted works and goods bearing infringing trademarks;
• Harmonizing and strengthening forfeiture procedures for copyright and trademark counterfeiting offenses under title 18 of the United States Code; and
• Increasing criminal remedies for counterfeiting offenses where the offender knowingly or recklessly causes or attempts to cause serious bodily injury or death;
Provided, however, that IPO recommends further study of the need for, and impact of, provisions that would change the way statutory damages are calculated when copyrighted compilations are infringed.

[Counterfeiting Legislation: Interagency Coordination of IP Enforcement and Policy] — RESOLVED,  that IPO supports, in principle, provisions of H.R. 4279 that would establish a permanent IP enforcement office and representative within the Executive Office; provided, however, that IPO recommends further study and clarification of the duties and powers of the proposed IP enforcement representative vis-à-vis those of existing senior Administration officials with significant responsibility for intellectual property enforcement and policy.

[Counterfeiting Legislation: Increased IP Enforcement Resources and Coordination] — RESOLVED, that IPO supports, in principle, provisions of H.R. 4279 that would increase resources, coordination and transparency with respect to anti-counterfeiting and anti-piracy enforcement efforts; provided, however, that IPO recommends further study of the need for, and impact of, provisions that would create a new intellectual property enforcement division within the Department of Justice.

[Attorney’s Fees in Trademark Cases] — RESOLVED, that IPO supports, in principle, the amendment of 15 U.S.C. § 1117 to confirm that a prevailing plaintiff electing an award of statutory damages in lieu of actual damages and profits does not waive its entitlement to attorneys’ fees as a result of that election.

[Deposits of Biologic Material as part of a Patent Application] — RESOLVED, that IPO opposes changing the timing requirements placed on patent applicants for deposits of biological material associated with a particular application and the removal of restrictions on access to such deposits as proposed in 73 Fed. Reg. 9254 (Feb. 20, 2008).

Adopted January 30, 2008

[Exemptions for Replacement Automobile Parts] — RESOLVED, IPO opposes, in principle, legislation which would provide exemptions to U.S. intellectual property law to remove from infringement liability certain products or designs and believes the law should aim to treat all intellectual property rights similarly.  In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents.