Intellectual Property Owners Association

Serving the Global Intellectual Property Community

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2009 Board Resolutions

Adopted December 8, 2009

[15% Surcharge on Patent User Fees] — RESOLVED, IPO supports a limited, up to 12-month, surcharge of up to 15 percent on USPTO patent user fees to support operations, hire additional examiners and address the quality of issued patents and application pendency, provided that fees collected by the USPTO are not diverted to unrelated government functions.

[Amending Section 337] — RESOLVED, IPO supports, in principle, amending 19 U.S.C. 1337 (“Section 337”) to grant authority to the U.S. International Trade Commission to issue Limited Exclusion Orders against downstream products of non-parties in Section 337 investigations, thereby rendering moot that aspect of the decision of the U.S. Court of Appeals for the Federal Circuit in Kyocera Wireless Corporation v. International Trade Commission, 545 F.3d 1340 (2008); andFURTHER RESOLVED, in addition to proving such relief is warranted, any implementing legislation or rules must require parties seeking such downstream relief to provide prompt and timely specific notice to affected manufacturers and importers of such downstream products.

[U.S. Membership in Hague Agreement] — RESOLVED, IPO supports, in principle, legislation to implement changes to the U.S. design patent system in order to enable U.S. membership in the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

[Compulsory Licensing and Climate Change] — RESOLVED, IPO supports, in principle, laws that protect and enforce intellectual property rights to encourage development and accelerate deployment of technologies that address climate change, and opposes weakening of these rights in climate change negotiations, such as through compulsory licensing.

[Compulsory Licensing] — RESOLVED, IPO strongly opposes compulsory licensing of intellectual property rights.

Adopted September 13, 2009
[Reverse Payments] — RESOLVED, IPO opposes, in principle, legislation that would limit a court’s consideration of all the facts relating to the effect on competition of a settlement of Hatch-Waxman patent litigation in which an ANDA filer receives anything of value and agrees not to research, develop, manufacture, market or sell, for any period of time, the ANDA product that is the subject of the patent infringement claim, as IPO believes that existing antitrust case law is sufficient to protect competition against the improper expansion of a patentee’s lawful right to exclude as a result of the settlement.
[IP Attachés] — RESOLVED, IPO Supports, in principle, advancing the interests of U.S. intellectual property rights holders by expanding the number of intellectual property attachés serving in U.S. embassies and other diplomatic missions, by:
(a) Assigning additional intellectual property attachés (e.g., 10) in the various diplomatic offices of the United States at the discretion of the President;
(b) Prioritizing the placement of these additional attachés, in posts where the position best advances the protection in foreign countries of intellectual property rights of the United States persons;
(c) Providing that the intellectual property attachés should possess experience in intellectual property matters and are provided with appropriate training to fully carry out their responsibilities;
(d) Appropriating the necessary funding for these positions; and
(e) Coordinating the activities of the intellectual property attachés with (i) the United States Intellectual Property Enforcement Coordinator appointed under section 301 of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (15 USC 8111) and (ii) the Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).
[Enhancements to Special 301] — RESOLVED, IPO supports, in principle, improving the protection of intellectual property of U.S. persons in foreign countries through amending Section 182 of the Trade Act of 1974 by:
(a) providing that the United States Trade Representative (USTR) will develop an intellectual property Action Plan for each country that has remained on the “Priority Watch List” for at least 2 years in order to address the failure to provide adequate and effective intellectual property protection for U.S. interests;
(b) authorizing adequate appropriation of funds to USTR to assist countries in implementing the Action Plan;
(c) granting the President discretion to take certain actions consistent with the international obligations of the United States upon failure of a country to comply with the terms of the Action Plan within a reasonable period of time; and
(d) requiring USTR to report annually on actions taken in this regard.

Adopted July 27, 2009

[IPO’s Position on Supreme Court’s Consideration of the Bilski Case] — RESOLVED, the draft brief to be filed in Bilski v. Doll before the Supreme Court should be amended in the following ways:

Begin from the discussion and ground the overall thrust of the brief within the fundamental analysis from Supreme Court precedent that Section 101 broadly encompasses all new and useful processes, limited by three primary exceptions: abstract ideas, laws of nature and natural phenomena.  Then discuss that the Federal Circuit’s machine or transformation test is one way of determining whether a claimed process-related invention is an abstract idea or a specific useful application of that idea; it is a clue, but it is not the only clue to patent eligibility.

Adopted May 29, 2009

[IPO Support for Senate Action on S. 515] — RESOLVED, IPO supports the U.S. Senate bringing S.515 to a vote as soon as an opportunity presents itself.

[False marking in Patent Cases]
 — RESOLVED, IPO, in principle, supports legislation to repeal the qui tam cause of action of Section 292(b) of the patent statute for false marking of products.

[Creation of a Design Patent Registry] — RESOLVED, IPO supports providing statutory and regulatory authority to U.S. Customs and Border Protection (CBP) to extend full border enforcement protection to design patents by creating a registry similar to what currently exists for goods protected by trademarks or copyrights.

[Patent Defense in Proposed Drug Reimportation Legislation] — RESOLVED, IPO opposes, in principle, legislation that does not respect the essentially territorial nature of patent rights by providing that it shall not be an act of infringement in the United States to use, offer to sell, or sell within the United States, or import into the United States any patented invention based on first sale abroad of the patented invention by or under authority of the owner or licensee of an applicable U.S. patent or corresponding foreign patent.

Adopted March 17, 2009

[Reforming Standards for Proving Willfulness in Patent Infringement Cases] — RESOLVED, that IPO, considering that the Federal Circuit’s decision in In re Seagate Technology addressed many of the problems with willful infringement, recommends that any patent reform legislation enacted in the 111th Congress (2009-10) not include provisions on willful infringement.

[Opposition to Raising USPTO User Fees in FY2009] — RESOLVED, that IPO supports adequate funding for the U.S. Patent & Trademark Office, but, because of the severe economic recession in the United States, opposes, in principle, any increase during at least fiscal year 2009 in the statutory patent fees charged by the Office except for an annual adjustment to raise fees commensurate with increases in the Consumer Price Index as authorized under existing law.