Intellectual Property Owners Association

Serving the Global Intellectual Property Community

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2013 Board Resolutions

Adopted January 27, 2013

[Opposing Patent Small Claims Court] — RESOLVED, IPO opposes creating a patent small claims court as a small claims court currently does not appear to provide any benefits beyond existing alternative dispute resolution vehicles. IPO suggests consideration of this issue be deferred pending experience to be gained from the new PTO post-grant proceedings and the judicial patent pilot program.

[Supporting IP Systems Being Applied Without Discrimination to Industry/Technology] — RESOLVED, IPO believes that intellectual property systems should apply without discrimination to all industries and all technologies.

Adopted March 18, 2013

[Deterring Abusive Patent Litigation] — RESOLVED that, because existing law, such as 35 U. S. C. § 285 and Fed. R. Civ. P. 11, is not presently creating disincentives to deter abusive patent litigation, IPO supports legislation affirmatively awarding fees and other expenses, in appropriate circumstances, to a prevailing party in patent cases, in a manner that would increase the likelihood such party will recover the awarded fees and expenses. IPO believes that such legislation should be applicable to plaintiffs and defendants alike.

[Opposing the Data Disclosure Policy of the EMA] — RESOLVED, that IPO opposes the data disclosure policy of the European Medicines Agency, for at least the following reasons:

  • It lacks an appropriate process for determining whether a requested document should be released, by, for example, failing to include a presumption that non-public, non-clinical and clinical data and information in Marketing Authorisation applications is “Commercially Confidential Information” unless the sponsor of the application indicates otherwise, and a mechanism for the requestor to overcome that presumption or demonstrate a legally permissible “overriding public interest;”
  • As a result, it does not achieve an appropriate balance between the need for institutional transparency and the societal interest in promoting innovation;
  • It fails to protect innovators’ legitimate trade secrets and other confidential information from disclosure to competitors and from loss of trade secret status in other jurisdictions; and
  • It is inconsistent with provisions of the TRIPS Agreement and the Treaty on the Functioning of the European Union.

Adopted June 11, 2013

[Real Party in Interest]RESOLVED, that IPO supports expanding current recording rules to include a patent owner’s ultimate parent.  IPO does not support multiple mandatory disclosures at prescribed times, or a potential limitation of damages.  IPO also does not support disclosure of non-ownership interests as proposed in HR 2024 such as licensing rights and other decision-making rights.

[Opposing Repeal of Section 145]RESOLVED, that IPO opposes the repeal of Patent Act section 145.

[Claim Construction in Post Grant Review & Inter Partes Review] — RESOLVED, that in Post-Grant Review and Inter Partes Review proceedings in the USPTO, IPO supports that each claim of a patent shall be construed as such claim has been or would be in a civil action to invalidate a patent under 35 U.S.C. § 282, including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art, the prosecution history pertaining to the patent, and prior judicial determinations and stipulations relating to the patent.

[Amending 35 U.S.C. §285]RESOLVED, that IPO supports amending 35 U.S.C. § 285 to provide that the court shall award to the prevailing party reasonable costs and expenses, including attorney’s fees, unless the position and conduct of the non-prevailing party were objectively reasonable and substantially justified, or exceptional circumstances make such an award unjust.

[Supporting Customer Stay Legislation]RESOLVED, that IPO supports legislation to codify and enhance court developed doctrines that provide for staying a patent case against one or more customers of a product while a patent case on the same patent proceeds against the manufacturer of that product.  Such legislation should be carefully tailored to avoid unintended adverse consequences to innovators, manufacturers and customers.

[Filling Judicial Vacancies]RESOLVED, that IPO urges the United States Senate to promptly consider and act on all judicial nominees for the United States Court of Appeals for the Federal Circuit and all district courts.  Without endorsing any specific nominee, IPO supports prompt consideration of all nominees for the Federal Circuit and all district courts.  IPO further urges the Executive Office of the President to promptly nominate judges for all district court vacancies.

[Authorizing Foreign Patent Offices Access to Search Results for Pending PTO Applications]RESOLVED, that IPO supports the USPTO including in the Application Data Sheet, an Authorization section, which authorizes the USPTO to transmit the priority documents and bibliographic data and search results to the EPO as well as any other foreign patent offices.  Such Authorization should be in the form of an “Opt-Out” provision and only for those applications where priority is claimed.

 Adopted September 15, 2013

[Expanding the Transitional Program for Covered Business Method Patents] RESOLVED, IPO opposes expanding the transitional program for covered business method patents by replacing “a financial product or service” with “an enterprise, product, or service” and eliminating the eight-year sunset provision.

[Heightened Pleading Standard for Patent Infringement] — RESOLVED, that IPO supports modification of Form 18 to include: (1) an identification of at least one claim that is infringed, (2) a statement explaining such infringement, and (3) a statement addressing indirect infringement, if alleged.

[Eliminating “Reasonably Could Have Raised” in Post Grant Review Estoppel Provisions] RESOLVED, that IPO favors revising the current estoppel standard for post-grant review proceedings so that estoppel applies only to the grounds actually raised in civil actions or other proceedings; thus, 35 U.S.C. § 325(e)(2) should be revised as shown below:

“CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

[Requiring Trademark Rights Protection Mechanism for Reserving Second-Level Domains Within  New gTLDs] RESOLVED, that IPO supports, in principle, a notification process by which Registry Operators will be notified if domains they seek to reserve have been registered in the Trademark Clearinghouse and likewise by which rights holders who have registered their trademarks with the Trademark Clearinghouse will be notified should their marks be reserved by a Registry Operator;

FURTHER RESOLVED, that IPO supports, in principle, the establishment of a dispute resolution procedure to resolve conflicts in which a brand owner objects to a Registry Operator’s reservation of a domain name containing the brand owner’s mark.

Adopted December 10, 2013

[Rulemaking Process for Rules of Civil Procedure in Patent Cases]RESOLVED, IPO believes that the Judicial Conference should develop and adopt rules to address issues of case management and discovery in patent cases in a timely manner.

 [Rulemaking Process for Rules of Civil Procedure in Patent Cases]RESOLVED, IPO opposes Congress dictating the outcome of deliberations of the Judicial Conference of the United States, or bypassing the Judicial Conference and its rulemaking entirely, relative to the rules of civil procedure such as (a) the scope and sequencing of discovery in patent cases including claim construction, (b) the setting of pleading standards for patent infringement, and (c) the initial disclosure and joinder of interested parties.

[Opposing Proposed Amendments to Patent Term Adjustment]RESOLVED, that IPO opposes amendments to Patent Act section 154(b)(1)(B) that would deprive patent holders of effective patent term consumed by application processing after request for continued examination is filed with the United States Patent and Trademark Office.