Intellectual Property Owners Association

Serving the Global Intellectual Property Community

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2014 Board Resolutions

Adopted December 9, 2014

 [Transition of Internet Assigned Numbers Authority Functions]RESOLVED, that IPO does not support the transfer of the IANA functions contracts unless (a) a new, multi-stakeholder system can meet high standards of security, freedom and openness; (b) there is assurance that no government or coalition will be empowered to undermine these standards; and (c) any proposed transfer plan is publicized well in advance of a proposed transition date, with full opportunity for stakeholders to meaningfully evaluate and comment on the viability of the plan.

[Supporting Procedural Harmonization Proposals]RESOLVED, that IPO confirms its support in principle for the IP5 Patent Harmonization Experts Panel to take up three procedural harmonization proposals as described in the document titled “Industry IP5 Consensus Proposals to the IP5 Patent Harmonization Experts Panel” dated October 10, 2014, which are:

  1. Unity of Invention,
  2. Citation of Prior Art, and
  3. Written Description.

Adopted September 7, 2014

[Supporting Legislation to Address Online Trademark Counterfeiting] — RESOLVED, that IPO supports in principle legislation to address online trademark counterfeiting that enables brand owners to file suit not only against domestic websites selling or offering for sale or distributing counterfeit products, but also as to Foreign Counterfeiting Websites, in order to obtain a court order that would require (a) that financial service providers cease processing payment transaction to the defendant(s) and the Foreign Counterfeiting Website, at least in the United States, (b) that internet advertising service providers cease providing such services to the defendants and the Foreign Counterfeiting Website, at least in the United States, and (c) any other injunctive relief the Court may determine as appropriate.  Additionally, the Legislation should:

  1. Focus on trademark counterfeiting only;
  2. Provide for nationwide personal jurisdiction and venue over any “Foreign Counterfeiting Website,” so long as such is consistent with due process; and
  3. Permit e-mail service of process to a domestic or Foreign Counterfeiting Website without requiring leave of court based on the e-mail address listed in domain registration for the administrative or ownership contact and to the e-mail address found on the website, if no real or actual address is available for providing notice to the potential defendant.

A Foreign Counterfeiting Website is defined as a website:

  1. based overseas (based on contact information contained on the site and/or registration information in the domain name registration);
  2. alleged to be offering goods with “counterfeit marks” as defined in the Lanham Act, 15 USC §§ 1116 and 1127; and
  3. directed at the U.S. market, which can be assessed based on statements on the website (e.g. shipping information, price quotes in U.S. dollars, and ability to purchase from the US).

Adopted June 20, 2014

[Opposing Patent Demand Letter Legislation at the State Level]RESOLVED, that IPO opposes patent demand letter legislation at the state level because, among other things, it creates non-uniform requirements for demand letters among various jurisdictions and increases compliance costs for legitimate businesses.

FURTHER RESOLVED, IPO specifically opposes state legislation that creates a private right of action against patent holders based on insufficient information in a patent demand letter communication.

FURTHER RESOLVED, IPO specifically opposes state legislation that requires mandatory disclosures in patent demand letters as such could interfere with legitimate and long-established practices in business-to-business communications.

[Supporting Legislation to Establish a Federal Civil Cause of Action for Trade Secret Misappropriation]RESOLVED, that IPO supports in principle the Defend Trade Secrets Act of 2014 and legislation to establish a federal civil cause of action for trade secret misappropriation to protect trade secrets from domestic and foreign theft provided the Act is amended to provide adequate safeguards to protect seized property.

Adopted March 26, 2014

[Supporting Amending Bankruptcy Code to Add Trademarks to Definition of Intellectual Property] — RESOLVED, that IPO supports in concept the inclusion of trademarks, service marks and trade names in the definition of intellectual property in the Bankruptcy Code, in circumstances where the trustee, debtor or acceptable designee agrees to assume the contractual obligation to monitor and control the quality of the licensed product or service.

[Supporting Legislation Regulating Bad Faith Demand Letters] — RESOLVED, that IPO supports legislation that would make the high volume sending of bad faith demand letters, to end users who are not resellers, a deceptive act or practice within the meaning of section 5(a)(1) of the Federal Trade Commission Act, provided that such legislation is carefully tailored to differentiate between abusive activity and legitimate, lawful activity.  Any legislation should include a clear identification of objective acts or practices that would deceive recipients, such as false statements of patent ownership or the right to enforce or license patents.

FURTHER RESOLVED, IPO opposes legislation that would require overly burdensome and detailed disclosures in bad faith demand letters, for example of information that could trigger declaratory judgment jurisdiction or the disclosure of confidential information, which could have the unintended result of increasing patent infringement litigation.

FURTHER RESOLVED, IPO believes that federal legislation regulating bad faith demand letters should preempt state legislation.

[Supporting Improving Patent System Transparency through Titleholder Identification] — RESOLVED, that IPO supports improving public notice of patent ownership to require patent applicants to provide “titleholder” information to the USPTO only upon the initial filing and allowance of a non-provisional application.

FURTHER RESOLVED, IPO does not support constructive abandonment of a patent application for failure to comply with disclosure requirements.

FURTHER RESOLVED, IPO does not support additional rules requiring disclosure to the USPTO of enforcement entities, ultimate parent entities, or hidden beneficial owners.

[Supporting Clarification of Federal Court Jurisdiction] — RESOLVED, that IPO supports amending 28 U.S.C. § 1338 to provide exclusive federal court jurisdiction over legal malpractice and other cases which necessarily raise an actually disputed and substantial issue of patent law.

Adopted January 26, 2014

[Opposing the Use of Different Claim Construction Rules for Covered Business Method Review] — RESOLVED, that IPO opposes treating claim construction in Covered Business Method Review proceedings differently from claim construction in Post-Grant and Inter Partes Review proceedings.

[Supporting Codification of Double-Patent Doctrine for First-Inventor-to-File Patents] — RESOLVED, that IPO supports in principle codification of the Double-Patenting Doctrine for First-Inventor- to-File patents, such that an original inventor’s patent claims are not invalidated by that inventor’s later filed improvement patent claims.