Intellectual Property Owners Association

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2017 Board Resolutions

Adopted 17 September 2017

[Technical Corrections Regarding Assignee Filers] — RESOLVED, that IPO supports amending 35 U.S.C. §§ 120 and 119(e)(1) to clarify that all applications filed on or after September 16, 2012, may claim priority to a parent application that names a common inventor.

RESOLVED, that IPO supports amending 35 U.S.C. § 119(a) to clarify that assignee-filed applications may claim priority to a foreign parent application that discloses the same invention, irrespective of who filed the foreign parent application.

[Abolishing Canada’s Promise Doctrine]  RESOLVED, that IPO supports the complete and immediate implementation of the Supreme Court of Canada’s decision in AstraZeneca Canada, Inc. v. Apotex, Inc., including abolition of Canada’s promise doctrine,  to restore greater certainty and predictability with respect to patentability requirements for Canadian patent applications.

Adopted 24 April 2017

[Codifying Laches Defense in Patent Litigation]RESOLVED, that IPO supports a legislative amendment of 35 U.S.C. § 282 to add the following two sections in place of current subsection (b)(4):

(4) Equitable defenses, such as laches and estoppel, to all forms of relief notwithstanding any other provision of this title.

(5) Any other fact or act made a defense by this title.

Adopted 29 January 2017

[Patent Eligible Subject Matter] —  RESOLVED, that IPO supports legislation to amend 35 U.S.C. § 101 as follows:

101(a) ELIGIBLE SUBJECT MATTER

Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY

A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

[Standard for Awarding Attorney Fees in Patent Suits] — RESOLVED, IPO withdraws its prior resolutions concerning legislative amendment of the standard for awarding attorney’s fees under 35 U.S.C. § 285.