Intellectual Property Owners Association

Serving the Global Intellectual Property Community


2006 Board Resolutions

Passed December 6, 2006

[Fee Shifting] — RESOLVED, that IPO supports, in principle, the proposed Senate legislation awarding, to a prevailing party, fees and other expenses incurred by that party in connection with the proceeding. However, IPO would require further clarity in the proposal before the provision should pass.
[PTO Rulemaking Authority] — RESOLVED, that IPO opposes, in principle, the proposed Senate legislation conferring substantive rulemaking authority on the USPTO.
[Interlocutory Appeals] — RESOLVED, that IPO opposes, in principle, the proposed Senate legislation allowing interlocutory appeals on claim construction orders to the Federal Circuit, in that the legislation does not achieve its intended goals and may require additional amendments to the law.
[Waiver of Attorney-Client Privilege] — RESOLVED, that IPO supports, in principle, legislation to limit the scope of the waiver of attorney-client privilege and work-product immunity in a charge of willful patent infringement when the advice-of-counsel defense is asserted to only the subject matter of the opinion(s) communicated to the client and not to noncommunicated opinions nor to attorney work-product or litigation strategy prepared in anticipation of or in the defense of litigation.
IPO further supports, in principle, legislation to recognize that the protections and obligations of the attorney-client privilege should apply with the same force and effect to confidential communications between foreign patent and trademark attorneys, whether or not qualified as attorneys at law (as well as agents admitted or licensed to practice before their local or regional patent and trademark offices), and their clients, regardless of whether the substance of the communication may involve legal or technical subject matter.

Passed July 11, 2006
[Patent Quality Legislation] — RESOLVED,that IPO supports renewed efforts by the IPO Advocacy Policy Committee to develop proposals for further consideration by the IPO Board to amend the patent laws to specifically address reforms that increase the quality of patents issued by the U.S. Patent and Trademark Office.

[Special Disclosure Requirements for Genetic Resources] — RESOLVED, IPO believes that equitable benefit sharing is best accomplished through contracts with the authorities competent for granting access to genetic resources and traditional knowledge, and that special disclosure requirements for patent applications will not further the goal of fair and equitable benefit sharing.  Accordingly, IPO is opposed to such special disclosure requirements for patent applications.”

[Patent Specialists Pilot, H.R.5418] — RESOLVED, IPO supports, in principle, H.R.5418 to enhance the ability and resources of the U.S. District Courts to hear and deliver opinions on patent cases, in particular, to increase expertise among district court judges in managing such cases, provided that, the districts in the pilot are selected from those districts with at least 10 active judges.

[Orphan Works Legislation, 109th Congress] — RESOLVED, IPO, in principle, supports legislation to clarify issues related to orphan works; however, IPO cannot support the present legislation until the following issues are clarified: (1) “reasonably diligent search” as defined by the statute; (2) “reasonable compensation” as used in the statute; (3) the scope of injunctive relief; and (4) the effect of the statute on derivative works.

Passed April 4, 2006
[Federal Circuit Jurisdiction] — RESOLVED, IPO opposes any attempt to transfer jurisdiction over immigration appeals to the Federal Circuit.

[NOTE: IPO also sent a letter to the Senate leadership on this issue on March 23, 2006 which can be accessed here

[Geographic Designation of .us cctld] — RESOLVED, IPO recommends that the Department of Commerce more vigorously require the registry of the .us cctld, NeuStar, to enforce its mandate to protect the geographic indication purpose of the .us cctld through more stringent application of the Nexus Requirement to prospective and current registrants.

[Additional Requirements for Registering a .us cctld] — RESOLVED, IPO recommends that the Department of Commerce require registrants of .us domain names to provide written evidence of their compliance with the geographic Nexus Requirements to the registry at the time of registration and on a bi-annual basis during the term of the registration.

Passed Feb. 5, 2006

[PTO User Fee Extension] — RESOLVED, IPO supports, in principle, legislation to extend the increase in PTO user fees enacted for fiscal years 2005 and 2006 for an additional two years.