Intellectual Property Owners Association

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IPO Board Resolutions

Below is a history of resolutions passed by the IPO Board of Directors.

2018 Board Resolutions
2017 Board Resolutions
2016 Board Resolutions
2015 Board Resolutions
2014 Board Resolutions
2013 Board Resolutions
2012 Board Resolutions
2011 Board Resolutions
2010 Board Resolutions
2009 Board Resolutions
2008 Board Resolutions
2007 Board Resolutions
2006 Board Resolutions
2005 Board Resolutions
2004 Board Resolutions
2003 Board Resolutions
2002 Board Resolutions
2001 Board Resolutions

2018 Board Resolutions

Adopted 23 September 2018

[Venue in Hatch-Waxman and BPCIA Patent Infringement Suits]RESOLVED, that IPO supports an exemption to the patent venue statute, 28 U.S.C. § 1400(b), specific to patent cases brought pursuant to the Drug Price Competition and Patent Term Restoration Act (“Hatch-Waxman Act”) or the Biologics Price Competition and
Innovation Act (“BPCIA”) as follows.

First, any civil action for patent infringement pursuant to 35 U.S.C. §§ 271(e)(2)(A)(for generic
drugs) or 271(e)(2)(C) (for biological drugs), or 42 U.S.C. §§ 262(l)(6)(A) or (B), (l)(8)(B), or
(l)(9) (provisions of the BPCIA), may be brought in any judicial district in which the defendant
is subject to the court’s personal jurisdiction with respect to such action.

Second, any declaratory judgment action for patent non-infringement or invalidity pursuant to
35 U.S.C. § 271(e)(5) (for generic drugs) may be brought in any judicial district in which the
defendant is subject to the court’s personal jurisdiction with respect to such action.

Adopted 5 June 2018

[Nominative Fair Use]RESOLVED, that IPO supports the consistent recognition of the nominative fair use defense throughout trademark law, including that the defendant bears the burden of persuasion for invocation of the defense.

RESOLVED FURTHER, that IPO supports that any determination of nominative fair use consider the following factors:  (1) whether the use that plaintiff’s mark is necessary to describe the plaintiff’s product or service and the defendant’s product or service; (2) whether the defendant has used only so much of the plaintiff’s mark as is necessary; and (3) whether the defendant did anything (be it act or omission) that would, in conjunction with its use of the plaintiff’s mark, suggest sponsorship or endorsement by the plaintiff.

[Addressing the Trade in Counterfeit Goods when Brand Restriction Are Enacted]RESOLVED, that IPO supports that, in order to protect consumers from counterfeit products, when brand restrictions are enacted, such laws should (1) allow for sufficient brand display and differentiation, and (2) be supported by laws and other administrative measures aimed at curbing the trade in counterfeit and non-compliant smuggled products, including measures such as:  establishing stronger anti-counterfeiting laws and fines, establishing a track and trace system, ensuring that customs and other enforcement agencies receive adequate education and funding to investigate and prosecute illicit conduct, and educating the public on the dangers of counterfeit products.

[PTAB Rule to Require Conference Prior to Oral Hearing]RESOLVED, that IPO supports the USPTO establishing a rule for post grant proceedings requiring the PTAB to hold a conference prior to the oral hearing to narrow the issues to be presented at the oral hearing, and to decide outstanding motions to strike, motions to exclude evidence, and whether proposed demonstratives may be used at the oral hearing, unless the interest of justice require that any such issue be argued at the oral hearing.

Adopted 7 March 2018

[Rule-making on PTAB Motions to Amend] — RESOLVED, that IPO supports amending 37 C.F.R. § 42.121 to provide a briefing schedule as follows:  Patent Owner motion establishing burden of production (15 pages); Petitioner opening brief on unpatentability of proposed substitute claims (25 pages); Patent Owner response brief in support of patentability (25 pages); Petitioner Reply (15 pages).

[Rule-making on Establishing Legal Standard for Denying PTAB Follow-on Petitions] — RESOLVED, that IPO supports USPTO rule-making to establish the standards for denying institution of follow-on petitioners based on and to supersede the precedential PTAB opinion, Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 19 (PTAB, Sept. 6, 2017).

[Rule-making on Establishing Legal Standard for Additional Discovery at PTAB] —RESOLVED, that IPO supports USPTO rule-making to establish the legal standard for determining whether additional discovery is in the interests of justice pursuant to 37 C.F.R. § 42.51(b)(2) based on and to supersede the precedential PTAB decision, Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26 (PTAB, Mar. 5, 2013).

[Reciprocity for Foreign Discovery in U.S. Courts]  RESOLVED, that IPO supports amending 28 U.S.C. § 1782 to require (1) that information produced pursuant to the statute be subject to adequate protections for confidential information, including trade secrets, in the foreign proceedings, (2) that the information is discoverable or admissible in the foreign proceeding, and (3) that prior to the application having been made the applicant could have been subject to an equivalent order for production under the rules of this jurisdiction or the foreign jurisdiction.

Adopted 24 January 2018

[Amending 35 U.S.C. § 101] — RESOLVED, that IPO supports amending the legislative proposal adopted on 29 January 2017 on patent eligible subject matter under 35 U.S.C. § 101 to read as follows:

(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 thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) SOLE EXCEPTIONS TO SUBJECT MATTER ELIGIBILITY A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole (i) exists in nature independently of and prior to any human activity or (ii) is performed solely in the human mind.

(c) SOLE ELIGIBILITY STANDARD The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to:

(i) the requirements or conditions of sections 102, 103, and 112 of this title;

(ii) the manner in which the claimed invention was made or discovered; or

(iii) whether the claimed invention includes an inventive concept.

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.

2016 Board Resolutions

Adopted December 6, 2016

[Limiting Excessive Section 8 Damages Awards in Proceedings Under Canadian Patented Medicines Regulations] — RESOLVED, that IPO supports that any section 8 damages awarded pursuant to a proceeding under the Canadian Patented Medicines (Notice of Compliance) Regulations (“PMNOC Proceeding”) must be based on damages proven to have actually been suffered by each generic claimant, and that a patentee’s total liability for all generic claimants’ lost profits under section 8 for a given product may not exceed the profits collectively lost on account of PMNOC Proceedings.  As such, the unit sales upon which the PMNOC lost profits calculations are based may not collectively exceed 100% of the incremental units of generic product that the generic claimants would have sold had the patentee not brought the PMNOC Proceedings.

[Amending Rule 4 of the Federal Rules of Civil Procedure] — RESOLVED, that the Intellectual Property Owners Association supports, in principle, that Rule 4 of the Federal Rules of Civil Procedure be amended to allow for service of process by e-mail, without a court order, in cases involving commercial activity conducted using a domain name that is registered to a fictitious party.

Adopted June 7, 2016

[Copyright Office Modernization]  RESOLVED, that Congress should ensure that the Copyright Office has the staffing, budget, information technology, flexibility, and autonomy it needs to meet the current and future demands of copyright owners and the public.  This should be accomplished by, at the very least, passing legislation to require that the Register of the Office is a presidential nominee and that the Copyright Office is autonomous from the Library of Congress, including having its own budget and information technology systems separate from the Library of Congress.

[Domain Name Provisions of TPP] — RESOLVED, that the Intellectual Property Owners Association supports, in principle, that were the current version of the Trans Pacific Partnership trade agreement to be implemented, it should not be interpreted to require the United States to impose a new country code domain name dispute resolution policy to replace the usDRP

Adopted March 16, 2016

[Amending the Lanham Act  Remedies Sections] RESOLVED, that IPO supports, in principle, legislation to amend the Lanham Act to provide that, when a claimant seeks injunctive relief, a rebuttable presumption of irreparable harm shall apply where there has been a finding of a likelihood of confusion or likelihood of dilution, or, in the case of a motion for a preliminary injunction, a finding of probable success on the merits of a likelihood of confusion or likelihood of dilution claim.

Adopted January 27, 2016

[Modernization of the U.S. Patent Examination System] — RESOLVED, IPO supports that the PTO:

  • Replace the present final office action policy and attendant after final practice with a policy that every amendment is entered as a matter of right with applicants paying an RCE fee with every third response and that each response is taken up for action by the examiner within the same timeframe.

2015 Board Resolutions

Adopted December 8, 2015

[Supporting Legislation on Foreign Filing Licenses in Design Patents]  RESOLVED, that IPO supports, in principle, legislation to allow applicants to file applications for design protection (e.g., design patents, industrial design registrations) in a country outside of the United States without first obtaining a foreign filing license from the U.S. Patent and Trademark Office.

Adopted September 27, 2015

[Supporting Legislation to Establish a Federal Civil Cause of Action for Trade Secret Misappropriation] — RESOLVED, that IPO supports the enactment of legislation, such as the Defend Trade Secrets Act of 2015, to establish a federal civil cause of action for trade secret misappropriation to protect trade secrets from domestic and foreign theft, including an ex parte seizure provision, while providing adequate safeguards against improper use of such ex parte seizure provision.

[Venue in Patent Suits]  RESOLVED, that IPO confirms its support for legislation to limit venue in patent suits in order to curb forum shopping by patent owners and, specifically, IPO supports an amendment to 28 U.S.C. § 1400(b) to limit venue to a judicial district as follows:

(A) In a patent infringement action brought by a patent owner against an accused infringing defendant, venue should be limited to a judicial district:

  1. where the defendant has its principal place of business or is incorporated, or if the defendant is an individual, where the defendant resides;
  2. where the defendant has committed acts of infringement and has a regular and established physical facility where defendant’s acts of infringement have occurred;
  3. where technological activities relating to the invention that led to the application for the patent(s)-in-suit – such as inventing, substantial research and development, or manufacturing – have taken place;
  4. where a plaintiff or a subsidiary has a regular place of business, not operated primarily for the purpose of creating venue, that is engaged in substantial: (a) management of research and development or manufacturing activities for a product or process related to the patent or patents in dispute; (b) research and development of a product or process related to the patent(s) in dispute; or (c) manufacturing activities of a product or process related to the patent(s) in dispute;
  5. where the defendant has agreed or consented to be sued in the instant action; or
  6. where, for foreign defendants that do not meet any of the above, venue would be proper according to 28 U.S.C. § 1391(c)(3).

(B) In a declaratory judgment action brought against a patent owner, venue should be determined according to 28 U.S.C. § 1391.

(C) In considering a motion to transfer venue involving a retailer that sells consumer products alleged to infringe the patent(s)-in-suit, the location of such retail sales should be afforded no weight in deciding the transfer motion if they occur in all of the judicial districts under consideration.

[Stays of Discovery in Patent Suits Prior to Resolution of Preliminary Motions]  RESOLVED, that IPO supports, in principle, legislation staying discovery during the pendency of motions to transfer under 1404(a) of title 28 in accordance with the following language:

In an action for patent infringement under section 271 or an action for a declaratory judgment that a patent is invalid or not infringed, if a defendant moves to transfer the action under 1404(a) of title 28 on or before the date by which the defendant must, under Federal Rule of Civil Procedure 12, answer or otherwise respond to the complaint, then as between the plaintiff and the part(ies) filing the motion to transfer:

(A) Until resolution of the transfer motion, absent an agreement from the parties otherwise:

(i) no substantive motion may be decided except (a) motions for injunctive relief, and (b) case-dispositive motions; and

(ii) discovery must be stayed, except such discovery that the court in its discretion determines necessary to decide the transfer motion or motions for injunctive relief.

(B) EXCHANGE OF CONTENTIONS – Nothing in this section shall prohibit a court from ordering, or local rules from requiring, the exchange of contentions regarding infringement, non-infringement, invalidity, or other issues, by interrogatories or other written initial disclosures, at an appropriate time determined by the court.

Adopted June 9, 2015

[Opposing Use of Post-Grant Proceedings to Manipulate the Market]  RESOLVED, that IPO believes it is an abuse to file AIA petitions for post grant proceedings by persons who have a significant bet against, or short, of the shares of the patent owners owning the patents challenged in the petitions; now, therefore, IPO urges the United States Patent and Trademark Office to use its discretion to deny petitions filed by such persons.

[Supporting Amendment of 18 U.S.C. §2320]  RESOLVED, that IPO supports amending 18 U.S.C. §2320 to expressly include in the definition of a counterfeit mark instances where false goods are used in genuine packaging, product identifiers have been remarked and materially altered on either goods or packaging, or where goods have been materially altered, even if the trademark was initially affixed by the brand owner.

Adopted March 11, 2015

[Supporting Customer Stay Legislation] — RESOLVED, that IPO supports, in principle, legislation to stay a patent case against a customer of a product while a case on the same patent proceeds against the manufacturer of that product on issues common to the customer, provided that:

1.  The statutory stay requires consent of both the manufacturer and customer.

2.  The statutory stay must be sought early in the case.

3.  The statutory stay requires the customer to be bound by the resolution of issues in common with the manufacturer (with limited exceptions when justice so requires).

4.  The statutory stay is based on readily discernible criteria.

 5 The statutory stay is limited to retailers, end users or other customers accused of infringement for selling, using or incorporating for sale a product or process, supplied by the manufacturer, that they have not materially modified.

  6.  The statutory stay does not preclude a patent owner from seeking damages or other relief directly from the customer, once the stay is lifted, if such relief would have been available if the case were not stayed.

  7.  The statutory stay does not preclude a court from exercising its discretion to decide whether and to what extent a stay is warranted beyond what is provided in the statutory stay.

[Pleading Standard for Patent Infringement] — RESOLVED, IPO supports patent pleading requirements consistent with the legal standards for other federal pleadings as provided under the Twombly and Iqbal decisions and their progeny, and

RESOLVED, IPO supports efforts of district courts and the Judicial Conference to provide clarity for patent pleading requirements by including at least the following: (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.

[Rules of Civil Procedure in Patent Cases] — RESOLVED, IPO supports amendments to the Federal Rules of Civil Procedure adopted by the Judicial Conference that go into effect on December 1, 2015.

Adopted January 25, 2015

[Identification of Interested Parties in Litigation]  RESOLVED, IPO does not support modification of initial disclosure rules to require disclosure of licensees, or those with financial or control interests in asserted patents or patent owners, beyond disclosures necessary to establish litigation standing and real parties in interest. Such non-ownership disclosures are better handled in discovery under appropriate protective orders and in accordance with Rule 26 of the Federal Rules of Civil Procedure. Patent ownership and real party in interest disclosures are already required by the Federal Rules of Civil Procedure such as Rules 7.1(a)(1), 17 and 26(a).

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.

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.

2012 Board Resolutions

Adopted December 11, 2012

[Protecting American Trade Secrets and Innovation Act of 2012] — RESOLVED, that IPO supports the enactment of legislation along the lines of S. 3389 entitled Protecting American Trade Secrets and Innovation Act of 2012 to establish a federal civil cause of action for trade secret misappropriation and other proposed amendments to protect trade secrets along with adequate safeguards against improper use of such legislation.

[Brand Protection Under New gTLDs] — RESOLVED, that IPO supports the Rights Protection Mechanisms advocated by the Intellectual Property Constituency of ICANN, and particularly its recommendation that ICANN implement a mechanism for trademark owners to prevent second-level registration of their exact marks, as well as prevent second-level registration of their marks in combination with character strings previously found to have been abusively registered or used.

[AIA Technical Corrections] — RESOLVED, that IPO, while confirming its support for short pendency of patent applications in the USPTO, opposes section 1(m) of H.R. 6621 in the form introduced on November 30, 2012.

[AIA Technical Corrections] — RESOLVED, that IPO opposes section 1(d)(2) of H.R. 6621 in the form introduced on November 30, 2012.

Adopted September 9, 2012

[Preserving IP Licenses in Cross-Border Insolvencies] — RESOLVED, that IPO supports the adoption, in all countries, of legislation and model laws that enable licensees (and similar rights holders) to preserve intact their existing license rights (and similar rights) in intellectual property, in a form similar to 11 U.S.C. § 365(n) where the licensee agrees to comply with existing royalty obligations, if any, when a licensor enters voluntary or involuntary bankruptcy, reorganization, or insolvency in one or more countries, notwithstanding any sale, transfer, proposed rejection or termination or avoidance of the license, or other transaction by the licensor, or its trustee, administrator, or other successor.

[Preserving IP Licenses in Cross-Border Insolvencies] — RESOLVED, that IPO supports the adoption, in all countries, of legislation and model laws by which the public interest in preserving existing IP licenses overrides the principle of applying comity from jurisdictions that do not adequately enable licensees and similar rights holders to preserve their license rights.

Adopted June 11, 2012

[Revising the Trademark Dilution Revision Act] — RESOLVED, that IPO supports amending Section 43(c)(6) of the Lanham Act so as to read as follows:

(6) Ownership of valid registration complete bar to action. — The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this act shall be a complete bar to an action against that person, with respect to that mark, that —

(A) Is brought by another person under the common law or a statute of a State; and

(B) (i) seeks to prevent actual or likely dilution by blurring or actual or likely dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

[Fair Use of Non-Patent Literature] — RESOLVED, that making copies of copyrighted non-patent literature in the course of preparing and prosecuting patent applications and maintaining comprehensive files relating to prosecution is fair use under 17 U.S.C. §107.

2011 Board Resolutions

Adopted December 6, 2011

[Combating Military Counterfeits] — RESOLVED, that IPO supports the passage of S. 1228, the “Combating Military Counterfeits Act of 2011,” insofar as it amends 18 U.S.C. § 2320 to introduce increased penalties for trafficking in counterfeit products falsely represented as meeting military requirements or being military grade or intended for military applications.

Adopted September 11, 2011

[Recognizing the Value of IPO’s Diverse Membership] — The IPO Board recognizes, values, and seeks to engage the participation, thought leadership, and collaboration of our non-Board members.  Therefore, we recognize the importance of addressing the interests and needs of the broad range of IPO members.  This includes:

  • Creating professional, networking, and business development opportunities,
  • Providing continuing legal education opportunities,
  • Guiding the Standing IP Committees via regular and timely feedback,
  • Publicizing committee activities,
  • Seeking input of non-Board members on IPO positions to be advocated to Congress, the USPTO, and the courts,
  • Communicating with members about Board initiatives, and
  • Updating members on developments in IP law via the IPO Daily News™.

[Amending the Criminal Penalty Provision for Criminal Infringement of a Copyright] — RESOLVED, that IPO supports, in principle, S.978, “A Bill To Amend The Criminal Penalty Provision For Criminal Infringement Of A Copyright, And For Other Purposes.”

Adopted June 24, 2011

[Protect IP Act] — RESOLVED, That IPO supports, in principle, S. 968, the Protect IP Act of 2011.

[Protecting Trade Secrets Under The TPP] — RESOLVED, That IPO supports improving protection for trade secret rights under the Trans-Pacific Partnership Trade Agreement (TPP), whereby:

  • The TPP requires that all parties fully implement their obligations under the WTO TRIPS Agreement, including TRIPS Article 39, which contains obligations for all current participants in the TPP negotiations in respect of minimum protections for trade secrets and other undisclosed information;
  • The TPP should require that all TPP parties make available adequate and effective remedies (such as injunctions and criminal penalties) to stop misappropriation of trade secrets; and
  • The TPP should prohibit parties from imposing compulsory licenses of trade secrets.

 

Adopted March 22, 2011

[Opposing Legislation on Tax Strategy Patents] — RESOLVED, That IPO opposes Sec. 14, “Tax Strategies Deemed Within the Prior Art,” of S. 23, the “America Invents Act.”

[Favoring Omission of Damages Provisions from Patent Reform] — RESOLVED, IPO recommends that any patent reform legislation enacted in the 112th Congress (2011-2012) not include provisions on patent damages, considering the Federal Circuit’s recent opinions clarifying the rules for determining reasonable royalty damages and the likelihood that the courts will continue to refine patent damages law.

[Favoring Omission of Transfer of Venue Provisions from Patent Reform] — RESOLVED, IPO recommends that any patent reform legislation enacted in the 112th Congress (2011-2012) not include provisions on transfer of venue in civil actions for patent infringement, considering the Federal Circuit’s recent actions directing the transfer of civil actions to districts clearly more convenient for the parties and the likelihood that the courts will continue to refine the law.

[Favoring Omission of Willful Infringement Provisions from Patent Reform] — RESOLVED, IPO recommends that any patent reform legislation enacted in the 112th Congress (2011-2012) not include provisions on willful infringement.

[Micro Entity Patent Fees] — RESOLVED, IPO recommends that Congress should determine the cost to other patent applicants and owners, and the effect on the agency, for each type of micro entity applicant and owner, before deciding whether to enact legislation providing for a 75 percent fee discount for micro entity patent applicants and owners as proposed in Sections 9 and 12 of S. 23, passed by the Senate on March 8, 2011.

[Supporting a 15% Surcharge on Patent User Fees] — RESOLVED, IPO supports a surcharge of 15 percent on USPTO patent user fees for FY 2011 and FY 2012 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.

[Opposing Proposed Fast-Track Ex Parte Reexamination Voucher Program for “Humanitarian Technologies”] –RESOLVED, That IPO confirms its opposition to the United States Patent & Trademark Office’s proposed fast-track ex parte reexamination voucher program for “humanitarian technologies” as described in 75 Fed. Reg. 57261. IPO encourages the USPTO to focus on its core commitment to a patent system in which individual patent applications rise or fall on their own merits without regard to field of technology or political concerns.  Although IPO supports the USPTO’s efforts to remain engaged in international policy issues, these efforts should focus on advocacy for efficient patent systems worldwide.

[Detained Suspect Counterfeit Semiconductors] — RESOLVED, IPO supports revocation of the Directive of April 2000 as needed to permit CBP Agents to provide rights holders unredacted samples or photographs of suspect counterfeit goods so as to allow the rights holder/manufacturer to assist CBP in identifying and preventing the importation of counterfeit goods, as contemplated in the Tariff Act of 1930, the Lanham Act, the North American Free Trade Agreement, and GATT Agreement on Trade-Related Aspects of Intellectual Property, and CFR 133.25.

Adopted January 23, 2011

[Uniform Application of the Inevitable Disclosure Doctrine] — RESOLVED, IPO supports, in principle, uniformity in the doctrine of inevitable disclosure such that injunctive relief is available to an employer who owns a trade secret, which relief is sufficient to protect against the inevitable disclosure of the trade secret by an employee and the resulting loss of commercial advantage.

[Supporting Prompt Senate Action to Fill Federal Circuit Vacancies] — RESOLVED, IPO urges the United States Senate to promptly consider nominees for the two current vacancies on the United States Court of Appeals for the Federal Circuit.  Without endorsing any specific nominee, IPO supports prompt consideration of all nominees for the Federal Circuit.

2010 Board Resolutions

Adopted September 12, 2010

[Senate Copyright Housekeeping Bill] — RESOLVED, IPO supports, in principle, S. 3689, the “Copyright Cleanup, Clarification, and Corrections Act of 2010.”

[Trade Secrets Legislation] — RESOLVED, IPO is concerned about the potential adverse impact that new legislation and regulation may have on trade secrets and other intellectual property rights.  IPO supports legislation and regulation consistent with the following principles:

  1. Trade secrets and other intellectual property rights are important property rights that should be protected.  Protecting trade secrets encourages business development and development that ultimately results in higher quality products and new technologies that benefit the public welfare;
  2. Congress has consistently protected trade secrets and other intellectual property rights in the past, and new legislation or regulation which respects these same rights is consistent with historical public policy goals and prior legislation and regulation;
  3. Any legislative provisions voiding or restricting either secrecy agreements or agreements limiting the dissemination of information should be crafted narrowly;
  4. Legislation and regulation should protect the public welfare but be narrowly tailored to prevent unnecessary public disclosure of trade secrets or confidential information; and
  5. A determination that the public welfare necessitates the disclosure of trade secrets or confidential information should be subject to an adequate review process.

[Genetically Engineered Technology Farmer Protection Act] — RESOLVED, IPO opposes H.R. 5579 (111th Congress), and opposes, in general, legislation that would limit the rights of biotechnology companies to contract with purchasers of genetically engineered technology, prohibit the manufacture and sale of legal, patented products and require biotechnology companies to report products, sales and royalties to the Secretary of Agriculture.

Adopted June 11, 2010

[Amendment to New Zealand Patents Act 1953 Excluding “Computer Programs” from Patentability] — RESOLVED, while IPO generally supports the effort to improve and modernize the New Zealand Patents Act 1953, IPO opposes the broad and unqualified exclusion from patentability of computer programs as proposed in the Patents Bill now pending before the New Zealand Parliament.

Adopted March 23, 2010

[Supplemental Examination] — RESOLVED, IPO supports, in principle, legislation that would allow patent owners to request supplemental examination to consider, reconsider, or correct information relevant to their patents and provide that the patents shall not be held unenforceable on the basis of information so considered, reconsidered, or corrected. Specifically, IPO supports enactment of Section 10 of the draft substitute for S.515 made public on March 4, 2010.

[Statute of Limitations ] — RESOLVED, IPO supports, in principle, suspension or exclusion of patent practitioners from practice who commit fraud, concealment, or inequitable conduct in USPTO proceedings, but opposes legislation providing that the statute of limitations shall not run until information regarding the fraud, concealment, or inequitable conduct is made known to the USPTO.

[USPTO Fee Setting ] — RESOLVED, IPO opposes provisions in the March 4, 2010 draft substitute for S.515, H.R.1260, and the President’s 2011 budget that authorize the USPTO to increase and restructure fees through a rulemaking process. IPO supports a revolving fund amendment to patent reform legislation, however, to make all fee collections available to the USPTO, and supports appropriations legislation to create a “buffer” fund to enable the USPTO to use excess fee collections.

[Repeal of the “Baldwin Rule”] — RESOLVED, IPO opposes repeal of the second sentence of 28 United States Code section 44(c), which requires all judges on the United States Court of Appeals for the Federal Circuit to reside within a 50-mile radius of Washington, DC.

Adopted January 31, 2010
[Notice Pleading Restoration Act and Open Access to Courts Act] — RESOLVED, IPO opposes the Notice Pleading Restoration Act of 2009 (S. 1504, 111th Cong., 1st Sess.) and the Open Access to Courts Act (H.R. 4115, 111th Cong., 1stSess.).

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.

2008 Board Resolutions

Adopted December 3, 2008

[Principles for ACTA Negotiators] — RESOLVED, IPO urges U.S. negotiators to consider the following principles as provisions of the Anti-Counterfeiting Trade Agreement (ACTA) are discussed:
(a) Seek provisions that are consistent with IP provisions in existing U.S. Free Trade agreements and U.S. Law;
(b) Require parties to address the pervasive use of the Internet to facilitate dissemination and marketing of pirated works and counterfeit goods;
(c) Eliminate burdensome evidentiary requirements such as monetary or quantitative thresholds for administrative and criminal liability that may frustrate enforcement efforts; and
(d) Focus the agreement on trademark counterfeiting and copyright piracy offenses and advocate against addressing patents within ACTA’s legal framework, particularly any provisions on criminal liability and enforcement.

Adopted September 21, 2008

[Legislation addressing Biosimilars] — RESOLVED, IPO supports, in principle, legislation that would allow approval of a biological product as biosimilar to a reference biological product which:

  1. ensures patient safety by granting the FDA authority to approve biosimilars using a scientifically-based, case-by-case approach;
  2. promotes continued innovation by providing at least 14 years of data exclusivity for an innovator’s biological product with additional periods of exclusivity available for new indications and/or for approval for use in the pediatric population; and
  3. encourages efficient clarification of intellectual property issues by allowing confidential access to information reasonably relating to the infringement of any patents, including manufacturing and product information, and mechanisms for enforcing the confidential access requirement.

[Orphan Works Legislation] — RESOLVED, IPO, in principle, supports S. 2913, “The Orphan Works Act of 2008,” and urges the following changes to this legislation, or legislation relating to the same subject matter, before passage:

  1. Require that a determination of “reasonable compensation” take into account standard fees charged in the industry for similar works;
  2. Remove provision on injunctive relief;
  3. Remove provision on derivative works;
  4. Provide a shorter timeframe (4 years instead of 6) for the Register of Copyrights to develop a report to Congress on the effect of the legislation; and
  5. Require a reasonably diligent search before allowing another provision in the copyright act to override this legislation by allowing a statutory license.

[Commitments Articulated by and Made to Standards Organizations] — RESOLVED, that IPO policy is to support, in principle, that a Standards Setting Organization (SDO)’s patent policies and patent holder commitments should clearly state whether or not those commitments are (i) irrevocable, and (ii) binding on successors and assigns; and further, that IPO believes that patent owners and their assigns should comply with their commitments made to a SDO.

[Principles to Guide Local Patent Rules] — RESOLVED, IPO supports, in principle, adoption of Local Patent Rules and inclusion of provisions therein fostering the following practices:

  1. Early identification and mutual mandatory disclosure of essential infringement and validity related discovery and consideration of staying of non-essential discovery until after a Markman decision is issued in a case;
  2. Early disclosure and appropriate staging of detailed infringement and invalidity contentions;
  3. Early supplementation of detailed infringement and invalidity contentions supported by identification of specific evidence produced in the early mandatory disclosures;
  4. Scheduling the Markman hearing early in the case but after detailed contentions have been exchanged;
  5. Identification of claim limitations most important to outcome of the case; and
  6. Consideration of dispositive motions as early as appropriate to narrow issues or resolve cases without non-essential discovery.

Adopted June 20, 2008

[Judge’s Discretion in Issuing Protective Orders] — RESOLVED, IPO opposes S.2449, which would limit a judge’s discretion in issuing protective orders restricting the disclosure of information obtained through discovery, approving a settlement agreement, or restricting access to court records in a civil case.

Adopted March 18, 2008

[Counterfeiting Legislation: IP Enforcement Legislation Generally] — RESOLVED, that IPO supports, in principle, legislation that would (i) strengthen civil and criminal remedies and enforcement procedures for copyright piracy and trademark counterfeiting; (ii) enhance interagency coordination of intellectual property policy and enforcement through the creation of a permanent office within the Executive Office, with adequate funding, authority and accountability; and (iii) increase intellectual property enforcement resources within the various Federal agencies charged with combating counterfeiting and piracy offenses.

[Counterfeiting Legislation: Civil and Criminal Intellectual Property Laws] — RESOLVED, that IPO supports provisions of H.R. 4279 that would strengthen civil and criminal intellectual property laws by:
• Enhancing civil remedies for copyright infringement and trademark counterfeiting;
• Strengthening prohibitions and remedies against exports of infringing copyrighted works and goods bearing infringing trademarks;
• Harmonizing and strengthening forfeiture procedures for copyright and trademark counterfeiting offenses under title 18 of the United States Code; and
• Increasing criminal remedies for counterfeiting offenses where the offender knowingly or recklessly causes or attempts to cause serious bodily injury or death;
Provided, however, that IPO recommends further study of the need for, and impact of, provisions that would change the way statutory damages are calculated when copyrighted compilations are infringed.

[Counterfeiting Legislation: Interagency Coordination of IP Enforcement and Policy] — RESOLVED,  that IPO supports, in principle, provisions of H.R. 4279 that would establish a permanent IP enforcement office and representative within the Executive Office; provided, however, that IPO recommends further study and clarification of the duties and powers of the proposed IP enforcement representative vis-à-vis those of existing senior Administration officials with significant responsibility for intellectual property enforcement and policy.

[Counterfeiting Legislation: Increased IP Enforcement Resources and Coordination] — RESOLVED, that IPO supports, in principle, provisions of H.R. 4279 that would increase resources, coordination and transparency with respect to anti-counterfeiting and anti-piracy enforcement efforts; provided, however, that IPO recommends further study of the need for, and impact of, provisions that would create a new intellectual property enforcement division within the Department of Justice.

[Attorney’s Fees in Trademark Cases] — RESOLVED, that IPO supports, in principle, the amendment of 15 U.S.C. § 1117 to confirm that a prevailing plaintiff electing an award of statutory damages in lieu of actual damages and profits does not waive its entitlement to attorneys’ fees as a result of that election.

[Deposits of Biologic Material as part of a Patent Application] — RESOLVED, that IPO opposes changing the timing requirements placed on patent applicants for deposits of biological material associated with a particular application and the removal of restrictions on access to such deposits as proposed in 73 Fed. Reg. 9254 (Feb. 20, 2008).

Adopted January 30, 2008

[Exemptions for Replacement Automobile Parts] — RESOLVED, IPO opposes, in principle, legislation which would provide exemptions to U.S. intellectual property law to remove from infringement liability certain products or designs and believes the law should aim to treat all intellectual property rights similarly.  In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents.

2007 Board Resolutions

Adopted December 4, 2007

[Access to Confidential Information in Sec. 337 Actions at the ITC] — RESOLVED, IPO supports, in principle, procedures in Section 337 litigation to increase appropriate access of in-house counsel, licensed in the U.S., to confidential information produced in Section 337 investigations.

[Appointment of Sec. 337 Judges at the ITC] — RESOLVED, IPO supports the work of the ITC to resolve IP disputes and believes in the importance of effective and qualified Section 337 judges. However, absent further study showing otherwise, IPO believes that currently available methods may and should be used to appoint such judges in accordance with the Administrative Procedure Act, and IPO thus opposes Section 601 of S. 1919.

Adopted September 9, 2007

[Venue] – RESOLVED, That IPO confirms its support for legislation to limit venue in patent suits in order to curb forum shopping by patent owners and declaratory judgment plaintiffs and, specifically, IPO supports an amendment to section 1400(b) of title 28, United States Code, to limit venue to a judicial district:

  1. where the defendant has its principal place of business or is incorporated;
  2. where the defendant has committed acts of infringement and has a regular and established physical facility;
  3. where activities relating to the invention — such as inventing, substantial research and development, or manufacturing – have taken place;
  4. where a plaintiff or a subsidiary has a place of business that is engaged in substantial: (a) management of research and development or manufacturing activities, related to the patent or patents in dispute; (b) research and development; or (c) manufacturing activities; or
  5. for foreign defendants that do not meet any of the above, according to section 1391(d) of this title.

[Inequitable Conduct] — RESOLVED, That IPO does not support the Applicant Quality Submission Requirement or the Inequitable Conduct provisions of S.1145 and H.R.1908. Further, IPO believes the standards for establishing the defense of inequitable conduct should be raised, not lowered or remain the same, in order to improve patent quality and the interaction between examiners and applicants. The addition of a submission requirement would only heighten the need for such reform. Further, IPO believes that an Applicant Quality Submission requirement is not necessary or good policy, and reiterates that ALL applicants must be equally subject to the substantive PTO rules.

[First-Inventor-to-File] — RESOLVED, That IPO supports in principle prompt adoption of the first-inventor-to-file provisions of S. 1145 and H.R. 1908, and opposes making adoption of first-inventor-to-file contingent upon a finding that other countries have adopted a grace period. [Staff Note: At time of adoption H.R. 1908 contained such an contingency]

[Prior User Rights] — RESOLVED, That IPO confirms its support for enhancement of prior user rights to all fields of technology, including the substantial preparation requirement and removing the 1-year reduction to practice requirement, and, in addition, supports making the defense available not only to the person who performed or caused the performance of the acts necessary to establish the defense, but also to any other entity that controls, is controlled by, or is under the common control of such person.

[Patent Marking Statute] — RESOLVED, That IPO opposes amending the patent marking statute to limit the period for which damages can be obtained without notice of infringement, as called for in Section 4(c) of S.1145.

[Micro-Entities] — RESOLVED, IPO does not support exempting certain applicants from substantive or procedural requirements of patent law. IPO believes that ALL applicants must be held to the same substantive and procedural standards.

[Patenting Tax Strategies] — – RESOLVED, that IPO opposes any change to 35 U.S.C. 101 or limiting remedies that would expressly provide different treatment to tax strategies or methods as unpatentable subject matter, particularly as currently worded in H.R. 1908, or other bills, since it is unnecessary given current legal theories of the validity of such patents.

[Standards Development Organizations] – RESOLVED, that IPO encourages standards organizations to consider the following principles when setting policies that may affect intellectual property rights related to a particular technology:

  • Clear and Open: Recognizing that standards may include patented technology, SDOs should have written patent policies that are clearly stated and available to all;
  • No-one-size-fits-all: Recognizing that no single patent policy is appropriate for every SDO, each SDO should have the flexibility to adopt a balanced, clear, and available patent policy that meets the needs of the SDO and its members; and
  • Balanced: Recognizing the importance of patent policies in standards setting, SDOs patent policies should appropriately balance the interests of all stakeholders, including patent holders and implementers of the standards.

Adopted June 12, 2007

[Patent Venue] — RESOLVED, IPO supports, in principle, legislation that would a) limit venue for civil actions for patent infringement to curb forum shopping by patent owners and b) make a corresponding change to limit venue for declaratory judgment actions relating to patents.

[Random Assignment for Patent Cases] — RESOLVED, IPO supports, in principle, a random assignment system that would ensure that cases relating to patent matters would be equally assigned to judges throughout a judicial district regardless of the division in that district within which a case was filed, unless that district should participate in a pilot program that dictates otherwise.

[Increased Funding for the ITC] — RESOLVED, IPO endorses, in principle, the ITC’s request for increased funding for fiscal year 2008 in order to address the substantial rise in the ITC’s caseload of Section 337 investigations by ensuring that the ITC has the necessary resources to hire the judges, specialized attorneys, and staff needed to protect owners of U.S. intellectual property rights from infringing imports.

[Genomic Research and Accessibility Act] — RESOLVED, IPO opposes the proposed legislation, H.R. 977.

Adopted March 28, 2007

[Inequitable Conduct Reform] – RESOLVED, IPO supports, in principle, legislation as recommended by the National Academies of Sciences to modify or remove the subjective elements of patent litigation in order to increase predictability of patent dispute resolution, and specifically, IPO supports legislation to (1) limit or eliminate the unenforceability defense based upon inequitable conduct in patent litigation, (2) eliminate the requirement to disclose the best mode contemplated by the inventor of carrying out the invention, and (3) allow enhanced patent infringement damages to be awarded for “willful” infringement only in limited circumstances, such as those set forth in IPO’s Amicus Brief filed in In Re Seagate Technology LLC.

 

[Codification of the law of Apportionment of Damages: Specific Features] – RESOLVED, IPO supports amending section 284 of title 35, United States Code by adding the following text after the first paragraph:

 

“Where an infringer shows that an apportionment of economic value is necessary to assure that damages based upon a reasonable royalty do not exceed the economic value properly attributable to the use made of the invention, such apportionment shall exclude from the reasonable royalty calculation the economic value shown by the infringer to be attributable to the infringer’s incorporation into the infringing product or process of features or improvements, whether or not themselves patented, that contribute economic value to the infringing product or process separately from the economic value properly attributable to the use made of the invention.Where the claimant shows that the use made of the invention is the basis for market demand for an infringing product or process, the royalty may be based upon the entire market value of the products or processes provided to satisfy that demand.The court shall identify all factors relevant to the determination of a reasonable royalty under this section and the court or the jury, as the case may be, shall consider such factors in making the determination.”

 

[Federal Judiciary Pay] – RESOLVED, IPO supports, in principle, legislation to increase the salaries of the federal judiciary to restore those salaries to a level commensurate with historical norms and thereby preserve the independence of the federal judiciary.

[IPO Name Change] – RESOLVED, The following amendment to the Articles of Incorporation of Intellectual Property Owners, Inc. shall be submitted for a vote at the IPO Annual Meeting:

 

“The name of the Corporation is hereby changed to Intellectual Property Owners Association.”

 

Adopted Jan. 31, 2007

[Codification of the law of Apportionment of Damages: General] – RESOLVED, IPO believes that existing case law on damages in calculating a reasonable royalty is appropriate, and thus, IPO supports, in principle, amending 35 USC 284 to codify the existing law on damages for calculating a reasonable royalty. Further, IPO does not support the language contained in S.3818 [109th Congress] related to the amendment to Section 284 of Title 35, U.S. Code on damages.

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.

2005 Board Resolutions

Passed December 6, 2005

[Amendment to 35 U.S.C. 271(g)] — RESOLVED, IPO opposes legislation to remove the words “for the purposes of this title” from 35 U.S.C. Sec. 271(g).

[PTO Fees and Funding ] — RESOLVED, IPO supports, in principle, legislation to permanently end the practice of diverting PTO user fees for unrelated government programs, and specifically, IPO supports enactment of H.R.2791, 109th Congress, 1st Session, as long as it permanently ends the practice of diverting PTO user fees for unrelated government programs.

Passed September 13, 2005

[IPO Support for 9/1/2005 Coalition Print, 109th Congress] — RESOLVED, IPO Supports in principle the Coalition Print compromise draft bill dated September 1, 2005 and urges the House of Representatives to pass such legislation in lieu of patent reform bill, H.R.2795.

Passed June 24, 2005

[Third-Party Submission of Prior Art at the USPTO] — RESOLVED, that IPO supports amendment of the patent laws to add a new section 122(e) in order to afford patent applicants the advantage of having published art submitted by third parties, with concise descriptions of purported relevance, considered during examination, rather than waiting to do so during a post-grant opposition, and to amend section 122(c) to allow for submissions in compliance with new section 122(e), provided such proceedings include the following attributes:

  1. the submission permitted under the amendment is limited to provision of published art to be considered under 35 U.S.C. §§ 102, 103 or 112 and a concise description of its purported relevance;
  2. no submission may be made under the amendment once a notice of allowance has been mailed to the applicant, and
  3. prior to mailing of a notice of allowance, no submission may be made under the amendment after the later of: (a) six months after the date on which the application for patent is published, or (b) the date of an office action indicating that one or more claims in the application have been rejected.

Passed January 30, 2005

[Trademark Dilution] — RESOLVED, that the IPO, in order to strengthen the rights of trademark owners, supports, in principle, legislation to amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment to provide greater clarity regarding protection afforded under the statute, better define the standard of proof of dilution and clarify protection for free speech interests.

[Anti-Counterfeiting] – RESOLVED, that the IPO supports, in principle, H.R.32, the Stop Counterfeiting Manufactured Goods Act, legislation which would strengthen the criminal statute to effectively address trafficking in counterfeited goods.

[Patent Law Harmonization: “One Application”] – RESOLVED, Patent offices should move towards the adoption of a common patent application standard so that conforming applications can be electronically filed and prosecuted in any patent office without the need for any change to accommodate local rules. A first step towards this goal should be the adoption of a common patent application format by the trilateral offices, based generally on PCT format, so that conforming applications (i) can be filed, preferably electronically without the need for any change in the submitted application to accommodate national/regional rules, and (ii) aid in facilitating machine translation of the application.

[Establishing a Post-Grant Opposition System] — RESOLVED, that the Intellectual Property Owners Association supports amendment of the patent laws to establish post-grant opposition proceedings in which patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, provided such proceedings include the following attributes:

 

1. [Time for Filing] – Any request for a post-grant opposition must be made no later than 9 months after the date of the patent grant;

2. [Grounds] – Any ground of patentability, with the exception of “best mode” (35 U.S.C.§ 112, 1) and derivation (35 U.S.C. § 102(f)), may be raised in the request, but no issues of priority of invention (35 U.S.C. § 102(g)) nor enforceability shall be considered;

3. [Threshold Showing] – Any party requesting initiation of an opposition proceeding shall be required to make a threshold showing of unpatentability of at least one claim of the patent before the patent owner is required to respond to the opposition;

4. [Discovery] – Discovery from a party to an opposition shall be limited to cross-examination of declarants;

5. [Additional Evidence] – Following initiation of a post-grant opposition proceeding, the party requesting the proceeding shall not be permitted to advance a new ground of unpatentability in the opposition proceeding;

6. [Claim Amendments] – The patent owner shall have the right to amend its claims in its response to the initial request and after any new prior art is presented by an opponent after filing its initial request;

7. [Other USPTO Proceedings] – No party to the opposition proceeding shall be prevented by the opposition proceeding from filing other concurrent or subsequent proceedings in the United States Patent and Trademark Office;

8. [Standard of Proof] – The standard of proof to be applied for determining patentability* of a claim during a post-grant opposition proceeding shall be the clear and convincing evidence standard;

* NOTE: A Board member pointed out after the meeting that technically “patentability” should be “unpatentability.” The standard referred to is the standard faced by the party challenging the patent.9. [Estoppel] – A judgment in favor of patentability of any claim in the opposition proceeding shall estop the opposer from challenging validity of that claim in other proceedings on the basis of evidence and prior art presented during the opposition proceeding;

10. [Duty of Disclosure] – The patent owner’s duty of disclosure during the opposition shall be no greater than that applicable to a party in litigation before a Federal court;

11. [Length] – The opposition proceeding shall conclude within 12 months of the expiration of the 9-month post-grant request period and any patent claim surviving the opposition proceeding unamended shall be subject to day-for-day patent term adjustment for any period of pendency of the proceeding beyond the 12 months, excluding delays caused by the patent owner;

12. [Identity of Opposer] – Any party requesting initiation of a post-grant opposition proceeding must disclose its identity to the patent owner in the opposition proceeding;

13. [Infringement Suit] – In the event an infringement action is brought against an accused infringer prior to the filing of a post grant opposition request by the accused infringer, then any opposition proceedings involving the patent shall be stayed until the infringement action is finally resolved;

14. [Appeal] – Judicial review of a post-grant opposition proceeding shall be exclusively by way of appeal to the Court of Appeals for the Federal Circuit;

15. [Consolidation] – Multiple oppositions against a single patent shall be consolidated into a single opposition action following the expiration of the nine-month filing period; and,

16. [Right to Hearing] – Parties to an opposition shall have the right to a hearing before the decision of USPTO on the opposition is reached.

[IPO responses to the National Academy of Sciences (NAS) report recommendations issued in 2004:]

 

[Patent System Principle, NAS Rec. 1] – IPO agrees with NAS that it is vital to “Preserve an open-ended, unitary, flexible patent system.”[Title 35 USC §101, NAS Rec. 1] – IPO agrees with NAS that Title 35 USC § 101, the present U.S. statute providing the definition of subject matter that can be patented, should not be changed. This statute, as interpreted by the Supreme Court and the United States Circuit Court of Appeals for the Federal Circuit (“Federal Circuit”), is open to new technologies.

[USPTO Examination Guidelines, NAS Rec. 1] – IPO agrees with NAS that the USPTO should continue to develop examination guidelines for new or newly-patented technologies, as it has done for computer programs, business method inventions, living subject matter, and genetic inventions. In developing such guidelines, IPO agrees that the USPTO should continue to seek advice from a wide variety of sources and maintain a public record of the submissions, so the parties to a court proceeding and other interested members of the public can cite the public record of the results of development of examination guidelines, as they deem suitable.

[Federal Circuit Amicus Briefs, NAS Rec. 1] – IPO agrees with NAS that the Federal Circuit should encourage the submission of amicus briefs to address any significant public policy concerns.

[Federal Circuit Operations, NAS Rec. 1] – IPO agrees with NAS that the Court of Appeals for the Federal Circuit should continue to arrange for temporary exchanges of members with other courts.

[Federal Circuit Judges, NAS Rec. 1] – IPO agrees with NAS that judges appointed to the Federal Circuit should include people familiar with innovation from a variety of perspectives.

[Post Grant Review, NAS Rec. 3] – IPO is on record as favoring the adoption of a new administrative procedure to allow post-grant review of, and opposition to, patents.

[PTO Fee collections, NAS Rec. 4] – IPO has consistently advocated that the USPTO must receive all of the fees it collects, to achieve the goals of high quality, reasonably short pendency, and cost efficiency.

[Inequitable Conduct, NAS Rec. 6] – IPO does not favor de novo review by the Federal Circuit of district court findings of inequitable conduct.

2004 Board Resolutions

Passed September 12, 2004

[Treatment of IPO Board Passed Resolutions]  RESOLVED, that the text of resolutions passed by the IPO Board of Directors shall be published on the public portion of the IPO website or elsewhere except, if any Board Member objects, the Board will decide if it should be published.

[PCT Proposed Fee Increase] — RESOLVED, IPO opposes the proposed 12 percent increase in the Patent Cooperation Treaty International Filing Fee in light of last year’s increase until and unless the World Intellectual Property Organization (WIPO) provides information necessary to justify such an increase.

Passed July 13, 2004

[International Exhaustion of Patent Rights] — RESOLVED, that IPO opposes in principle legislation 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 that was first sold abroad by or under authority of the owner of the patent, and specifically, IPO opposes the amendment to section 271 of title 35, United States Code, proposed in S.2328, 108thCongress, 2nd Session.

Passed February 3, 2004

[Employee Remuneration] — RESOLVED, that IPO favors in principle laws that give private employers and employee-inventors freedom to contract for the amount of employee compensation and permit enforcement of invention assignment agreements as a condition of employment.

2003 Board Resolutions

Passed January 28, 2003


[Jurisdiction over IP Counterclaims]
 – RESOLVED, that IPO will advocate a legislative change to 28 U.S.C. §1338(a) to provide original jurisdiction in federal district courts over all claims for relief under the patent laws, whether by claim or counterclaim.

Passed April 7, 2003

(Below resolutions approved in principle by IPO Board of Directors in email vote completed March 26, 2003; Final edited versions approved at the April 7, Board meeting)

[Effective Date Of Fee Legislation] – RESOLVED, IPO urges that legislation to increase patent and trademark fees for the purpose of implementing the revised “21st Century Strategic Plan” not take effect before
October 1, 2003.

[Sunsetting of Increased Fees] – RESOLVED, IPO urges that any legislation to increase patent and trademark fees for the purpose of implementing the revised “21st Century Strategic Plan”  provide that on October 1, 2006 fees will revert to a level that will make total fee collections equal to the amount, adjusted for inflation, that would have been collected without the legislation, unless the legislation is extended by act of Congress based on the success of the strategic plan.

[Administration Opposition to Diversion of Fees] –  RESOLVED, that IPO urges the Administration to issue a policy statement disapproving of diversion of patent and trademark fees from the USPTO to unrelated government programs.

[Search Fee Fixed by Congress] – RESOLVED, that IPO supports legislation establishing a fee for searching patent applications only if the amount of the fee is fixed by Congress in the legislation.

[Support for Fee Bill to Raise Amount Equal to FY04 Appropriations] – RESOLVED, that IPO supports (1) an FY04 USPTO appropriation of up to $1.5 billion determined by Congress to be needed for implementation of the revised “21stCentury Strategic Plan” and (2) legislation to increase patent and trademark fees to raise the projected amount collected by the USPTO for FY04 to the amount of such appropriation.

[Publication of Search Report At Same Time as 18-Month Publication of Patent Application] –RESOLVED, that IPO supports legislation allowing the USPTO the option of  obtaining patent application search reports before examination begins, provided, for applications filed after a transition period following enactment, the legislation (1) requires making the search report available to the applicant in advance of the expiration of the period in which to request examination and (2) requires the USPTO to publish (i) the application, (ii) the search report, and (iii) the fact that examination has been requested, no later than18 months after the effective filing date.

[Support for Revised Strategic Plan Subject to Testing] – RESOLVED, that IPO supports the USPTO’s 21st Century Strategic Plan as revised February 3, 2003, subject to the reporting of satisfactory results from timely and comprehensive testing and evaluation of new patent searching and examining procedures to determine their cost effectiveness and effect on patent quality, after an opportunity for the public to comment, and, where appropriate, prompt and successful completion of pilot projects before office-wide introduction of new procedures.


Passed
 June 4, 2003

[Affirmative Requirements For Enhanced Damages; Mere Knowledge of A Patent Insufficient]  – RESOLVED, that Intellectual Property Owners Association supports in principle the amendment of Title 35 of the United States Code to ensure that enhanced patent infringement damages may not be awarded:

  • based merely upon the knowledge of a patent or its contents by the defendant prior to suit, nor
  • for any infringement occurring prior to the defendant’s receipt of written notice from the plaintiff of a charge of infringement, which must identify the specific patent, claims and allegedly infringing products or process at issue and be sufficient to give the defendant an objectively reasonable apprehension of suit on such patent, unless:
    • the infringer intentionally copied the patented subject matter with knowledge that it is patented; or
    • the patent was asserted against the infringer in a previous U.S. judicial proceeding, and the present infringement is not more than colorably different than the conduct asserted to be infringing in the previous proceeding.

[Effect of Opinion of Counsel on Willfulness Determination] — RESOLVED, that Intellectual Property Owners Association supports in principle the amendment of Title 35 of the United States Code to ensure that:

  • a finding of willful infringement shall not be based solely upon the absence of an opinion of counsel, and
  • the absence of an opinion of counsel shall not create a negative inference that the infringement was willful.

[USPTO PROPOSAL FOR POST-GRANT OPPOSITION] – RESOLVED, that the Intellectual Property Owners Association favors, in principle, that the patent laws should be amended to establish proceedings in which patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Appeals and Interferences of the United States Patent and Trademark Office.

PROVIDED that the proceedings are implemented with sufficient mechanisms in place to achieve the public’s interest in readily available, reasonably prompt and cost effective procedure for a determination of the patentability of one or more patent claims, without creating an undue burden on patentees to defend their patents against frivolous assertions and with adequate procedures designated to protect a patentee from harassment.

[USPTO Proposal for Expanded Reexamination] – RESOLVED, that the Intellectual Property Owners Association favors, in principle, that in the event that a post-grant opposition proceeding is not established in the near future that will allow for review of the patentability of issued patent claims, the patent laws should be amended to expand the existing reexamination proceedings of the United States Patent and Trademark Office.


Passed
 September 14, 2003

[No Expansion of Declaratory Judgment] – RESOLVED, that IPO does not favor the expansion of declaratory judgment to allow a party that does not have a reasonable apprehension of being sued under a patent to nonetheless institute suit seeking a declaration that that patent is invalid, unenforceable and/or not infringed.

[Repeal of 35 U.S.C. § 135(b)(2)] – RESOLVED, that IPO favors, in principle, that the patent laws should be amended to eliminate the provisions of 35 U.S.C. 135(b)(2), which creates a bar to a determination of priority of invention in those instances in which a claim to the same invention is not presented in an application for patent within one year of the publication date of claims to the same invention, either in a publication of a U.S. patent application or in a WIPO publication of an International application.

[Clarifying the Law of Double Patenting] – RESOLVED, that IPO favors in principle limiting the law of obviousness-type double patenting so that it will apply only if and when, respecting two claims in two patents, all of the following three conditions apply:

(a) neither patent qualifies under sections 102 and 103(c) as prior art with respect to the claim in the other patent;

(b) the two patents have different expiration dates, or are not commonly owned; and

(c) the claim having the later priority date, or either of two claims having the same priority date, is an obvious variation of the other claim.

2002 Board Resolutions

Passed May 2, 2002

[Amicus Brief on the Copyright Term Extension] – RESOLVED, that the Amicus Brief Committee prepare a draft amicus brief for review by the IPO board in support of the respondent, the US government, stating that Congress’ enactment of the Copyright Term Extension Act was constitutional.

[PCT and delayed search and examination procedures] – RESOLVED, IPO favors in principle a more flexible system for the searching and examination of all U.S. applications for patent that would permit patent applicants to delay commencement of search and/or examination (and to delay the payment of fees associated therewith) for approximately the same period an international application under the Patent Cooperation Treaty can delay the commencement on National Stage processing, provided that such delay period is not longer than six months after the PCT Chapter II deadline.

Passed June 21, 2002

[Expert Witness Fees] – RESOLVED, that IPO will advocate legislative change to 35 U.S.C. 285 that would permit the recovery of expert witness fees in exceptional cases.

Passed Sept. 10, 2002

[Quality, Early Clarification of Rights, and Cost-Effectiveness] – RESOLVED, That IPO favors a patent system that: (1) grants high quality, valid, and enforceable patents, (2) achieves the earliest possible clarification of the scope of protection for patent owners and the areas of freedom of action for the public, and (3) operates in the most cost-effective manner possible, including in the determination of patent rights in the U.S. Patent and Trademark Office (USPTO) and the enforcement of those rights in the courts.

[Fee Increases to be Used for USPTO] –RESOLVED,  that IPO supports reasonable and necessary fee increases as required to fund improvements to the USPTO if assurances are provided that such funds will be used exclusively by the USPTO.”  (Staff authorized to edit)

[Fees to Reflect Cost of Services] – RESOLVED, That IPO urges individual fees be set at levels to cover the costs of providing services to users of the USPTO, and not be set at higher levels than cost for the purpose of penalizing users of USPTO services. (Staff authorized to edit)

[Support Amendment to Make Previously Withheld Services Available] – RESOLVED, That IPO urges Congress to make previously withheld USPTO fees available for use by the USPTO, and SPECIFICALLY, supports an amendment to the Senate Appropriations bill in order to make previously withheld fees available to the USPTO in 2003.

[Support 18 Months Pendency From Actual Filing Date] – RESOLVED, That IPO favors completion of examination of all patent applications as soon as reasonably practical after filing and affirms its support for the longstanding goal of achieving an18-month average pendency of all patent applications in the U.S. Patent and Trademark Office (USPTO) measured from the time applications are actually filed in the USPTO, and, SPECIFICALLY, IPO supports the development of a comprehensive plan by the USPTO to achieve that goal as soon as practicable.

[Oppose Incorporating New Forms of Deferred Examination into Statute] – RESOLVED, That IPO opposes incorporating into the Patent Act any statutory provisions to institutionalize any new form of deferred examination.

[Support Worksharing With Foreign Offices If No Deferral Beyond 30 Mos.] – RESOLVED, That IPO supports bilateral efforts with foreign patent offices that would result in some “work sharing,” but opposes any agreement that would produce an opened-ended deferral of the start of substantive U.S. patent examination for any foreign-origin patent application and, SPECIFICALLY, IPO opposes any deferral extending beyond the National Stage Entry date, 30 months from the priority date, under the Patent Cooperation Treaty.

[Support Unity of Invention and Any Necessary Increase in Fees] – RESOLVED, That IPO affirms its support for a change in the patent statute to adopt the “unity of invention” standard as the basis for restricting the examination of patent applications to a single invention and, FURTHER, IPO supports an increase in patent fees to the extent necessary to recover any incremental increase in the cost of examining a patent application under this standard for restriction.

Passed Nov. 3, 2002

[Universal 18-Month Publication] – RESOLVED, that Intellectual Property Owners Association favors legislation requiring publication of all United States patent applications promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under Title 35 of the United States Code.

[First-to-File Patent System]– RESOLVED, that Intellectual Property Owners Association favors legislation granting priority to the inventor having the earliest filing date for which a benefit is sought under Title 35 of the United States Code, in the event interfering patent applications are filed.

[Assignee Filing, Oath, Misjoinder, Inventor’s Right to Apply, Naming of the Inventor] – RESOLVED, the Intellectual Property Owners Association supports in principle a coordinated set of amendments to the U.S.patent laws that–

  • remove the prohibition on assignee filing (35 U.S.C. §118),
  • simplify the filing of the applicant’s filing oath (35 U.S.C. §115),
  • remove misjoinder as a defense to patent validity (35 U.S.C. §256),
  • secure the inventor’s rights by granting the inventor the sole right to apply for a patent, unless assigned (35 U.S.C. § 101), and
  • simplify the correction of naming of the inventor in patents and applications for patent (35 U.S.C. §25).

[European Patent Litigation Protocol] – RESOLVED, that the IPO supports in principle efforts by European governments to establish a European Patent Litigation Protocol to improve the enforceability and legal certainty of European patents and, SPECIFICALLY, the IPO supports the establishment of a centralized patent enforcement system that will provide common procedural laws and rules, including first-instance and second-instance courts, that will ensure uniform interpretation of European patents and will provide adequate infringement damages to patent owners.

2001 Board Resolutions

Passed April 18, 2001

[Fee Withholding as a Taking under the 5th Amendment] – RESOLVED, IPO agrees that based on legal precedent, that the act of Congress of diverting fees from the other PTO funds raises a serious and substantial question of taking under the fifth amendment, and that the full IPO Board ratifies as of this date the IPO testimony before Congress last year that was approved by the Executive Committee and which questioned the constitutionality of diverting fees on direct tax grounds.

[Patent Harmonization] – RESOLVED, IPO supports international patent law harmonization efforts where the long-term goals are:

(1)        to achieve dramatic improvements in quality of patent examination and sustained reductions in the costs of acquiring multinational patent protection for inventors and industry by (a) fully harmonizing substantive laws regarding patents and patent applications, (b) adopting common procedural practices and requirements regarding patent applications; (c) eliminating unnecessary translation requirements; and (d) reducing or eliminating patent office fees whenever they are in excess of the costs of operating the office;

(2)        to eliminate work by national patent offices that, with respect to harmonized substantive laws regarding patentability, represents redundant searching and examining of the same application;

(3)        to reduce the overall times of pendency of multinational patent applications, which times are now increasing alarmingly in the major patent offices of the world, including the United States PTO;

(4)        to develop cooperative practices and tools relating to standards for examination and examination procedures to assure uniformity in the scope of the patents granted by patent offices implementing harmonized laws on substantive patentability.

(5)        to provide consistency and certainty in patent enforcement, including in principles of claim interpretation, and to assure prompt resolution of patent controversies by enforcement authorities.

[Patent Harmonization] – RESOLVED, In support of international patent law harmonization efforts, IPO specifically supports:

(1)        the expansion of cooperative relationships among the major patent offices, including the establishment of joint projects of search and examination by major offices, and, to the extent permitted by harmonization of the laws of substantive patentability, the establishment of systems of full-faith and credit of one office’s searches and examinations by the other cooperating offices;

(2)        accelerated establishment of comprehensive and universally accepted databases of information that qualifies as prior art and access to and use of such databases by the public and all examining patent offices;

(3)      the substantive harmonization of the patent laws of the major patent systems, including specifically, the efforts of the Standing Committee on Patents of WIPO; and

(4)      the further harmonization and unification of regional patent systems, to the extent such efforts are consistent with the efforts of objectives (1) through (3), such as those of the European Commission to establish a single patent that would have effect throughout the European Union.

Passed June 5, 2001

[Overruling In re Portola Packaging] – RESOLVED, IPO favors overruling In re Portola Packagingand recognizing that prior art of record could be the basis for a substantial new questions of patentability.

[No inclusion of IP rights in WTO trade negotiations while Trips Implementation is ongoing] – RESOLVED, IPO reaffirms its support for strong intellectual property rights, and IPO does not favor including IP rights in any new round of WTO trade negotiations while implementation of the Trips Agreement is underway.

[Support of continued availability of EPO search and exam] – RESOLVED, IPO Supports, in principle continued availability of EPO searching and examining of US-origin PCT applications.