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Council Selects Resolutions for
Summer Conference Debate
The Section Council met on April 26 to discuss
resolutions proposed by the Section Committees for adoption as Section
policy. From these, the Council selected two from various areas
of IP law for debate during this year's Summer IPL Conference. There
will be additional presentations on current topics in the field,
so a lively debate will be held. The remainder of the proposed resolutions
were approved, allowed to rest as committee reports or recommitted
to the committees for further consideration.
The following resolutions will be debated at
the Summer IPL Conference, at the Section Business Session, Thursday,
June 23, 2005. To access the committee report that accompanies each
proposed resolution, visit the Section website at www.abanet.org/intelprop/summer2005/business-session.
If you have questions, contact the Section at intelprop@abanet.org,
or call 312/988-5598.
Provide Comments
All members should review the proposed resolutions immediately.
If you have any objections to the classification or suggested changes
to any proposed resolution, please contact the appropriate committee
chair prior to the debate on the resolution (indeed, if possible,
prior to the meeting). Each committee chair's address, telephone
number and e-mail address can be found on the Section website. If
you need help in locating a committee chair, contact the Section
office. This procedure should expedite the making of non-controversial
changes in form and allow more time for debate on the substantive
issues presented by the resolutions.
Register
Conference information and online registration can be found on the
Section website, www.abanet.org/intelprop/summer2005.
Registration brochures for the Summer IPL Conference are in the
mail.
Support the Section resolution process and register
today to attend the 2005 Summer IPL Conference in San Francisco.
Rules of Debate
Robert's Rules of Order Newly Revised (10th edition) will govern.
Each resolution will be introduced followed by a four-minute
statement in favor of the resolution. The first speaker against
will be allowed the same time. If anyone wishes to volunteer for
this task please contact Betsi Roach ASAP.
Debate will proceed alternating between pro and con
until all speakers for one or the other position have been heard.
The time limit for each is one minute. A speaker may speak only
once per resolution. No repetition. If your point has been made,
please do not try to repeat it.
The Section Parliamentarian, Morton David Goldberg,
will advise the Chair on enforcing the rules.
Procedure For Additional Resolutions
to Be Presented
The following procedures will be followed for resolutions presented
to the Resolutions Committee for consideration at the 2005 Summer
IPL Conference:
1. Each noncommittee report resolution intended for consideration
by the Section prior to the Business Session of the Summer IPL Conference
must be submitted as an e-mail attachment to the chair of the Resolutions
Committee and to the IPL Section Director for receipt no later than
May 23, 2005. Resolutions received thereafter will not be considered
by the Section prior to the Business Session unless the Section
Chair rules otherwise.
Any resolution submitted in this manner should be accompanied by
the name and conference address of its proponent. The proponent
shall recommend the desired action by the Committee, e.g. "full
debate when Committee 102 resolutions are considered," and
shall also indicate whether or not a hearing before the Committee
is desired.
With respect to each resolution properly before it in accordance
with this paragraph, the Committee will make one or more of the
following recommendations:
The resolution should be considered by the Section in connection
with a specific Committee report, as a special order of business,
or as New Business;
The resolution should be amended in some specified manner or that
a substitute resolution should be considered.
The resolution should be referred to an appropriate committee for
study during the coming year.
The Committee's recommendations will be submitted to the Section
Chair for a decision prior to the Business Session.
2. Any resolution to be submitted to the Section as New Business
at the Conference must first be submitted to the Resolutions Committee
in typewritten form so that a sufficient number of copies may be
made before such resolution is considered by the Section. Any such
resolution must be accompanied by the name and Conference address
of its proponent.
The Committee will consider any such resolutions properly
before it and make recommendations in accordance with (1) above.
During the Business Session, these recommendations shall be reported
to the Section for decision by the Section Chair, subject to approval
of the Section.
If requested by the proponent, the Committee will
also specify a time and place for a hearing, should the Committee
agree that a need for a hearing exists. Failure of a proponent to
appear at an announced hearing may, at the Committee's discretion,
amount to withdrawal of the subject resolution.
The Section Chair may place on the agenda and announce
a time certain when the Resolutions Committee will again report
to the Section.
3. Late committee reports containing at least one
resolution with a favorable committee vote shall be submitted to
the Resolutions Committee at the same time they are submitted to
other Section personnel who normally receive such reports. If received
by the Committee no later than May 23, 2005, the Committee will
make recommendations with respect to any approved resolutions in
accordance with paragraph (1) above.
4. Should a proponent wish to submit to the Resolutions
Committee a resolution which is the same or substantially the same
as one considered but not approved by a committee of the Section,
the proponent shall:
a. make known to the Resolutions Committee such prior action;
b. make a strong showing of urgency;
c. appear in person before the Resolutions Committee prior to the
Council Meeting preceding the Business Session or, if unable to
do so, arrange a conference call with the Committee to discuss the
resolution; otherwise, the resolution will be referred to the appropriate
committee for further study the following year.
5. All resolutions received after the 2005 Summer
IPL Conference to be considered at the Business Session of the ABA
Annual Meeting will be processed as is set forth above, except that
the words "Annual Meeting" are to be substituted for "Conference"
whenever appropriate.
2004-2005 PROPOSED RESOLUTIONS
With Classifications Made by Council on April
26, 2005
Patent Cooperation Treaty
Class 2 Approve - by Council on September 14, 2004.
RESOLVED: Section of Intellectual Property Law opposes in principle
any increases in PCT fees not adequately supported by an appropriate
and justifying analysis, and specifically opposes the proposed readjustment
of the International Filing Fee contained in document PCT/A/33/5
dated August 20, 2004 proposing an increase in the International
Filing Fee of 12%.
Substantive Provisions For Implementation Of a First-Inventor-To-File
Standard (Omnibus Resolution)
Class 2 Approve - by Council on January 23, 2005
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European countries that mandates U.S. adoption
of a first-inventor-to-file system, eliminating from U.S. patent
law:
(1) abandonment as set forth in 35 U.S.C. §102(c)
as a basis for a loss of right to patent;
(2) premature foreign patenting as set forth in 35
U.S.C. §102(d) as an element of prior art or a basis for a
loss of right to patent;
(3) an inventor's forfeiture of his or her right to
patent an invention once placed "in public use or on sale"
as set forth in 35 U.S.C. §102(b) by providing that no such
loss of right to patent an invention can arise unless the invention
had become reasonably and effectively accessible to persons of ordinary
skill in the art more than one year before the inventor sought a
patent for the invention;
(4) prior art as set forth in 35 U.S.C. §102(f),
under which non-public knowledge of the inventor, not otherwise
qualifying as prior art, can render an invention made by such inventor
obvious, by:
(A) repealing section 102(f) and
(B) codifying elsewhere in Title 35 that the right
to seek and obtain a patent is solely the right of the individual
or individuals who made the invention for which a patent is sought
(or, where applicable, the assignee of such inventor);
(5) the provisions currently in 35 U.S.C. §102(g)
providing that "secret prior art" (and/or loss of right
to patent) can exist as from the date an invention of another inventor
was made;
(6) the provisions currently in 35 U.S.C. §§102(a),
(e), and (g) that permit the inventor to rely upon proofs of dates
of invention in order to eliminate as prior art to an invention
subject matter that would otherwise represent prior art relative
to the effective filing date for the invention;
(7) the geographic restrictions on prior art currently
in 35 U.S.C. §§102(a) and (b) that require proofs of knowledge
or use in the United States;
(8) the English language requirement currently in
35 U.S.C. §102(e), relating to published international applications
for patent that can qualify as prior art as of their respective
filing dates; and
(9) the requirement to disclose the "best mode"
as set forth in 35 U.S.C. §112, first paragraph, and
SPECIFICALLY, the Section supports treaty implementing
legislation providing for the adoption of a first-inventor-to-file
rule under which, after eliminating existing "loss of right
to patent" provisions currently in 35 U.S.C. §102 in the
manner set forth above, prior art for determining both novelty and
non-obviousness of a claimed invention in an application for patent
would exist (subject, however, to the existing judge-made law on
"obviousness-type double patenting") when and only when:
(1) the claimed invention was known (by virtue of
being patented or described in a printed publication or otherwise
known);
(A) before the effective filing date of the claimed
invention, other than through disclosures made by the inventor or
by a joint inventor or by others who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor,
or
(B) more than one year prior to the effective filing
date of the claimed invention, or
(2) the claimed invention was described in a U.S.
patent, or in a U.S. nonprovisional or international application
for patent, published as provided in Title 35 or the Patent Cooperation
Treaty, in which the application or the patent names another inventor
and was effectively filed before the effective filing date of the
claimed invention;
PROVIDED, FURTHER, with respect to determining novelty
and non-obviousness in accordance with items (1) and (2) in the
foregoing clause, that:
(1) subject matter developed by a person other than
the inventor that would have qualified as prior art under item (2)
above but not under item (1) above would not be prior art to a claimed
invention where the subject matter and the claimed invention were,
not later than the effective filing date of the claimed invention,
owned by the same person or subject to an obligation of assignment
to the same person;
(2) subject matter would be regarded as known for
the purposes of item (1) above only when it becomes reasonably and
effectively accessible, either through its use or through its disclosure
by other means where;
(A) reasonable accessibility requires that the subject
matter can be accessed by persons of ordinary skill in the art to
which the subject matter pertains without resort to undue efforts
and
(B) effective accessibility requires that its content
can be comprehended by persons of ordinary skill in the art to which
the subject matter pertains without resort to undue efforts; and
(3) until a twelve-month grace period becomes effective
under the patent laws of the member states of the European Patent
Convention and in the patent law of Japan, the grace period under
which disclosures made directly or indirectly by the inventor would
only apply to disclosures made up to twelve months preceding the
effective filing date in the United States; and that the following
past actions of the Section inconsistent with this resolution are
rescinded and, for past actions that are a position of the Association,
the Section recommends rescission by the House of Delegates:
(A) 1992 AR124-R108-9 (opposition to elimination of
"best mode");
(B) 1967 S.SP 76-ABA 1967 (opposition to foreign knowledge
or use as prior art), for which the Section additionally supports
and recommends rescission of the resolution by the Association;
(C) 1983 SP 52-R108-4 (removal of co-worker "secret"
prior art, except for prior-art based on filing of patent/published
application of co-worker inventor);
(D) 1984 SP 37-R101-7 (removal of co-worker "secret"
prior art, 35 U.S.C. §102(f) and 35 U.S.C. §102(g), but
not prior-art based on filing of patent/published application of
co-worker inventor under 35 U.S.C. §102(e));
(E) 1992 AR125-R108-10A (right of inventor in prior
art patent to prove prior invention as prior art under 35 U.S.C.
§102(g) to same degree as prior inventor who did not seek a
patent for the invention), and
(F) 2002 AR104-R101-11 (excluding from "on sale"
bar sales to the patentee).
Grace Period
Class 3 - Rest as Committee Report
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European countries that mandates U.S. adoption
of a first-inventor-to-file system, the adoption of an "international
style grace period," and
SPECIFICALLY, the Section supports treaty implementing legislation
which supports the adoption of a grace period in which a disclosure
of information anywhere in the world which would otherwise affect
the patentability of an invention shall not affect the patentability
of an invention claimed in an application where the information
was disclosed directly or indirectly by the inventor, or by a third
party which obtained the information directly or indirectly from
the inventor, during the 12 months preceding the filing date, or
where priority is claimed, the priority date of the application.
Absolute Novelty
Class 3 - Rest as Committee Report
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European countries that mandates U.S. adoption
of a first-inventor-to-file system, the adoption of a definition
of prior art that has no geographic restrictions, and
SPECIFICALLY, the Section supports treaty implementing legislation
defining prior art as disclosure anywhere in the world which is
reasonably and effectively accessible to persons of ordinary skill
in the art, and that the following past action of the Section inconsistent
with this resolution is rescinded.
Secret Prior Art
Class 3 - Rest as Committee Report
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European countries that mandates U.S. adoption
of a first-inventor-to-file system, applying previously filed, subsequently
published prior art as of its effective filing date for the purposes
of both novelty and obviousness, and
SPECIFICALLY, the Section supports treaty implementing legislation
defining prior art to require that patents and published applications
(including International applications published in any language)
filed as national applications in the United States or filed under
the Patent Cooperation Treaty, in which the application or the patent
names another inventor, shall have a prior art effect from their
effective filing date and can be used for the purposes of both novelty
and obviousness, so long as the subject matter of the prior art
and the subject matter of the claimed invention do not name the
same inventor or, not later than the filing date of the claimed
invention, are owned by the same person or subject to an obligation
of assignment to the same person, but subject to the existing judge
made law on obviousness-type double patenting, and that the following
past actions of the Section inconsistent with this resolution are
rescinded:
(A) 1983 SP 52-R108-4 (removal of co-worker "secret"
prior art, except for prior-art based on filing of patent/published
application of co-worker inventor);
(B) 1984 SP 37-R101-7 (removal of co-worker "secret"
prior art, 35 U.S.C. §102(f) and 35 U.S.C. §102(g), but
not prior-art based on filing of patent/published application of
co-worker inventor under 35 U.S.C. §102(e)).
Loss of Rights
Class 3 - Rest as Committee Report
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European Countries that mandates U.S. adoption
of a first-inventor-to-file system, the elimination of "loss
of Right to patent" provisions currently in 35 U.S.C. §102,
and
SPECIFICALLY, the section supports treaty implementing legislation
which would eliminate:
a) abandonment as set forth in 35 U.S.C 102 (c ) as a basis for
a loss of right to patent;
b) premature foreign patenting as set forth in 35 U.S.C. 102(d)
as an element of prior art or a basis for a loss of right to patent;
c) an inventor's forfeiture of his or her right to patent an invention
once placed "in public" use or "on sale" as
set forth in 35 U.S.C. 102(b) by providing that no such loss of
right to patent an invention can arise unless the invention had
become reasonably and effectively accessible to persons of ordinary
skill in the art more than one year before the inventor sought a
patent for the invention; and
d) prior art as set forth in 35 U.S.C. 102(f) under which non-public
knowledge of the inventor, not otherwise qualifying as prior art,
can render an invention made by such inventor obvious, and that
the following past actions of the Section inconsistent with this
resolution are rescinded:
(A) 1992 AR125-R108-10A (right of inventor in prior art patent to
prove prior invention as prior art under 35 U.S.C. §102(g)
to same degree as prior inventor who did not seek a patent for the
invention), and
(B) 2002 AR104-R101-11 (excluding from "on sale" bar sales
to the patentee).
Prior User Rights
Class 1 - Full Debate as Amended
RESOLVED, that the Section supports, in principle, in the context
of ratification of an international harmonization treaty involving
at least Japan or major European Countries that mandates U.S. adoption
of a first-inventor-to-file system, the adoption of a "prior
user right" and
SPECIFICALLY the Section supports treaty implementing legislation
that commercial use (including substantial preparations for commercial
use) should be recognized as a personal defense to patent infringement,
if undertaken in good faith by a person who has reduced the invention
to practice prior to the effective filing date of a patent.
RESOLVED, that the Section of Intellectual Property
Law supports, in principle, in the context of U.S. adoption of a
first-inventor-to-file system, legislation expanding the subject
matter eligible for "prior user rights" under section
273 of Title 35, U.S.C. to include all categories of patentable
subject matter; and
SPECIFICALLY, the Section supports enabling legislation that would
permit commercial use (including substantial preparations for commercial
use) of a patented invention to be recognized as a personal defense
to patent infringement, if undertaken in good faith by a person
who has reduced the invention to practice prior to the effective
filing date of a patent.
Single Paper Continuation Filing
Class 2 - Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law favors
in principle simplifying the filing of a continuation or divisional
application filed under 37 C.F.R. § 1.53(b) claiming priority
to an application stored in the Office's Image File Wrapper system;
and
Specifically, the Section favors the filing of such continuation
or divisional applications by way of a single paper identifying
that a specification including at least one claim and drawings,
if necessary, and an executed oath or declaration were filed in
the parent application, and requesting that a copy of the specification,
drawings and oath or declaration be copied by the Office from the
parent application into the electronic files for the continuing
application, and that the requirement for filing a copy of the executed
oath or declaration from the parent application under 37 C.F.R.
§ 1.63(d)(1)(iv) be eliminated in connection with the filing
of the continuing application when the other provisions of 37 C.F.R.
§ 1.63(d) are met.
RESOLVED, that the Section of Intellectual Property
Law favors, in principle, with respect to any document available
through the USPTO's Patent Image File Wrapper system, the elimination
from Title 37, C.F.R. of any requirement that an applicant for patent
be required to submit in paper form to the USPTO such a document
already available electronically in the Office; and
SPECIFICALLY, the Section favors simplifying the filing of a continuation
or divisional application under 37 C.F.R. §1.53(b) by eliminating
the requirement for filing a paper copy of the executed oath or
declaration from the parent application under 37 C.F.R. §1.63(d)(1)(iv)
when the other provisions of 37 C.F.R. § 1.63(d) are met and
when the executed oath or declaration exists in the IFW system as
an electronic document.
Modified Petition To Make Special
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law favors in
principle that the petitions to make special provided for under
37 C.F.R. § 1.102 be modified to include an additional category
of special status; and
SPECIFICALLY, the Section favors creating an additional category
of special status to be added to MPEP 708.02, specifying that, for
a higher fee, an application may be made special as described in
MPEP 708.02 VIII without requiring that the applicant meet the requirements
of MPEP 708.02 VIII (E) (i.e., "Submits a detailed discussion
of the references, which discussion points out, with the particularity
required by 37 CFR 1.111(b) and (c), how the claimed subject matter
is patentable over the references.").
Changes to Implement the Cooperative Research and Technology
Enhancement Act Of 2004 (Create Act)
Class 2 - Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law favors
rule changes to implement the Cooperative Research and Technology
Enhancement Act of 2004 (CREATE Act), provided that the rule changes
allow applicants to take advantage of the provisions of 35 U.S.C.
§ 103(c)(2) without imposing additional procedural requirements.
RESOLVED, that the Section of Intellectual Property
Law favors, in principle, providing detailed guidance to inventors
through rulemaking to implement the Cooperative Research and Technology
Enhancement Act of 2004 (CREATE Act); and
SPECIFICALLY, the Section supports rule changes to Title 37, Code
of Federal Regulations, that will allow applicants to take advantage
of the provisions of 35 U.S.C. § 103(c)(2) in a manner that
minimizes procedural requirements.
Clarifying Applicants' Duty Regarding Advancing Patent Claims
Class 2 - Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law favors
clarifying applicants' ethical responsibilities in presenting claims
in a patent application; and
Specifically, the Section favors improving patent quality and reducing
the patenting of claims applicants know or reasonably ought to know
are frivolous, and favors such improvement by clarifying applicants'
ethical responsibilities regarding advancing frivolous claims in
a patent application, such clarification being necessary because
of the question posed by 37 CFR § 10.18(b)(2)(ii) of whether
the word claims means patent claims or merely legal arguments.
RESOLVED, that the Section of Intellectual Property
Law favors, in principle, interpreting 37 CFR §10.18(b)(2)(ii)
to clarify that a registered patent attorney's or patent agent's
ethical responsibility in presenting subject matter for examination
in a patent application precludes the submission for examination
of subject matter whose basis for patentability is known, or reasonably
ought to have been known, to be frivolous; and
SPECIFICALLY, the Section favors an amendment to section 10.18(b)(2)(ii)
to define the word "claim" to include both (1) any legal
contention or position and (2) subject matter sought to be patented.
Direct Response to FTC No. 8
Class 2 Approve - by Council on January 23, 2005
RESOLVED, the Section opposes, in principle, the application of
intervening or prior user rights based upon the addition of broadened
claims in a continuing application; and,
SPECIFICALLY, the Section disapproves FTC Recommendation 8 that
recommends the enactment of legislation to create intervening or
prior user rights to preclude enforcement of claims first presented
in a continuing application that are broader than any claim in any
application from which the continuing application claims priority,
if the accused product or process was developed or used before the
broader claims were published.
Proposed Amendment to Prior User Rights Statute
Class 3 - Rest as a Committee Report
RESOLVED, that the Section approves, in principle, the application
of intervening or prior user rights in existence before the effective
date of a priority application; and,
SPECIFICALLY, the Section supports legislation that would amend
35 U.S.C. § 273 to remove the limitation in this statute that
the defense to infringement is restricted to a method in the patent
being asserted, which is defined as "a method of doing or conducting
business.
Proposed Amendment to Prior User Rights Statute
Class 3 - Rest as a Committee Report
RESOLVED, that the Section approves, in principle, the application
of intervening or prior user rights in existence before the effective
date of a priority application; and,
SPECIFICALLY, the Section supports legislation that would amend
35 U.S.C. § 273 to remove the requirement in this statute that
the prior use be reduced to practice "at least 1 year before
the effective filing date of such patent."
Proposed Amendment To Prior User Rights Statute
Class 3 - Rest as a Committee Report
RESOLVED, that the Section approves, in principle, the application
of intervening or prior user rights in existence before the effective
date of a priority application; and,
SPECIFICALLY, the Section supports legislation that would amend
35 U.S.C. § 273 to provide that the defense to infringement
under this statute include "substantial preparation."
PTO Fees
Class 3 - Rest as a Committee Report
RESOLVED that the Section opposes increasing patent and trademark
fees or extending the current patent and trademark fee increases
absent legislation which prevents diverting such fees to offset
spending on programs other than the PTO.
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") opposes in principle amending
the Federal Trademark Dilution Act of 1995 (the "FTDA"),
15 U.S.C. §1125(c), to make evidence of use as a designation
of source a condition for liability; and
SPECIFICALLY, the Section opposes amending the FTDA to add the phrase
"as a designation of source" so as to require evidence
of "use in commerce of a mark or trade name as a designation
of source of the person's goods or services" as a predicate
for imposing liability for dilution of a famous mark.
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") favors in principle amending
the Federal Trademark Dilution Act of 1995 (the "FTDA"),
15 U.S.C. §1125(c), to make clear that the "fair use"
defense to infringement also applies to dilution claims; and
SPECIFICALLY, the Section favors amending Section 43(c)(4)(A) of
the Lanham Act to insert ", including" so that the section
would read as follows: "Fair use of a famous mark by another
person, including for purposes of comparative commercial advertising
or promotion to identify the competing goods or services of the
owner of the famous mark."
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") favors in principle leaving
to the development of common law the consideration of dilution by
blurring; and
SPECIFICALLY, opposes any proposal to amend the Federal Trademark
Dilution Act of1995 (the "FTDA"), 15 U.S.C. §1125(c),
to set forth factors relevant to consideration of dilution by blurring.
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") opposes in principle amending
the Lanham Act with respect to the "distinctive and famous"
factors currently set forth in the Federal Trademark Dilution Act
of 1995 (the "FTDA"), 15 U.S.C. §1125(c)(1); and
SPECIFICALLY, opposes any proposal to revise the factors set forth
in Section 43(c)(1) of the FTDA.
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") opposes in principle decentralizing
the location of definitions in the Lanham Act; and
SPECIFICALLY, the Section opposes amending the Federal Trademark
Dilution Act of 1995 (the "FTDA"), 15 U.S.C. §1125(c),
to set forth definitions of "dilution by blurring" and
"dilution by tarnishment" in any section other than Section
45 of the Lanham Act, 15 U.S.C. §1127.
Dilution
Class 2 Approve - by Council February 8, 2005
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association (the "Section") opposes in principle amending
the Federal Trademark Dilution Act of 1995 (the "FTDA"),
15 U.S.C. §1125(c), to introduce the concept of "uniqueness"
as a requirement for protection; and
SPECIFICALLY, opposes amending the FTDA to provide that a mark must
be both "famous" and "substantially unique"
in order to be entitled to protection against "dilution by
blurring."
Stop Counterfeiting in Manufactured Goods Act
Class 2 Approve - as amended
RESOLVED, that the Section of Intellectual Property Law of the
American Bar Association (the "Section") favors, in
principle, legislation prohibiting the trafficking in counterfeit
labels, patches and medallions bearing spurious imitations of
registered marks that are intended to be affixed to goods for which
the marks are registered and which have not been produced under
the authority of the marks' owners unattached to any goods;
and
SPECIFICALLY, the Section favors the Stop Counterfeiting in Manufactured
Goods Act, H.R. 32, 109th Congress, 1st Sess. (2005) (Knollenberg).
Proposed FTC Recommendation 6
Class 2 Approve - by Council on March 4, 2005
RESOLVED, that the Section of Intellectual Property Law opposes
in principle the statement that the courts and the PTO "consider
possible harm to competition along with other possible benefits
and costs before extending the scope of patentable subject matter";
and
SPECIFICALLY, the Section proposes that the courts and the PTO give
full effect to Congress's intent that "anything under the sun
that is made by man" is patentable, as well as Congress's intent
that the court's and the PTO scrupulously ensure that patent applicants
fully comply with their bargain with the public -- in exchange for
complete and enabling disclosure of a useful, novel, and unobvious
invention, patentees will receive meaningful, but limited, exclusive
rights.
Proposed FTC Recommendation 10
Class 2 Approve - by Council on March 4, 2005
RESOLVED, that the Section of Intellectual Property Law opposes
in principle the statement that the courts and the PTO should "expand
consideration of economic learning and competition policy concerns
in patent law decision making"; and
SPECIFICALLY, the Section proposes that the courts and the PTO give
full effect to Congress's intent that "anything under the sun
that is made by man" is patentable, and well as Congress's
intent that the court's and the PTO scrupulously ensure that patent
applicants fully comply with their bargain with the public -- in
exchange for complete and enabling disclosure of a useful, novel,
and unobvious invention, patentees will receive meaningful, but
limited, exclusive rights.
Geneva Act, Hague Agreement Concerning the International Registration
of Industrial
Class 2 Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law favors,
in principle, the coordination of domestic and foreign protection
of industrial designs; and
SPECIFICALLY, the Section favors ratification by the United States
of the Geneva Act of the Hague Agreement Concerning the International
Registration of Industrial Designs.
NAS Recommendation 6a
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relative to reducing litigation cost and
increasing predictability of patent infringement litigation outcomes
in cases involving willful infringement allegations as set forth
in their report, A Patent System for the 21st Century; and
SPECIFICALLY, the Section supports legislation that would implement
the following changes to the existing law of willful patent infringement
(1) elimination of the duty of due care requirement
and restriction of willfulness findings to cases involving reprehensible
conduct as per Dyk, J. in his separate opinion in Knorr-Bremse
Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., --- F.3d ---
(Fed. Cir. 2004);
(2) reprehensible conduct will be evaluated based on the totality
of circumstances, including, but not restricted to, whether there
was (a) deliberate copying with knowledge of the patent, (b) the
absence of a substantial defense at trial, and (c) intentional concealment
of the infringement;
(3) willfulness shall be tried by the court, not a jury, and all
findings of fact relevant to willfulness shall be found by the court;
(4) willfulness shall be considered in conjunction with the court's
evaluation of enhanced damages and the award of attorney's fees,
but only after liability has been found;
(5) per the en banc decision in Knorr-Bremse, no adverse inference
shall be drawn as a result of failure to obtain an opinion of counsel
or the failure to produce an opinion of counsel if one is obtained;
while the reliance on an opinion of counsel may be considered as
part of the totality of circumstances of reprehensibility, an opinion
is not required to avoid a willfulness finding;
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for
the 21st Century; and
SPECIFICALLY, the Section supports legislation that would eliminate
any "duty of due care" imposed upon a possible infringer
unless and until the patent owner (or another party having the right
to bring suit for infringement of the patent) provides actual written
notice to the possible infringer of its activities alleged to constitute
infringement.
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for the
21st Century; and
SPECIFICALLY, the Section supports legislation that would prohibit
findings of willfulness except in cases involving reprehensible
conduct on the part of the accused infringer, such conduct to be
determined based on the totality of circumstances.
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for the
21st Century; and
SPECIFICALLY, the Section supports legislation that would prohibit
findings of willfulness except in cases involving reprehensible
conduct on the part of the accused infringer, such conduct to be
determined based on whether there was (a) deliberate copying with
knowledge of the claimed subject matter in the patent, (b) the absence
of a substantial defense at trial, (c) intentional concealment of
the infringement, (d) breach of any applicable duty of due care,
or (e) such other facts or circumstances that evidence reprehensibility
as may be determined by a court to be relevant to the issue.
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for the
21st Century; and
SPECIFICALLY, the Section supports legislation that would provide
that the issue of willfulness shall be tried to the court, not a
jury, and all findings of fact relevant to willfulness shall be
found by the court;
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for the
21st Century; and
SPECIFICALLY, the Section supports legislation that would provide
that an allegation of willfulness could not be considered by a court,
except (1) in conjunction with the court's evaluation of the amount
of damages and/or the possible award of attorney's fees and (2)
after a final judgment of liability has been entered.
Not A Valid Resolution - Committee Did Not Approve
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, the recommendation of the National Research Council
of the National Academies relating to limiting allegations of willful
infringement, as set forth in its report, A Patent System for the
21st Century; and
SPECIFICALLY, the Section supports legislation to (1) eliminate
the duty of due care on a possible infringer and (2) restrict any
award of enhanced damages for infringement to cases involving reprehensible
conduct on the part of the adjudicated infringer.
Recommendations on Proposed Amendments to Rule 11
Class 2 Approve - by Council on January 24, 2005
RESOLVED, that the Section of Intellectual Property Law supports
the resolutions concerning the proposed amendments to Rule 11 of
the Federal Rules of Civil Procedure that will be submitted by the
Litigation and Tort Trial and Insurance Practice Sections to the
House of Delegates in February 2005.
Recommendations on Proposed Amendments to Rule 5(E) Concerning
E-Filing
Class 2 Approve
RESOLVED, that the Section of Intellectual Property Law supports
the Rules Committee of the Federal Judicial Conference's proposed
amendment to Rule 5(e) affecting amendments to the Federal Appellate,
Bankruptcy, and District Court Rules, which would authorize trial
and appellate federal courts to "permit or require" electronic
filing.
NAS Proposals
Class 2 Approve - by Council on January 23, 2005
RESOLVED, that the Section of Intellectual Property Law favors in
principle that the Court of Appeals for the Federal Circuit continue
its practice of encouraging amicus participation in important cases
before the court, and
SPECIFICALLY, the Section favors that in encouraging amicus participation,
the court, to the extent appropriate to the particular case, should
draw upon insights from other judicial decisions, independent scholarly
analysis, and available and relevant empirical evidence, but need
not encourage economic analysis in areas of innovation-related law.
NAS Proposals
Class 2 Approve as Amended - by Council on January 23, 2005
RESOLVED, that the Section of Intellectual Property Law favors in
principle the appointment of judges to the Court of Appeals for
the Federal Circuit with particular care and appropriate to the
court's diverse subject matter jurisdiction, and
SPECIFICALLY, the Section favors the appointment of judges to the
court of (1) men and women with (1) diverse experience
and backgrounds appropriate to the court's diverse subject matter
jurisdiction, while maintaining a complement of three or four active
judges with extensive pre-court patent law backgrounds, and (2)
men and women with experience as federal district court judges
with extensive jury trial experience, including patent jury trial
experience. but does not favor the appointment of judges to the
court with backgrounds in antitrust or finance law or in economics
or economic history.
NAS Proposals
Class 2 Approve - by Council on January 23, 2005
RESOLVED, that the Section of Intellectual Property Law favors in
principle encouraging the Federal Circuit judges to sit by designation
on other federal courts and vice-versa, and
SPECIFICALLY, the Section favors the Federal Circuit exchanging
judges with other federal courts through the designation process
in order to give the Federal Circuit judges a better sense of how
patent law fits in with other laws influencing innovation, and particularly
encourages such exchange to provide Federal Circuit judges with
greater exposure to patent jury trials.
The Application Of Section 271(F) of the Patent Act to Computer
Programs
Class 1 - Full Debate - as Amended
RESOLVED, that the Section of Intellectual Property Law favors,
in principle, that a computer program falls within the scope
of the a term "component" in 35 USC § 271(f)
can encompass a computer program where the requirements of 35
USC § 271(f) are otherwise met.
Spyware
Class 2 - Approve
RESOLVED, that the Section of Intellectual Property Law favors in
principle prohibiting the collection of information about an individual
through the use of software installed in such individual's computer
unless (i) there has been clear and accurate disclosure of the identity
of the party collecting the information or installing the software
and a meaningful opportunity for the individual to choose whether
to allow such collection or installation, and (ii) the individual
is given the ability to revoke any permission for the collection
of such information or the installation of such software, and SPECIFICALLY,
that the Section of Intellectual Property Law supports H.R. 29,
the SPY ACT in its form as proposed by Representatives Bono and
Towns.
Future Panel Discussion on Bioinformatics
Class 3 - Rest as a Committee Report
RESOLVED, that the committee should promote within the Section having
a panel discussion on bioinformatics at an upcoming Section conference
or conference.
Utility Patents For Plants And Opposition To Saved Seed Legislation
Class 2 - Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law of the American
Bar Association opposes in principle any saved seed exemption for
plants and seeds patented under 35 U.S.C. §101 et seq.
UPOV/PVP Protection For Plants and Strengthening of the UPOV/PVP
System
Class 2 - Approve - as Amended
RESOLVED, that the Section of Intellectual Property Law of the
American Bar Association supports in principle the July 2004 American
Seed Trade Association (ASTA) Position Statement on Intellectual
Property Rights for the Seed Industry, and specifically, the Section
is in favor of strengthening the UPOV/PVP system as proposed in
the ASTA Position Statement.
RESOLVED, that the Section of Intellectual Property Law favors,
in principle, those recommendations contained in the July 2004 American
Seed Trade Association (ASTA) Position Statement on Intellectual
Property Rights for the Seed Industry that would strengthen the
provisions of the UPOV/PVP system for the protection of plant varieties
through, and
SPECIFICALLY, the Section supports strengthening the provisions
of the UPOV/PVPsystem for the protection of plant varieties through:
(1) providing compensation for and/or limits on saved seed in all
countries,
(2) making the essentially derived variety (EDV) system more effective,
(3) revising the breeders' exemption to include a fixed period for
each crop during which the breeders' exemption would not be available
for PVP protected material, and
(4) requiring all member countries to adopt to the most current
UPOV system.
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Your Calendar!
June 21, 2005
The Palace Hotel
San Francisco, CA
June 22-25, 2005
The Palace Hotel
San Francisco, CA
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