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To access the accompanying Committee Report to each Proposed Resolution,
please click on the appropriate Resolution to be linked to the back-up report.
The following resolutions were identified for Full Debate by the IP Law Section
Council on May 3, 2002:
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, amending the inter partes and Director-ordered reexamination
authority under title 35, United States Code, to permit the
initiation of reexamination proceedings on the basis of
non-testimonial evidence that raises a substantial new question of
patentability with respect to the requirements of section 102(b) or 103
involving public use or sale, as defined in section 102(b), of an invention
claimed in one or more claims of a patent, alone or in conjunction with
patents or printed publications, provided that any such reexamination
is initiated within a limited period of time following the grant of the
patent.
RESOLVED, that the Section of Intellectual Property Law favors, in
principle, amending the inter partes and Director-ordered ex parte reexamination
authority under Title 35, United States Code, to permit reexamination on the
basis of a substantial new question of patentability relating to compliance
with the requirements of the first and second paragraphs of § 112, other than
best mode, provided that any such reexamination is commenced within a
limited period of time following the grant of the patent.
RESOLVED, that the Section of Intellectual Property Law opposes any attempt
to change the definition of prior art under Section 103 based on the existence
of "collaborations" when there is no obligation to assign.
RESOLVED, that the Section of Intellectual Property Law supports,
in principle, enactment of legislation providing that the right
to a patent, as between two or more
rival inventive entities claiming the "same patentable invention,"
(37 C.F.R. §1.1601(n)) shall belong
to the first inventive entity
inventor who first
files an application for patent containing an adequate disclosure
(35 U.S.C. §112) of the invention,
or, in the event of an assignment of rights, shall
belong to the assignee thereof, and
SPECIFICALLY, the Section supports
enactment of such legislation, together with other changes to
U.S. patent law that would similarly favorably affect the operation
and effectiveness of the U.S. patent system, as part of efforts
to achieve international harmonization of substantive patent laws.
FURTHER, the Section of Intellectual
Property Law approves in principle and recommends to the House
of Delegates the rescission of the following resolution that was
adopted by the American Bar Association in 1967:
"RESOLVED, that the American Bar
Association is opposed in principle to: Any change in the law
which would have the effect of awarding the patent only to the
applicant who is the first to file his application."
RESOLVED, that the Section of Intellectual Property Law supports, in
principle, enactment of changes to patent systems outside the United States
that would improve the operation and effective of such foreign patent systems,
including the following:
(a) the elimination of any doctrine of "self-collision" under
which any disclosure in a commonly owned application of the same invention
bars the patenting of that invention in any later-filed application of a
common owner that is not otherwise available as prior art;
(b) the elimination of the limitation on the availability of certain
prior-filed published applications and/or patents as "prior art"
solely for purposes of determining the novelty of a later-filed application
for patent by another, rather than for purposes of both novelty and
non-obviousness;
(c) in the determination of non-obviousness, the elimination of any
requirement or preference for use of a "problem and solution"
analysis, rather than a determination of whether the subject matter as a whole
of the invention would have been obvious to a person of ordinary skill in the
art to which the the invention pertains;
(d) in the determination of whether an invention is sufficiently useful to
permit it to be patented, the elimination of any requirement that, in addition
to its usefulness, the invention must be industrially applicable; and
(e) in the determination of whether the subject matter of the invention is
eligible for patenting, the elimination of any requirement that the invention
as claimed must evidence technical features or a technical effect; and
SPECIFICALLY, the Section supports making such changes in connection with
efforts to achieve international harmonization of substantive patent laws.
RESOLVED, that the Section of Intellectual Property Law favors in
the principle amendment of
the Lanham Act, 15 U.S.C. 1051, et seq., to provide that the
degree to which granting
protection would hinder competition shall be considered in determining the
functionality of a product feature for which trade dress protection is sought.
RESOLVED, that the Section of Intellectual Property Law opposes in
principle the creation of a multinational system of notification and
registration of geographical indications for wines and spirits, or any other
products, and favors a system of geographical indication protection that
permits each country to designate geographical designations as it sees fit
while at the same time permitting global notification of geographical
indications, but without imposing enforcement obligations on member countries.
RESOLVED, that the Section of Intellectual Property Law favors
the principle that geographic indications (appellations of origin)
should not be accorded legal precedence over trademark rights;
and
SPECIFICALLY, the Section opposes the creation of a multinational
system of notification and registration of geographical indicators
for wines and spirits, or any other products.
RESOLVED, that the Section of Intellectual Property Law opposes in
principle the creation of systems of protection of geographic indications
(appellations of origin); but
SPECIFICALLY, the Section favors, in any individual country that may
adopt such a national system, that (a) it be implemented only by global
notification thereof, and (b) any such geographic indications appellations
or origin) neither be accorded legal precedence over trademark rights, nor
impose any enforcement obligations on other countries.
RESOLVED, that the Section of Intellectual Property Law supports
the principle that Congress has the power under the Copyright
Clause (Article I, section 8, clause 8) of the United States Constitution
to extend the term of existing copyrights; and
SPECIFICALLY, the Section favors the position that the Copyright
Term Extension Act (Title I, P.L. 105-298) does not violate, and
is fully in accordance with, the Copyright Clause and the First
Amendment of the United States Constitution.
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