Click here to view the complete text of all Proposed Resolutions. 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 April 28th, 2003: PROPOSED RESOLUTION 103-1: Class 1 - Full Debate * (Asterisk notes Proposed Resolution was amended by Council at April 28 Classification Meeting.) RESOLVED, that the Section of Intellectual Property Law supports a change to 37 C.F.R. 705 that would permit reconsideration of term adjustment upon request of the patent owner at any time until expiration of the patent. PROPOSED RESOLUTION 103 - 3: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law opposes in principle the outsourcing of the search function by the USPTO to non-USPTO organizations and any move by the USPTO to a multi-track examination process to the extent that it embodies an outsourcing of the search function or an organizational separation of the search function from the examining function, unless and until pilot studies demonstrate that efficiency and/or quality will be improved by outsourcing., but favors the USPTO pursuing the appropriate utilization of search reports from qualified foreign intellectual property offices. PROPOSED RESOLUTION 103-4: Class 1 - Full Debate RESOLVED, that the Section of Intellectual Property Law favors in principle that all prior art cited in a proper Information Disclosure Statement (IDS) be given the same degree of full consideration by the examiner, whether or not the pertinence of such prior art is discussed by the applicant in the IDS and whether or not such prior art is discussed or used by the examiner to reject claims and Specifically, the Section favors the amendment of Section 609 (and 2242) of the Manual of Patent Examining Procedure by the Patent and Trademark Office to eliminate the distinction between examiner consideration of prior art cited in an IDS without any discussion of the prior art and examiner consideration with discussion of or reliance on the prior art, and to make clear that all prior art cited in an IDS should be fully and carefully considered by the examiner. PROPOSED RESOLUTION 103-5(a): Class 1- Full Debate * RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and Specifically, the Section favors expanded participation by the third party petitioner in the review process, including right to attend and participate in Examiner interviews and hearings at the Board of Patent Appeals and Interferences. PROPOSED RESOLUTION 103-5(b): Class 1- Full Debate * RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and Specifically, the Section favors no estoppel being created for a third party petitioner's other legal remedies, unless the petitioner is a party to an appeal to the Federal Circuit that results in a decision on the merits. PROPOSED RESOLUTION 103-5(c): Class 1- Full Debate RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and Specifically, the Section favors the requirement that the Examiner who issued the patent be barred from participation in a reexamination proceeding. PROPOSED RESOLUTION 108-6: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law supports in principle the uniformity, predictability and consistency in the administration of the patent law fostered by having the Federal Circuit Court of Appeals decide appeals of all cases involving a claim which in which the dispute "arises under" the patent laws; and Specifically the Section supports the proposition that a claim stated in the Complaint or Counterclaim can be relied upon to determine whether a civil action "arises under" federal patent law. PROPOSED RESOLUTION 205-1: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law rescinds its resolution of February, 1998, AR67-R201-3, which stated, "Section opposes in principle the passage of federal trademark legislation to codify a single and authoritative definition of "inherent distinctiveness" (or "inherently distinctive") as applied to trade dress. PROPOSED RESOLUTION 205-12: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law opposes in principle the rule set forth in the decision Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), that the design of a product can never be inherently distinctive as a matter of law. PROPOSED RESOLUTION 205-23: Class 1 - Full Debate RESOLVED, that the Section of Intellectual Property Law favors in principle the rule that the design of a product may be inherently distinctive according to the combined Seabrook-Duraco standard consisting of the following five elements: 1) the trade dress is unusual and memorable, 2) it is conceptually separable from the product, 3) it is likely to serve primarily as a designator of origin of the product, 4) it is not a mere refinement of a commonly adopted and well-known form of dress for a particular class of goods, and 5) it is capable of creating a commercial impression distinct from any accompanying words on the trade dress. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977); Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1449; 32 U.S.P.Q.2d 1724, 1738 (3d Cir. 1994). PROPOSED RESOLUTION 655-1: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law favors opposes in principle the appointment and use, under a district courts' inherent powers, of court-appointed technical advisors under the district courts' inherent powers so long as unless procedural safeguards are put in place to protect the litigants' interests. PROPOSED RESOLUTION 655-2: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law favors opposes in principle the adoption of a new Federal Rule of Evidence to govern the appointment and use, under a district courts' inherent powers, of court-appointed technical advisors in a case under the district courts' inherent powers, unless an appropriate Federal Rule or Rules are adopted to govern the use and appointment of court-appointed technical advisors. PROPOSED RESOLUTION 655-3: Class 1 - Full Debate * RESOLVED, that the Section of Intellectual Property Law favors in principle the adoption of a new Federal Rule of Evidence an appropriate Federal Rule or Rules to govern the appointment and use, under a district courts' inherent powers, of court-appointed technical advisors ("CATA") in cases; and Specifically, the Section favors a Federal Rule of Evidence which would, at a minimum,: (1) require district court judges to inform parties of his or her intention to appoint a CATA, (2) allow the parties an opportunity to raise objections concerning the competency and/or independence of any CATA selected by the court, (3) require district court judges to inform the parties of the intended role of the CATA, (4) require district court judges to create a record of the CATA's actual role, and (5) require that the parties be provided copies of any written reports prepared by the CATA for the district court judge.