REGISTER TODAY! JUNE 16-20, 2004 Four Seasons Hotel Toronto Toronto, Ontario

Classified by Council at the April 26, 2004 Classification Meeting

Class 2 – Approved as Amended

RESOLVED, that the Section onf Intellectual Property Law opposes, in priniciple, legislation that would alter the law governing the discretion of district courts to grant or to not grant refuse preliminary injunctive relief in connection with enforcement of a patent injunctions restraining alleged patent infringement.

Class 1 – Full Debate as Amended

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, legislation that would require a patent owner to provide a particular form of notice of a particular form to a potential an infringer of a patent as a condition precedent to recovery of enhanced damages based on a finding of willful infringement.

Class 2 – Recommit as Amended

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, legislation that would alter the standards governing for discretionary subject matter jurisdiction for declaratory judgment proceedings to contest infringement, validity or enforceability of a patent so as to establish jurisdiction in a circumstance where a court would otherwise find that no reasonable apprehension of suit exists an action for a declaratory judgment of patent invalidity, non-infringement, or unenforceability from the standards established as a matter of case law.

Adopted by Council, as amended, April 26, 2004

RESOLVED, that the Section onf Intellectual Property Law supports favors, in principle, legislation that would make 35 U.S.C. 103(c) applicable to inventions made within the scope of a joint research agreement involving two or more entities where if the claimed invention and subject matter that would be exempted by §103 (c) (as it would be amended) was developed by or for a party to the joint research agreement where and if such inventions and subject matter are not subject to a requirement of common ownership or an obligation of common assignment, provided that:

Class 1 – Full Debate

RESOLVED, that the Section of Intellectual Property Law reaffirms its support in principle for enactment of legislation providing that the right to a patent shall belong to the 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

FURTHER, the Section supports concomitant efforts to conclude international patent harmonization agreements that incorporate such principle, and

IN ADDITION, the Section rescinds the following past actions as potentially inconsistent with the foregoing: 1992 AR73-R102-8; Defeated by ABA 1993, 1991 AR58-R102-1, 1987 SP 57-R102-1, and 1967 S.SP 71.

Class 1 – Full Debate

RESOLVED, that the Section of Intellectual Property Law reaffirms its support for, and recommends to the House of Delegates, the rescission of, the following resolution that was adopted by the American Bar Association in 1967, and so recommends to the House of Delegates:

Class 2 – Recommit as Amended

RESOLVED, that the Section of Intellectual Property Law reaffirms its support in principle for efforts to achieve greater international harmonization of patent laws and for the participation of the Section, together with other U.S.-based non-governmental organizations, in developing positions on substantive issues related to such efforts,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect post-1993 changes in U.S. patent law and the dynamic nature of the current international discussions:

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law supports in principle legislation that would introduce "best practices" into U.S. patent law, including such practices determined to exist based on efforts to achieve greater international harmonization of patent law principles as they relate to prior art, novelty, non-obviousness and loss of right to patent,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section (and, if an ABA position, recommends rescission by the House of Delegates of the corresponding ABA positions) that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect the changes in U.S. patent law since these resolutions were adopted and the dynamic nature of the international discussions seeking to identify "best practices":

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law reaffirms its support, in principle, for enactment of legislation providing that the right to a patent shall belong to the 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

FURTHER, the Section supports concomitant efforts to conclude international patent harmonization agreements that incorporate such principle, and

IN ADDITION, the Section rescinds the following past actions as potentially inconsistent with the foregoing: 1992 AR73-R102-8; Defeated by ABA 1993, 1991 AR58-R102-1, 1987 SP 57-R102-1, and 1967 S.SP 71.

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law reaffirms its support for, and recommends to the House of Delegates, the rescission of, the following resolution that was adopted by the American Bar Association in 1967, and so recommends to the House of Delegates:

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law reaffirms its support in principle for efforts to achieve greater international harmonization of patent laws and for the participation of the Section, together with other U.S.-based non-governmental organizations, in developing positions on substantive issues related to such efforts,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect post-1993 changes in U.S. patent law and the dynamic nature of the current international discussions:

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law supports, in principle, legislation that would introduce "best practices" into U.S. patent law, including such practices determined to exist based on efforts to achieve greater international harmonization of patent law principles as they relate to prior art, novelty, non-obviousness and loss of right to patent,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section (and, if an ABA position, recommends rescission by the House of Delegates of the corresponding ABA positions) that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect the changes in U.S. patent law since these resolutions were adopted and the dynamic nature of the international discussions seeking to identify "best practices":

Class 2 – Approved

RESOLVED, that the Section of Intellectual Property Law favors, in principle, that the Community Patent should be a cost-effective alternative to the current European Patent System,; and

Specifically the Section favors requiring that the claims of a Community Patent only be required to be translated into the official EPO languages of English, French and German only, in order to avoid additional costs and administrative complexity and opposes translating the issued claims into all European Community languages.

Class 2 – Approved

RESOLVED, that the Section of Intellectual Property Law supports favors, in principle, patent protection in the European Union for computer-implemented inventions on the same basis as other inventions, in order to implement the basic intellectual property interests of inventors, competitors and the public, and

Specifically, the Section disapproves the restrictive September 2003 amendments adopted by the European Parliament in Articles 2 through 5 and 6(a) of the European Union proposed Directive on The Patentability of Computer-Implemented Inventions, and urges the European Commission and Council to reject such amendments.

Class 2 – Approved as Amended

RESOLVED, that the Section of the Intellectual Property Law favors in principle that the period of adjustment of the term of a patent under §§1.703(a)-(e) not be automatically reduced by the filing of a §1.312 amendment or other paper after a notice of allowance has been issued if the purpose of the amendment or other paper was to correct a Patent Office error; and

Specifically, the Section proposes that 37 C.F.R. §1.704 Reduction of period of Adjustment of Patent Term, be amended to include a provision that the reduction in term set forth in (c)(10) will not result if the §1.312 amendment or other paper is filed to correct a Patent Office error.

Class 2 – Approved

RESOLVED, that the Section of the Intellectual Property Law favors in principle that a request for reconsideration regarding patent term adjustment be allowed to be filed within thirty days of the issue date of the patent in the event that the patent indicates a revised patent term adjustment; and

Specifically, the Section approves the proposed amendment to 37 C.F.R. §1.705 Patent Term Adjustment, as set forth in 68 Fed. Reg. 53816 (September 12, 2003), which would allow a request for reconsideration regarding patent term adjustment to be filed within thirty days of the issue date of the patent in the event that the patent indicates a revised patent term adjustment.

Adopted, as Amended, by Council on April 26, 2004.

RESOLVED, that the Section of the Intellectual Property Law opposes any addition to 37 C.F.R. §1.105, which would require applicants to provide the Patent Office with information in the form of responses to interrogatories or requests for stipulations.; and

Specifically, the Section opposes any addition to 37 C.F.R. §1.105(a)(1), as set forth in Notice of Proposed Rulemaking - Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan, 68 Fed. Reg. 53816 (September 12, 2003), that empowers examiners to demand from applicants "[t]echnical information known to applicant concerning the interpretation of the related art, the disclosure, the claimed subject matter, other information pertinent to patentability, or the accuracy of the examiner’s stated interpretation of such items."

Class 2 – Approved

RESOLVED, that the Section of the Intellectual Property Law opposes an absolute requirement of a "two-way test" to determine whether an interference can proceed; and

Specifically, the Section opposes proposed rule §41.203 Declaration, as set forth in Notice of Proposed Rulemaking Rules of Practice Before the Board of Patent Appeals and Interferences, 68 Fed. Reg. 66648 (November 26, 2003), which defines interfering subject matter using a "two-way test."

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, maintaining an option of an inter partes reexamination proceeding; and

Specifically, the Section favors maintaining the current inter partes reexamination proceeding, limited to raising grounds of invalidity based on patents or printed publications, even if an additional post-grant review proceeding is adopted, allowing a broader grounds of invalidity to be raised (e.g., §112 as well as any issues under §§ 102 and 103), wherein the grounds can be based on a larger category of evidence, including testimonial evidence.

Not a valid resolution – no quorum

RESOLVED, that the Section of Intellectual Property Law favors, in principle, the elimination of inter partes reexamination; and

Specifically, the Section favors eliminating the current inter partes reexamination proceeding, limited to raising grounds of invalidity based on patents or printed publications, should an additional post-grant review proceeding be adopted, allowing a broader grounds of invalidity to be raised (e.g., §112 as well as any issues under §§ 102 and 103), wherein the grounds can be based on a larger category of evidence, including testimonial evidence.

Not a valid resolution – no quorum

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, the adoption of an additional post-grant review proceeding; and

Specifically, the Section opposes the adoption of an additional post-grant review proceeding, allowing a broader grounds of invalidity to be raised (e.g., §112 as well as any issues under §§ 102 and 103), wherein the grounds can be based on a larger category of evidence, including testimonial evidence.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors the promulgation of rules and legislation to develop an administrative proceeding for challenging the validity of patents; and

Specifically, the Section favors adopting a procedure for challenging patent validity in which:

wherein such administrative proceeding is limited to patentability challenges based on patents or printed publications.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors the promulgation of rules and legislation to develop a proceeding for challenging the validity of patents; and

Specifically, the Section favors adopting a procedure for challenging patent validity in which:

wherein such administrative proceeding is limited to patentability challenges based on patents or printed publications.

Not a valid resolution – not approved by majority of Committee.

RESOLVED, that the Section of Intellectual Property Law favors, in principle, expanding the use of inter partes reexamination proceedings as a means to reduce the costs and complexity of patent litigation; and

Specifically, the Section encourages the promulgation of rules to permit the discovery of evidence based on the Federal Rules of Civil Procedure in inter partes reexamination proceedings, provided a higher standard of proof is required to initiate such inter partes reexamination and further provided that such inter partes reexamination proceeding is initiated based upon a showing of a substantial new question of patentability based on patents or printed publications.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, expanding the use of inter partes reexamination proceedings as a means to reduce the costs and complexity of patent litigation while protecting patentees from harassment by third-party requesters; and

Specifically, the Section encourages the promulgation of rules to permit during an inter partes reexamination proceeding interrogatories and other discovery requests in accordance with the Federal Rules of Civil Procedure that can be made and answered in writing, provided such requests are limited to issues raised by an opposing party or the Patent and Trademark Office, and further provided that such inter partes reexamination proceeding is initiated based upon a showing of a substantial new question of patentability based on patents or printed publications.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, expanding the use of inter partes reexamination proceedings as a means to reduce the costs and complexity of patent litigation while protecting patentees from harassment by third-party requesters; and

Specifically, the Section favors the repeal of legislation that limits unexpired patents eligible for inter partes reexamination based on filing date, and favors permitting any unexpired patent to be subjected to an inter partes reexamination.

Adopted, as amended, by Council – April 26, 2004

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, the standard that, for a rejection determination of under 35 U.S.C. §103, a combination of references is proper if consistent with the creativity and problem-solving skills characteristic of those having ordinary skill in the art; and

Specifically, the Section favors that recent Federal Circuit precedent be followed and that the USPTO must make a showing must be made of why the references would have been combined by a person skilled in the art based upon the teachings of the pertinent references or the ordinary knowledge of one of ordinary skill those skilled in the art, as supported by evidence, without the use of improper hindsight.

Adopted, as amended, by Council – April 26, 2004

RESOLVED, that the Section of the Intellectual Property Law opposes, in principle, that USPTO regulations regarding Information Disclosure Statements be amended; and

Specifically, the Section opposes that the regulations be amended to provide that the USPTO may require applicants to submit statements of relevance regarding prior art references

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of the Intellectual Property Law opposes any increased usage of 37 C.F.R. §1.105, which would place a burden on applicants to provide the Patent Office with additional information; and

Specifically, the Section opposes encouraging the use of enhanced examiner inquiries under 37 C.F.R. §1.105(a)(1) and is against a reformulation of Rule 105 to permit additional follow-up to an applicant’s response that requested information is not known or available to the applicant.

Adopted, as amended, by Council – April 26, 2004

RESOLVED, that the Section of Intellectual Property Law favors, in principle, the limited expansion of the use of second examiner review (aka "second pair of eyes") of patent applications during prosecution in the USPTO, in certain art areas where there is a demonstrated need, as in interim step in the overall improvement of the quality of examination of patents in such areas, and

Specifically, the Section of Intellectual Property Law favors use of second examiner review only in those art areas which are now, and where training of examining personnel has been, insufficient, for so long as necessary to ensure adequate examination quality and no longer, as utilization of examining resources in such manner is inherently inefficient and not in keeping with the need to reduce pendency in an environment of limited resources.

Adopted, as amended, by Council – April 26, 2004

RESOLVED that the Section of Intellectual Property Law favors, in the principle, the public recognition by the PTO of its responsibility to balance the interests of the public and those of patent applicants in the granting of patents and the administration of the PTO, and

Specifically, the Section of Intellectual Property Law favors the adoption by the USPTO of a Mission Statement that recognizes the dual responsibilities of the USPTO to patent applicants and to the public in its proper administration of the applicable patent and trademark laws of the United States.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, maintaining the option of an inter partes reexamination proceeding limited to raising grounds of invalidity based on patents or printed publications even if an opposition proceeding is developed to raise grounds of invalidity based on a larger category of evidence, including testimonial evidence.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, the development of a proceeding as an alternative to an inter partes reexamination proceeding for challenging the validity of a patent; and

Specifically, the Section encourages legislation to develop an alternative proceeding in which:

(b) the proceeding is administered by the United States Patent and Trademark Office.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, the development of a proceeding as an alternative to inter partes reexamination for challenging the validity of a patent wherein this proceeding is initiated only after an initial determination by the USPTO is made that either:

(a) a substantial new question of patentability exists, or

(b) a prima facie showing of invalidity of at least one claim in the patent is presented.

Class 2 – Recommit

RESOLVED, that the Section of Intellectual Property Law favors, in principle, the development of a proceeding as an alternative to inter partes reexamination for challenging the validity of a patent wherein this proceeding must be initiated within one year of the patents issue date.

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law reaffirms its support, in principle, for enactment of legislation providing that the right to a patent shall belong to the 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

FURTHER, the Section supports concomitant efforts to conclude international patent harmonization agreements that incorporate such principle, and

IN ADDITION, the Section rescinds the following past actions as potentially inconsistent with the foregoing: 1992 AR73-R102-8; Defeated by ABA 1993, 1991 AR58-R102-1, 1987 SP 57-R102-1, and 1967 S.SP 71.

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law reaffirms its support for, and recommends to the House of Delegates, the rescission of, the following resolution that was adopted by the American Bar Association in 1967, and so recommends to the House of Delegates:

Class 3 – Rest as a Committee Report (NOTE: Subsequently Adopted, as Amended, by Council, June 2, 2004)

RESOLVED, that the Section of Intellectual Property Law reaffirms its support in principle for efforts to achieve greater international harmonization of patent laws and for the participation of the Section, together with other U.S.-based non-governmental organizations, in developing positions on substantive issues related to such efforts,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect post-1993 changes in U.S. patent law and the dynamic nature of the current international discussions:

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law supports, in principle, legislation that would introduce "best practices" into U.S. patent law, including such practices determined to exist based on efforts to achieve greater international harmonization of patent law principles as they relate to prior art, novelty, non-obviousness and loss of right to patent,; and
SPECIFICALLY, the Section rescinds each of the below-mentioned following past actions of the Section (and, if an ABA position, recommends rescission by the House of Delegates of the corresponding ABA positions) that are ten or more years old in order to permit the Section greater flexibility in developing more contemporary positions that more fully reflect the changes in U.S. patent law since these resolutions were adopted and the dynamic nature of the international discussions seeking to identify "best practices":

Class 2 – Recommit

RESOLVED, Section favors in principle legislation creating a post-grant opposition and review procedure in which the patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Patent Appeals and Interferences.

Adopted, as amended, by Council – April 26, 2004.

RESOLVED, the Section of Intellectual Property Law favors in principle adequate funding for the Patent and Trademark Office to permit high quality examination and reasonably prompt disposition of patent applications and to provide adequate services to the public, and submits that the use by the PTO should receive of all of its user fees.

Adopted, as amended, by Council – April 26, 2004.

RESOLVED, that the Section of Intellectual Property Law opposes in principle the statement proposition that the courts and the PTO should "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 monopolies.

Class 1 – Full Debate, as amended

RESOLVED, that the Section of Intellectual Property Law supports favors, in principle, the requirement that publication of all patent applications be published within 18-months of filing and that such publication represents as an appropriate balance between the interests of the applicant and the public. and;

Specifically, the Section supports in principle, the elimination of special exceptions to and redactions from published U.S. patent applications as permitted under the American Inventors Protection Act and repeal of 35 U.S.C. §122(b)(2)(B)(i)-(v).

Class 1 – Full Debate, as amended

RESOLVED, that the Section of Intellectual Property Law supports favors, in principle, 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 patented invention to practice prior to the effective filing date of a patent. and;

Specifically, the Section supports an amendment to the provisions of the American Inventors Protection Act of 1999 providing for such rights to remove restrictions on the enjoyment of such rights inconsistent with this principle.

Class 3 – Rest as a Committee Report

RESOLVED that the Section opposes increasing patent and trademark fees except to the extent necessary to fund the operations of the PTO.

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law favors in principle that the Federal Trademark Dilution Act of 1995 (the "FTDA"), 15 U.S.C. §§ 1125(c), 1127, should be amended to state that questions of trademark dilution, before the federal courts and the United States Patent and Trademark Office, Trademark Trial and Appeal Board, should be uniformly resolved under the "likelihood of dilution standard."

Adopted by Council – March 23, 2004

RESOLVED, that the Section of Intellectual Property Law favors in principle that the Federal Trademark Dilution Act of 1995 (the "FTDA"), 15 U.S.C. §§ 1125(c), 1127, should be amended to state specifically that questions of trademark dilution can be supported by the theory of "tarnishment" as well as by the theory of "blurring"

Adopted by Council – March 9. 2004

RESOLVED, that the Section of Intellectual Property Law favors in principle that the Federal Trademark Dilution Act of 1995 (the "FTDA"), 15 U.S.C. §§ 1125(c), 1127, should be amended to state that marks which have acquired distinctiveness from use in the marketplace are equally eligible for dilution protection under the Trademark Act to the same extent as marks that are inherently distinctive.

Adopted by Council – March 9, 2004

RESOLVED, that the Section of Intellectual Property Law favors in principle that the Federal Trademark Dilution Act of 1995 (the "FTDA"), 15 U.S.C. §§ 1125(c), 1127, should not be amended at this time to state either that marks which are famous within limited geographic areas or commercial market segments are eligible for dilution protection under the Trademark Act to the same extent as marks that are famous on a nation-wide basis, or to state that such marks are ineligible for dilution protection under the Act.

Class 1 – Full Debate, as amended

RESOLVED, that in the event that an amendment to as part of a satisfactory and comprehensive revision of the Federal Trademark Dilution Act codifying the principles underlying Proposed Resolutions 201-1, 201-2, 201-3 and 201-4, is introduced adopting a likelihood of dilution standard, the Section of Intellectual Property Law supports favors, in principle, as part of this amendment to the Federal Trademark Dilution Act the inclusion of a provision that would preempting any state law granting protection protecting against the dilution to of any trademark or service mark not subject to eligible for protection under the Federal Trademark Dilution Act.

Adopted, as amended, by Council – April 26, 2004.

RESOLVED, that the Section of Intellectual Property Law opposes in principle the statement proposition that the courts and the PTO should "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 monopolies.

Adopted by Council – April 26, 2004.

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.

Adopted, as amended, by Council – April 26, 2004

RESOLVED, that the Section of Intellectual Property Law does not favor opposes, in principle, change to the legal standards by which the courts currently evaluate commercial success evidence as an objective indicia of non-obviousness; and

Specifically, the Section considers that (1) the current case law does require that commercial success be evaluated on a case-by-case basis to determine whether commercial success is a valid indicator that the claimed invention is not obvious; (2) the current case law does place the burden on the patent holder to prove that the claimed invention caused the commercial success; and (3) thus, Recommendation No 3(a) of the Federal Trade Commission Report, "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy" (October 2003) is moot.

Adopted, as amended, by Council – April 26, 2004

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, enactment of legislation to amend the burden of proof for attacking the validity of an issued patent to a preponderance of the evidence standard.

Class 2 – Approved as amended

RESOLVED, that the Section of Intellectual Property Law of the American Bar Association opposes, in principle, any provisions legislation specifically limiting the patentability or of plant related inventions and enforcement of plant related of patents on such inventions and strongly believes that plant research should have the same level of patent protection as inventions involving other subject matter; and

Specifically, the Section opposes Section 3 of the International Seed Federation position paper on intellectual property.

Class 2 – Approved as amended

The Section of Intellectual Property Law opposes, in principle, any research or breeders exemption for plants and seeds under 35 U.S.C. § 101.

Adopted by Council – December 23, 2003

RESOLVED, that the Section of Intellectual Property Law opposes in principle any restriction or limitation on the use of funds otherwise lawfully appropriated by Congress if that restriction or limitation has or may have the effect of imposing any subject matter limitation on the patents which the Patent and Trademark Office may issue, in addition to the limitations on the statutory scope of patentable subject matter set forth in 35 U.S.C. § 101; and

Specifically, the Section opposes the enactment of section 634 of Division B of the Conference Report on H.R. 2673, Consolidated Appropriations Act, 2004 (the "Weldon Amendment") or any similar legislation.

Adopted by Council – December 23, 2003

RESOLVED, that the Section of Intellectual Property Law opposes in principle any restriction or limitation on the scope of patentable subject matter imposed for the purpose of discouraging or prohibiting any activity that may be regarded as objectionable – because a patent (a) merely gives the patent owner the right to exclude others from practicing the patented invention, see 35 U.S.C. § 154(a)(1), and (b) does not give the patent owner (or anyone else) any right to practice the patented invention; and

Specifically, the Section opposes the enactment of section 634 of Division B of the Conference Report on H.R. 2673, Consolidated Appropriations Act, 2004 (the "Weldon Amendment") or any similar legislation.

Class 2 – Approved, as amended

RESOLVED, that the Section of Intellectual Property Law of the American Bar Association endorses approves, in principle, the TC1600 Restriction Practice Plan of the United States Patent and Trademark Office and urges the Office to adhere to the Guidelines for Restriction Practice for inventions relating to genetic sequences, protein sequences, and Markush groups of chemical structures as the policy for patent examinations as outlined in Chapter 800 of the Manual for Patent Examining Procedure and in the Office’s guidelines set forth in Examination of Patent Applications Containing Nucleotide Sequences, 1192 O.G. 68 (November 19, 1996).

Class 3 – Rest as a Committee Report

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, any restriction or limitation on the subject matter of patents which the Patent and Trademark Office may issue, in addition to the limitations on the statutory scope of patentable subject matter set forth in 35 U.S.C. § 101, imposed for the purpose of discouraging or prohibiting any activity that may be regarded as objectionable – because a patent (a) merely gives the patent owner the right to exclude others from practicing the patented invention, see 35 U.S.C. § 154(a)(1), and (b) does not give the patent owner (or anyone else) any right to practice the patented invention; and

Specifically, the Section opposes the enactment of legislation that will prohibit or limit the subject matter of patents directed to or encompassing cells, tissues, organs, or other bodily components that are not themselves human organisms including, but not limited to stem cells, stem cell lines, or methods and techniques for producing or using stem cells or stem cell lines for therapeutic cloning.