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Patent and Trademark Office/Nominations
AIPLA Board Member David Kappos Is Nominated as USPTO Director
President Obama on June 18, 2009 announced the nomination of AIPLA Board Member David Kappos as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.
AIPLA congratulates Mr. Kappos, Vice President and Assistant General Counsel, Intellectual Property Law, IBM Corporation, who has served on the Board of Directors of the AIPLA since 2006. He brings to the USPTO significant experience, not only as an intellectual property practitioner, but also as someone with extensive involvement in the issues of greatest interest and concern to the IP community today.
AIPLA President Teresa Stanek Rea stated: “Dave has been a stalwart proponent of a strong and effective patent and trademark system. We wish him the best in applying his experience and understanding to the challenges ahead. AIPLA is also very pleased to see that the long wait for a USPTO Director has ended with the nomination of an experienced and respected IP practitioner.”
AIPLA Executive Director Todd Dickinson said “Having known and worked with Dave for many years, I know he is someone who has a genuine appreciation for the tough issues facing intellectual property policy and administration today. His nomination offers an opportunity for a fresh start, and we look forward to working together with him to meet those challenges.”
To read the White House announcement of the nomination, click here.
AIPLA Past President James Pooley Will Serve As WIPO Deputy Director General
AIPLA congratulates Past President James Pooley, whose nomination to serve as World Intellectual Property Organization Deputy Director General for Patents was endorsed on June 16, 2009 by the WIPO Coordination Committee.
The Committee, which is composed of 83 of WIPO's 184 member states, agreed that Pooley and the other nominees of Director General Francis Gurry, would form a strong new team for the future management and strategic direction of the Organization.
The appointment is officially effective from December 1, 2009, to November 30, 2014. To read the official WIPO press release, click here.
Bill Allowing PTO to Retain and Spend Collected Fees Is Passed by House
Appropriations legislation (H.R. 2847) which will permit the Patent and Trademark Office for another fiscal year to keep and spend all of its fee collections on Office operations was passed by the House of Representatives June 18, 2009.
The Commerce, Justice, Science, and Related Agencies Appropriations Act, 2010, provides the PTO with $1.930 billion, “to remain available until expended.” Among the particular items pertaining to the PTO’s use of the funds, the legislation:
Webcaster Settlement Bill Is Cleared for White House
Legislation (H.R. 2344) designed to extend the period in which webcasters and music copyright owners may negotiate a royalty settlement on June 17, 2009, was passed by the Senate and cleared for the White House.
The bill amends Section 114(f)(5) of the Copyright Act as follows:
Patents/PTO Rules/Amicus Brief
AIPLA Amicus Brief Urges En Banc Federal Circuit Rehearing of GSK-Tafas Decision
Tafas v. Doll, Fed. Cir., No. 2008-1352, brief filed 6/17/09.
A Federal Circuit panel applied the incorrect test in determining that PTO rules limiting patent claiming practice are not substantive but procedural rules within the agency's statutory authority, according to an AIPLA amicus brief urging en banc review. The brief argued that the panel improperly declined to apply Supreme Court’s ruling in Chrysler Corp. v. Brown, 441 U.S. 281 (1979). Under that case, a substantive rule is one that affects individual rights and obligation, according to the brief, and its application in this case required the court to consider the degree of impact which the PTO rules will have on applicants before the PTO.
In a 2-1 panel decision last March, the court held that PTO rules limiting patent claiming practices are authorized procedural rules, reversing a district court decision that the rules are substantive in nature and unauthorized. On the other hand, the entire appellate court panel agreed with the district court that rules limiting continuations practice are invalid as inconsistent with 35 U.S.C. §120. According to the court, the rules add the non-statutory requirement that later continuation applications may not contain amendments, arguments or evidence that “could have been submitted earlier.”
To read the AIPLA amicus brief, click here.
To read the panel decision, as well as concurring and dissenting opinions in this case, click here.
Supreme Court/Copyright Registration/Amicus Brief
AIPLA Argues to Supreme Court Copyright Registration Is Not Jurisdictional
Reed Elsevier, Inc. v. Muchnick, U.S., No. 08-103, brief filed 6/8/09.
AIPLA, in a June 8, 2009 amicus brief argued to the Supreme Court that the Second Circuit misinterpreted 17 U.S.C. § 411(a) in this case by treating the requirement of copyright registration as a condition precedent to subject matter jurisdiction over an action for copyright infringement. On this basis, according to the brief, the appellate court incorrectly barred an action for infringement where some of the works in suit had been registered at the Copyright Office and some had not.
This cases arises out of a class action for infringement brought by authors against publishers who published electronically works that were contracted only for print publication. That dispute resulted in a Supreme Court ruling that the publishers’ revision privilege under 17 U.S.C. 201(c) did not cover the electronic publication. New York Times, Inc. v. Tasini, 533 U.S. 483 (2001). A settlement was ultimately reached between the authors and publishers, but the settlement provided less for authors of unregistered works (comprising most of the claimants) than for authors of registered works. The authors of the unregistered works protested the settlement, but the district court ultimately approved the agreement.
The Second Circuit reversed, concluding that the district court lacked subject matter jurisdiction under Section 411(a) to certify the class and approve the settlement concerning claims arising out of unregistered copyrights. Under Section 411(a), “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” That this language is jurisdictional, according to the court, “is not up for debate.”
To read the AIPLA amicus brief, click here.
Patent and Trademark Office/Deferred Examination
PTO Extends Period for Public Comment on Deferred Examination
In a June 16, 2009, Federal Register notice, the Patent and Trademark Office announced that it has extended the period for public comment on deferred examination to Aug. 31, 2009. 74 Fed. Reg. 28473.
The PTO began its recent consideration of the merits of deferred examination last January with a request for public comment and an announcement of a February roundtable discussion of a procedure which would allow patent applicants to defer examination for some definite period of time. The roundtable discussion revealed the potential benefits of such a process for the PTO, but also highlighted the uncertainties that would result for competitors trying to decide how to commercialize under a cloud of unexamined patent applications.
The initial deadline for comments was February 26, which was subsequently extended to May 29.
To read the PTO notice of the new comment deadline, click here.
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