Intellectual Property Policy
Intellectual property policy
The goal of the PTO's intellectual property (IP) policy business area is to help protect, promote, and expand intellectual property rights systems throughout the United States and abroad. To do this, we work closely with House and Senate Judiciary Committee members and staff, crafting legislation to enhance the protection of IP both domestically and internationally. We also support the U.S. Trade Representative and the State Department in international negotiations and consultations to improve IP protection worldwide.
As another of our HIA commitments to the Vice President, we will work in partnership with the World Intellectual Property Organization (WIPO) to enable the electronic filing of Patent Cooperation Treaty (PCT) applications and, by the end of 2000, to electronically receive and process PCT applications at the PTO.
In FY 1998, working with WIPO, we began developing the PCT receiving-office automation system within the PTO. This system will take PCT applications, filed electronically or converted to electronic format in the receiving office, and use them in the automated formalities review and processing.
We will launch the first phase of development, focusing on PCT Chapter I processing of international applications, in August 1999. Phase II, planned for June 2000, will automate PCT Chapter II and national stage processing. We plan to make it possible to file PCT applications electronically in FY 2000.
The 105th Congress passed several significant pieces of intellectual property-related legislation during its second session, and the Senate ratified a number of important treaties. Legislative efforts to reform patent law, reform PTO operations, and provide database protection were unsuccessful.
WIPO Treaties ratification and implementing legislation
H.R. 2281, the Digital Millennium Copyright Act (P.L. 105-304), implements the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The two treaties obligate the signatories to protect copyrighted works, musical performances, computer programs, databases and digital sound recordings. They also provide for on-line rights to distribution, rental, and communication to the public, and on-line rights for performers and producers of sound recordings. The treaties require the signatories to provide adequate legal protection against the circumvention of technologically based security measures, and effective remedies against the knowing removal or alteration of electronic rights management information.
The law's provisions reflect agreements reached during negotiations among copyright owners, Internet service providers, libraries, electronic device manufacturers, and other interests on a wide range of issues including on-line service provider liability, anti-circumvention of copyright protection systems, privacy, distance learning, encryption research, and fair use. The Senate ratified the treaties on October 21, 1998.
Copyright Term Extension
S. 505, the Sonny Bono Copyright Term Extension Act (P.L. 105-298), extends copyright terms from the current life-plus-50 years to life-plus-70 years, and from 75 to 95 years for works for hire. The new term ensures that American creators will enjoy the same term of protection in Europe as is provided to their European counterparts.
The new law also contains music licensing provisions that reflect an agreement on exemptions reached between copyright owners and restaurants and small businesses. Restaurants and bars with less than 3,750 square feet of space are exempted from paying licensing fees for TV and radio broadcasts, as are stores and business offices with less than 2,000 square feet.
Trademark Law Treaty (TLT) ratification and implementing legislation
S. 2193, the Trademark Law Treaty Implementation Act (Pub. L. 105-330), implements the provisions of the TLT that require the simplification and harmonization of requirements for acquiring and maintaining a trademark registration in member countries.
The treaty benefits U.S. trademark owners by requiring that member countries dispense with most legalization requirements and limit the list of filing and registration requirements. It also requires member countries to accept multi-class applications and service mark registrations.
The new law includes provisions regarding trademark law technical corrections and clarification of functionality, and use of certification marks in advertising. It also requires the PTO to conduct a study on issues surrounding the protection of the official insignia of federally and State-recognized Indian tribes. The Senate ratified the TLT on June 26, 1998.
Plant patents and rural access to patent information
The Senate ratified the International Convention for the Protection of New Varieties of Plants (UPOV) on June 26, 1998. The UPOV significantly enhances the protection afforded to plant breeders in the member states.
H.R. 1197, the Plant Patent Amendments Act of 1998 (P.L. 105-289), clarifies that a plant patent includes the right to exclude others from using, selling, or importing both the entire plant and any of its parts.
Section 4 of the new law requires the PTO to "develop and implement statewide computer networks with remote library sites in requesting rural States, such that citizens in those States will have enhanced access to information in their State's patent and trademark depository library."
Indian tribal insignias
Section 210 of H.R. 4328, the Omnibus Consolidated and Emergency Supplemental Appropriations Act (P.L. 105-277), provides that for one year, the PTO cannot process or register any application for a mark identical to the official tribal insignia of any federally recognized Indian tribe.
Section 302 of S. 2193, the Trademark Law Treaty Implementation Act (P.L. 105-330), requires the PTO to study and report on a variety of issues surrounding the protection of the official insignia of federally and State-recognized Indian tribes.
Section 211 of H.R. 4328, the Omnibus Consolidated and Emergency Supplemental Appropriations Act (P.L. 105-277), prohibits enforcement and transactions related to the registration and renewal of trademarks that are the same or substantially similar to those used in connection with a business or assets that were confiscated by the Cuban government.
Section 301 of S. 2193, the Trademark Law Treaty Implementation Act (P.L. 105-330), clarifies that a registrant may use its certification mark in advertising or promoting recognition of the certification program or of the goods and services meeting the certification standards.
In addition to our legislative activities, the PTO provides technical assistance to developing countries that are setting up or improving their IP protection systems. In FY 1998, we worked with 73 different countries, completing 90 assistance projects. In FY 1999, we expect to repeat this performance.
In addition to this work, we assisted on the following projects:
Trade-Related Aspects of Intellectual Property (TRIPs) Council
The TRIPs Council meetings this year focused on the review of enforcement provisions and geographical indications. Developing countries must submit their laws and regulations by the year 2000, and the least-developed countries must submit their laws and regulations by the year 2006. The PTO will be involved in the review of laws and regulations for both the 2000 and 2006 requirements.
Wire the World
In FY 1998, the PTO promoted the U.S. proposal to establish a special WIPO committee to devise methods for member countries to take advantage of information technology. The Wire the World project was formally adopted in WIPO's program and budget for 1998-1999.
The PTO also prepared an IP "cyberplan" in collaboration with the Japanese Patent Office, proposing initiatives to develop and deploy a secure global information infrastructure; establish a network of intellectual property digital libraries, automate the PCT system, and extend and implement solutions based on this system in interested intellectual property offices.
Patent Cooperation Treaty
We continued our efforts to amend the PCT regulations in FY 1998. An ad hoc advisory group meeting under the auspices of WIPO continues to make amendments to the regulations defined by the PCT.
Some of the proposed amendments were finalized in September 1997, and went into effect on July 1, 1998. Those amendments relate to the language of international applications, the publication of a bilingual gazette, priority claims and priority documents, fees, nucleotide and amino acid sequence listings, and electronic filing. Additional proposed amendments have been discussed and will be further discussed at meetings of the advisory group scheduled for November 1998 and March 1999.
Patent Law Treaty
We continue to participate in the effort to simplify the formal requirements associated with patent applications and patents in the different countries of the world. A standing committee, meeting under the auspices of WIPO, is continuing to develop articles and regulations that will simplify many of the formal requirements related to patent applications and patents. When concluded, this effort will greatly simplify the formal obligations and reduce the associated costs for patent applicants and owners of patents in many countries worldwide.
Trilateral patent cooperation
We continue to work with the Japanese and European Patent Offices to seek ways to benefit from advances in information technology, to develop and share patent search tools, and to work on the harmonization of Internet-based filing systems. A memorandum of understanding, developed and signed at the 16th Annual Conference in Miami, focuses on mechanisms for the future electronic exchange of data and the extension of the trilateral network to WIPO. It also looks at revising the information dissemination policy to allow each office to make available to the public on an Internet service the data received from the other two offices, and at implementing a new concurrent search pilot.
The Hague Agreement
Consultations continue on drafting a new Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The new act is aimed at revising the current agreement to attract as wide a membership as possible and to establish a more efficient and accessible international filing system for the protection of industrial designs. The U.S. delegation, led by PTO experts, has moved discussions toward a system similar to design patent protection in the United States.
Audiovisual performers rights
The PTO, along with other U.S. Government agencies, worked with the U.S. motion picture industry and performers' unions to develop an agreement to improve international protection for audiovisual performers rights. As a result, the U.S. Government put forward a comprehensive proposal for a new Treaty on Audiovisual Performers Rights. This proposal aims to meet the needs of both performers and film producers in the marketplace.
This proposal is a new milestone in U.S. international copyright policy, and it is also a milestone in developing the policies that shape international copyright law in this area. This proposal is the first time that the United States has taken the initiative on this long-standing and controversial topic and proposed an agreement to ensure both moral rights and economic rights for audiovisual performers.
Visiting Scholars Program
The 13th Annual Visiting Scholars Program (VSP) offered two weeks of classroom and hands-on study to IP officials from 15 countries. The VSP gives representatives from IP offices around the world a better understanding of the critical role of intellectual property protection in building strong, vital economies.