Intellectual Property Policy and Leadership Performance
Under Secretary Dudas addresses the American Intellectual Property Law Association.
The Department of Commerce and the USPTO fully appreciate the crucial role of intellectual property development and protection in promoting the economic competitiveness of the United States. In addition to the examination and issuance of patents and trademarks, the USPTO works to improve protection of the intellectual property of American innovators and creators on both the domestic and international levels.
Under the American Inventors Protection Act of 1999 (AIPA)(Public Law 106-113), the USPTO is directed to advise — through the Secretary of Commerce — the President, and all federal agencies on national and international intellectual property policy issues, including intellectual property protection in other countries. USPTO is also authorized by the AIPA to provide guidance, conduct programs and studies, and otherwise interact with foreign intellectual property offices and international intergovernmental organizations on matters involving the protection of IP.
Through our Offices of International Relations, Enforcement, and Congressional Relations, the USPTO: (1) helps negotiate and works with Congress to implement international intellectual property treaties and develop domestic IP-related legislation; (2) provides technical assistance to foreign governments that are looking to develop or improve their intellectual property laws and systems; (3) provides capacity-building programs to foreign intellectual property officials on intellectual property enforcement; (4) assists in the drafting and revision of intellectual property sections in bilateral investment treaties and trade agreements; (5) advises the USTR on intellectual property issues in the World Trade Organization (WTO); (6) works with USTR and industry on the annual review of intellectual property protection and enforcement under the Special 301 provisions of the Trade Act of 1974; and (7) consults with the Department of Justice and other federal law enforcement entities who are responsible for intellectual property enforcement.
In fiscal year 2004, intellectual property activities included:
INTELLECTUAL PROPERTY TREATIES/AGREEMENTS
PCT Reform: The USPTO continued to participate in the WIPO's Committee on Reform of the PCT in an effort to achieve a more simple, cost-effective system. Major treaty reforms, based on a U.S. initiative, became effective on January 1, 2004. The U.S. led efforts in fiscal year 2003 to revise the PCT search and preliminary examination guidelines, which provide International Authorities with guidance in the handling and processing of applications under the new combined search and examination system. In March 2004, these guidelines went into effect for international applications filed on or after January 1, 2004. The Meeting of the International Authorities mechanism was reconvened in fiscal year 2004 to, among other things, exchange information on the new enhanced international search and preliminary examination system in effect since January 1, 2004.
Standing Committee on the Law of Patents (SCP): The USPTO participated in WIPO's SCP in an effort to reach agreement on a harmonized set of substantive patent laws. In May 2004, the Trilateral Offices (USPTO, JPO and EPO) proposed that discussions focus on prior art issues to improve chances for an early agreement. Because the SCP could not reach consensus on this proposal, the WIPO General Assembly at its meeting September 27 through October 5, 2004, will determine the organization of future work of the SCP.
WIPO Internet Treaties: The WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), commonly known as the WIPO Internet Treaties, are designed to ensure international protection of copyrighted works, performances, and sound recordings in the digital environment. Over the last several years, the USPTO has worked to ensure the ratification and full implementation of the Treaties, which entered into force in fiscal year 2002. Currently, 48 countries are members of the WCT and 44 of the WPPT, helping to create a seamless web of protection for copyright works online.
Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (GI): The USPTO continued to promote and actively participate in Trademark Law Treaty (TLT) reform as the primary focus of work by the Standing Committee. The USPTO supports inclusion in the revised TLT of the text of the Joint Recommendation on Trademark Licenses, which sets out maximum requirements for license recordal. Inclusion of the text would limit the negative effects for trademark owners in those countries where recordal of trademark licenses is required to maintain both the trademark registration and the license. Also, the Standing Committee reached consensus that the revised TLT should allow offices to choose the means of transmittal of communications, giving the USPTO the flexibility to move to complete electronic processing for trademarks in the future. The Standing Committee forwarded a recommendation to the WIPO General Assembly to schedule a diplomatic conference for 2006, in which adoption of the revised TLT would be considered. The Standing Committee also decided to inform the Internet Corporation for Assigned Names and Numbers that no recommendation would be made to extend protection of the Uniform Domain Name Dispute Resolution Policy (UDRP) to names by which countries are familiarly or commonly known. The USPTO does not favor expansion of the UDRP to those areas in which there is a lack of international law or consensus, including country names, and has continued its educational efforts to raise awareness about possible problems in expanding the UDRP beyond instances of cybersquatting.
Former Under Secretary Rogan signs agreements at the 21st Annual Patent Trilateral meeting in Tokyo. Joining the Under Secretary at the signing ceremony are Yasuo Imai, (center) Commissioner of Japan's Patent Office and Ingo Kober (left), President of the European Patent Office.
Standing Committee on Copyright and Related Rights (SCCRR): The USPTO continued to participate in the work of the SCCRR to develop its proposal on treaty language for a new WIPO treaty for the Protection of the Rights of Broadcasting, Cablecasting, and Webcasting Organizations. The SCCRR also monitored national developments in the legal protection of databases and reported on related developments in U.S. legislation.
Free Trade Agreements (FTA): The USPTO advised the Office of the USTR on intellectual property issues in successful FTA negotiations with Australia, Bahrain, Morocco, and five Central American countries (Costa Rica, El Salvador, Guatemala, Honduras, and Nicaragua). In addition, the USPTO participated in newly-launched FTA negotiations with several additional countries, including Panama, the Dominican Republic, Thailand, Andean Countries (Peru, Colombia and Ecuador) and the Southern Africa Customs Union, composed of Botswana, Lesotho, Namibia, South Africa and Swaziland. The USPTO also continued advising USTR on the negotiations on the Free Trade Area of the Americas. In these negotiations, USPTO worked with USTR and delegations from each country to assure that standards are created that build on the foundation established in the agreement on Trade Related Aspects of Intellectual Property (TRIPs) and other international agreements to protect Intellectual Property.
WTO/TRIPs: The USPTO actively participated in U.S. delegations to the Council for TRIPs of the WTO over the past year. The TRIPs Council continued to review the intellectual property regimes of numerous countries and continued its discussions relating to traditional knowledge, genetic resources, technology transfer, the protection of GIs, and other issues. With the continuation of the ongoing round of multilateral trade negotiations in the WTO that was launched at Doha, Qatar, in November 2001, the USPTO has remained actively involved in WTO intellectual property issues.
WIPO Intergovernmental Committee: The USPTO headed the U.S. delegation to the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge, and Folklore. The focus of U.S. efforts is to encourage developing countries to meet stated concerns about protecting genetic resources, traditional knowledge, and folklore either through current intellectual property regimes or through non-intellectual property laws. Progress has been made in the development of model contractual provisions and traditional knowledge databases.
International Science and Technology (S&T) Agreements: The USPTO continued working closely with the U.S. Department of State in the negotiation of cooperative S&T agreements with other countries, including provisions of the intellectual property annex to S&T agreements that ensure equitable allocation of rights to intellectual property created in the course of cooperative research.
Technical Assistance and Capacity-Building: The USPTO was actively engaged on a number of fronts to strengthen intellectual property administration, protection and enforcement abroad. The Office of Enforcement participated in FTA negotiations, providing advice relating to enforcement obligations. The Office provided guidance and recommendations relating to the Special 301 review and enforcement issues. Policy guidance was provided to USTR on accession to the WTO and in bilateral negotiations.
Linda Lourie, USPTO attorney-advisor, talks with Paul Bremer, then head of the Coalition Occupational Authority, during her assignment in Iraq where she worked with Iraqi officials on issues related to their intellectual property system.
In particular, the Office of Enforcement sought and obtained substantial funding to conduct capacity-building and technical assistance programs in the Middle East and North Africa region under the U.S. Department of State Middle East Partnership Initiative. In Southeast Asia, the U.S. Agency for International Development funded the Association of South East Asian Nations (ASEAN) Cooperation Plan program and the USPTO conducted a variety of intellectual property enforcement and capacity-building programs. For example, in October 2003, the USPTO co-hosted with WIPO a four-day intensive Enforcement Academy, that included the participation of 38 judges, prosecutors, customs and law enforcement officials from 26 countries. In January 2004, the USPTO organized and conducted a Training Workshop for more than 50 intellectual property enforcement officials, prosecutors, and judges from seven Middle Eastern countries in Muscat, Oman. In February 2004, capacity-building workshops on intellectual property enforcement issues were held in Guyana and Suriname. The Office of Enforcement also participated in the WIPO Advisory Committee on Enforcement, focusing on civil proceedings, administrative decisions, criminal proceedings, and prosecution.
The Office of Enforcement, in coordination with the Italian Ministry of Productive Activities and the U.S. Embassy in Italy, held an Intellectual Property Rights Judicial Workshop in Italy in October 2003, and participated in a United Nations Economic Commission for Europe enforcement seminar in Ukraine.
Deputy Under Secretary Pinkos (right) meets with Ian Heath, Director General of IP Australia.
In April 2004, the USPTO, working closely with the Caribbean Community and Common Market and the International Intellectual Property Institute (IIPI), organized and held a major conference, the Symposium on the Establishment of the Caribbean Court of Justice: The Effect on Intellectual Property and International Trade , in Bridgetown, Barbados, that brought together more than 200 distinguished jurists and legal practitioners from the Caribbean region to discuss the role of the new Caribbean Court of Justice from an intellectual property protection, enforcement, and international trade perspective. Also, in April 2004 the USPTO held two judicial conferences focusing on intellectual property rights enforcement in Poland for the judiciary and prosecutors.
In coordination with the Commercial Law Development Program and the U.S. Embassy in Croatia, the Office of Enforcement participated in the Southeast Europe Intellectual Property Rights Border Enforcement and Regional Customs Cooperation Workshop in Croatia in May 2004. Countries participating in the workshop included: Bulgaria, Romania, Macedonia, Bosnia-Herzegovina, Serbia, Montenegro, Albania, Croatia and the UN Mission in Kosovo.
In May 2004, the USPTO, in partnership with the ASEAN Secretariat and the government of Australia, organized and conducted a workshop in Bangkok, Thailand, for more than 90 judges, prosecutors, and intellectual property officials from ten Southeast Asian countries. In July 2004, the USPTO, in partnership with the Pacific Islands Forum Secretariat and the governments of Australia, New Zealand, and Singapore, organized and conducted a workshop on intellectual property protection and enforcement for intellectual property and trade officials from 14 South Pacific island nations.
In August 2004, the USPTO once again assisted the government of Jordan in holding its Second Annual Intellectual Property Week workshops on intellectual property protection, enforcement, and public awareness, with more than 300 participants attending, including six Iraqi judges. Also, in August 2004 the USPTO organized a Workshop on the Enforcement of Intellectual Property Rights in Johannesburg, South Africa, and a Seminar on Fostering Economic Development and Ensuring Public Safety through IPR protection in Kampala, Uganda. Both programs brought together high level officials from government agencies, and private sector representatives, to discuss the importance of protecting and enforcing intellectual property rights.
In September 2004, the USPTO in partnership with Central American Secretariat for Economic Integration and IIPI, organized and conducted a workshop in Antigua, Guatemala for Central American judges and prosecutors focusing on the intellectual property enforcement provisions of the concluded U.S.-Central America Free Trade Agreement.
In September 2004, the Office of Enforcement in coordination with the Turkish Ministry of Justice and the U.S. Embassy in Turkey conducted a Workshop on the Effective Enforcement of Intellectual Property Rights for judges and prosecutors in Ankara, Turkey.
Bilateral and Multilateral Negotiations: The USPTO advised many U.S. government agencies on issues involving IPR protection and enforcement involving countries, regions, and international organizations throughout the world. The USPTO officials have also supported negotiations undertaken by the Department of Commerce, the USTR, and other officials on intellectual property matters in various countries. By working closely with the USTR, the U.S. Department of Justice, and the Department of Commerce's International Trade Administration, USPTO officials have also worked to provide for proportionate, deterrent penalties for commercial scale counterfeiting and piracy in East Asia, South Asia, and other regions.
Special 301: The USPTO advised the USTR in the administration of the Special 301 provisions in U.S. trade law, which requires the USTR to identify those countries that do not provide adequate and effective protection for IPR or lack of market access for products relying on intellectual property protection. The USPTO provided analyses of intellectual property laws of numerous countries, and participated in several bilateral consultations and negotiations conducted by the USTR under Special 301 and in the context of the U.S. trade agenda.
Under Secretary Dudas tours an examiner's office in China.
Patent Trilateral Offices: The Patent Trilateral Technical Meeting, convening in May 2004, continued the cooperative effort that began in 1983 between the USPTO, the JPO, and the EPO. The meeting focused on issues for sharing search results among the three offices, data compatibility with the various electronic filing systems in order that an application can be authored once and filed in multiple countries. Discussions also covered content and access to each office's electronic files/dossiers, and patent law harmonization. Work continued in these areas during fiscal year 2004 in preparation for the 22nd Annual Trilateral Pre-Conference and Conference which will be held at the USPTO's new Alexandria, Virginia headquarters in November 2004.
Trademark Trilateral Offices: At the May 2004 Trademark Trilateral Cooperation Meeting, the USPTO, together with the JPO and the the European Community's OHIM, agreed to a list of identifications and classifications for goods and services that will be accepted in trademark applications filed in the three offices. Having a consistent list for all three offices will make trademark registration easier and faster in the United States, Europe, and Japan. The initial list includes over 7,000 entries, and thousands more will be added as new designations of goods and services are agreed to by the offices.
GEOGRAPHICAL INDICATIONS (GI s )
Congressional staff members screened the geographical indications video produced last year by the USPTO and the Department of Agriculture.
GIs Video: The USPTO's Office of International Relations and the Foreign Agricultural Service (FAS) of the Department of Agriculture produced a video on the U.S. system for protecting GIs through our trademark system. FAS overseas posts will use the video to explain the U.S. position on GIs, and to offer an alternative to proposals to amend the WTO TRIPs Agreement. The video will be used in emerging foreign markets such as Argentina, Brazil, Bolivia, China, Chile, Colombia, Costa Rica, Cuba, Ecuador, Egypt, Guatemala, India, Indonesia, Mexico, Nigeria, Pakistan, Paraguay, Peru, Sri Lanka, Thailand, and Venezuela.
WTO GI Issues: The USPTO actively works on GI issues in the WTO TRIPs Council. Negotiations continue on establishing a multilateral system of notification and registration of GIs wines and spirits. The USPTO and other U.S. government agencies do not support establishing a multilateral system that treats GIs differently from trademarks and undermines the existing protection for trademark rights. Discussions also continue regarding extension of higher-level protection to products other than wine and spirits. The U.S. opposes amending the TRIPs Agreement to change the level of protection for all GI products, as there has not been any demonstration that existing protection is inadequate. Also, the topic of GIs continues to be included in the modalities on the WTO Agriculture negotiations where generic terms (i.e., parmesan, feta, chablis) would be considered intellectual property of a particular region. The USPTO continues to work on an inter-agency basis to ensure that the domestic and export interests of our trademark holders are not damaged.
Under Secretary Dudas meets with Chinese Vice Minister, Li Dongsheng, of the Chinese Trademark Office and Trademark Review and Adjudication Board during one of two visits he made last year to discuss counterfeiting, piracy and other intellectual property issues.
Consultations: The USPTO has been working extensively to improve the protection of intellectual property by Chinese authorities, especially by reducing piracy and counterfeiting activity in China. In fiscal year 2004, Under Secretary Dudas led delegations to China for consultations with senior officials at China's patent, trademark, copyright, and other IP agencies. The primary focus of these trips has been to further the Administration's goals of improving the intellectual property environment for U.S. rights holders in China. Issues addressed by the delegations included the need for improved criminal, civil and administrative enforcement, and the need for protecting copyright over the Internet and China's accession to the WIPO Internet Treaties. Under Secretary Dudas also established a China IPR Team within the USPTO to lead the USPTO's efforts to improve the intellectual property environment in China. The USPTO also exchanged information and agreed to cooperate with China's intellectual property agencies on issues such as protection of industrial designs and pharmaceutical test data, promulgation of new trademark examination guidelines, and providing assistance on procedures for well-known mark examination in China. Many of these initiatives reflect the commitments made and procedures established when China's Vice Premier visited the United States in April 2004, to meet with Secretary Evans and USTR Robert Zoellick, as part of the U.S.-China Joint Commission on Commerce and Trade (JCCT). The USPTO, along with the USTR, is chairing the JCCT Intellectual Property Rights Working Group established in the 2004 JCCT process.
Attaché Posting: In September 2004, a USPTO attorney-advisor was appointed intellectual property attaché to the U.S. Embassy in China and will work with government officials to improve Chinese intellectual property laws, regulations and enforcement procedures. This is the first time that the USPTO has placed an official overseas for the purpose of improving intellectual property protection in a specific country. The assignment fulfills a recommendation in the Department of Commerce report, “Manufacturing in America,” to place a USPTO official in China to provide in-country support to curb intellectual property crime and strengthen enforcement.
Testimony: Under Secretary Dudas testified regarding the USTPO international intellectual property efforts before the Senate Judiciary Committee at a hearing on "Counterfeiting and Theft of Tangible Intellectual Property: Challenges and Solutions" and a hearing held by the Senate Governmental Affairs Subcommittee on Oversight of Government Management, the Federal Workforce and the District of Columbia on “Pirates of the 21st Century: The Curse of the Black Market." Under Secretary Dudas also provided testimony on USPTO's domestic and international intellectual property efforts before the House Appropriations Subcommittee on Commerce, Justice, State and the Judiciary.
USPTO Commissioner for Patents Godici provided testimony to the Senate Finance Committee on business method patents at a hearing titled "Bridging the Tax Gap" and USPTO General Counsel Toupin testified before the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property at an oversight hearing on "Patent Quality Improvement: Post-Grant Opposition." USPTO Chief Financial Officer and Chief Administrator Barnard testified before the House Committee on Government Reform on the issue of "Achieving Diversity in the Senior Executive Service."
Patent and Trademark Fee Modernization: H.R. 1561, the "United States Patent and Trademark Fee Modernization Act of 2004," was passed by the House and approved by the Senate Judiciary Committee. Fee-related elements of the bill were included in a fiscal year 2005 Appropriations bill for Commerce-Justice-State approved by the Senate Appropriations Committee. The bill, as introduced, would revise the patent and trademark fee schedule to reflect more accurately the costs of the services provided by the USPTO and allow the USPTO to generate the income necessary to implement the initiatives of its 21st Century Strategic Plan .
Report to Congress: Section 4606 of the "Optional Inter Partes Reexamination Procedure Act of 1999” includes the requirement that the USPTO submit to the Congress, within five years of the 1999 enactment, a report evaluating whether the inter partes reexamination proceedings established by the Act are “inequitable to any of the parties in interest.” If inequity is determined to exist, the USPTO's report must then contain “recommendations for changes to remove such inequity.” In gathering input for consideration in preparing the report, the USPTO held a round table discussion on February 17, 2004, and solicited comments from interested parties in a Federal Register notice. The final report will be delivered to Congress in