Intellectual Property Policy Developments and Domestic Litigation
U nder 335 United States Code (U.S.C.) § 2, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO advises the President and other agencies on Intellectual Property (IP) policy, both domestic and international. For example, in domestic litigation, in addition to defending cases in which the USPTO is sued for decisions it has rendered, the USPTO advises the Solicitor General of the United States on intellectual property matters before the Supreme Court. In fiscal year 2004, the USPTO assisted the Solicitor General in formulating the United States' position before the Supreme Court in the important trademark case KP Permanent Make-Up, Inc. v. Lasting Impressions, Inc. , (Case No. 03-0409). In KP Permanent , the Supreme Court will address for the first time whether the Lanham Act's fair use defense to trademark infringement requires the party asserting the defense to demonstrate an absence of likelihood of confusion as an element of the defense. The USPTO assisted the Solicitor General's Office on the government's brief, and also assisted in the preparation for the government's participation in the oral argument held on October 5, 2004.
In addition to the USPTO's amicus work before the Supreme Court, the Court of Appeals for the Federal Circuit has specifically invited the USPTO to participate as an amicus curiae in an en banc case involving critical patent policy issues. In Phillips v. AWH Corp. , (Case No. 03-1269, -1286), the Federal Circuit asked the USPTO to brief the proper role of technical dictionaries and the specification in claim construction, which is a core issue in both patent application prosecution and patent infringement litigation. With support of the Department of Justice and the Federal Trade Commission, the USPTO filed an amicus curiae brief in August 2004.
The USPTO also appeared as a party in several other important patent cases before the Federal Circuit. For example, in In re Zary , and In re Elsner , --- F.3d ----, (Fed. Cir. 2004), the USPTO argued that foreign sales activity could be used to show that a “printed publication” is enabled and, thus, a statutory bar to two plant patent applications. The Court adopted the USPTO's legal reasoning regarding printed publications, but vacated and remanded the case for further fact-finding. In another case concerning printed publications, In re Klopfenstein , 380 F.3d 1345 (Fed. Cir. 2004), the Federal Circuit upheld the rejection of patent claims under 35 U.S.C. § 102(b) because the inventors, by displaying the invention on poster boards at two scientific meetings attended by those of ordinary skill in the art, had disclosed the invention in a printed publication more than one year before the date of the patent application. In agreement with the USPTO, the Court held that the key inquiry in what constitutes a printed publication is whether or not the reference was publicly accessible.