INTELLECTUAL PROPERTY POLICY AND LEADERSHIP

As the largest IP office in the world, the USPTO is leading efforts to develop and strengthen domestic and international IP protection. The growing importance of IP rights and the globalization of economic activity has led to new cooperative initiatives between the USPTO, international bodies, and other IP offices, including the EPO, the JPO, the European Union’s (EU) Office for Harmonization in the Internal Market (OHIM) for trademarks and designs, the World Intellectual Property Organization (WIPO), and the World Trade Organization (WTO). International negotiations, consultations, and information sharing efforts led by USPTO experts are geared to providing more effective and cost-efficient means of protecting the IP rights of U.S. nationals abroad.

The USPTO is responsible for formulating policy on patent, trademark, and copyright issues. The Administrator for External Affairs, with the support of the Office of Legislative and International Affairs, serves as the principal adviser to the Under Secretary and Director on public policy matters related to IP protection. Ongoing activities include:

• Drafting legislative and policy proposals concerning IP matters;
• Promoting the development of multilateral systems for the protection of IP rights;
• Participating in IP consultations; in meetings regarding IP in international organizations, in particular the WIPO and the WTO; and in negotiations on multilateral and bilateral trade agreements;
• Providing technical assistance to developing countries, countries in transition to a market economy and least developed countries; and
• Working with the Office of the U.S. Trade Representative and industry on the annual review of IP protection and enforcement under Section 301 of the Trade Act of 1974 (as amended in 1988).

Other reviews conducted under U.S. laws governing trade benefit programs include the Generalized System of Preferences and the Caribbean Basin Initiative, conducting IP enforcement training for developing countries, and supporting and promoting the creative efforts of America’s independent inventors and entrepreneurs.

During FY 2001, the following developments related to USPTO funding and operations were noteworthy:

USPTO Reauthorization and Fees. On July 24, 2001, the House Judiciary Committee approved an amended version of H.R. 2047, "The Patent and Trademark Office Authorization Act of 2002." The bill authorizes USPTO to have access to all fees collected in FY 2002; requires the development of a user-friendly electronic system for filing and processing patent and trademark applications; and requires the development of a five-year strategic plan to enhance quality, reduce pendency, and develop an effective electronic system for use by USPTO and the public for "all aspects of the patent and trademark processes."

USPTO Appropriations. On September 13, 2001, the Senate passed an amended version of H.R. 2500, Commerce-Justice-State Appropriations for FY 2002. The bill would fund USPTO at $1.139 billion, consistent with the President's budget request. The House-passed version would fund USPTO at $1.129 billion, $92 million above FY 2001 and $10 million below the President's request. Senate committee report language requires the Secretary of Commerce to develop and deliver to Congress by January 15, 2002, a five-year strategic plan for the USPTO. The plan would include information on handling workload, improving patent quality, reducing pendency, and improving training, retention and productivity of examiners. The measure also directs the USPTO to fully implement the "electronic file wrapper" by the end of FY 2004.

USPTO Oversight Hearing. The House Judiciary Subcommittee on Courts, the Internet and Intellectual Property held an oversight hearing on the operations of the USPTO on June 7, 2001. Acting Director Nicholas Godici provided testimony along with representatives of the Intellectual Property Owners Association (IPO), International Trademark Association (INTA) and the Patent Office Professional Association (POPA).

Business Method Patents Hearing. The House Judiciary Subcommittee on Courts, the Internet and Intellectual Property held a hearing on business method patents on April 4, 2001. Acting Director Nicholas Godici provided testimony along with representatives of the American Intellectual Property Law Association, IPO, and Travelocity.com.

The following key legislation impacting the USPTO also was passed during FY 2001:

Patent Reexamination Legislation. On September 5, 2001, the House of Representatives passed two bills that would reviseprocedures for the reexamination of patents. H.R. 1866 clarifies that reexamination may be based on a patent or printedpublication previously cited by or to USPTO or considered by USPTO. H.R. 1886 provides for appeals to the Court of Appealsfor the Federal Circuit by third parties in inter partes reexamination proceedings.

AIPA Technical Amendments. On February 14, 2001, the Senate passed S. 320, the "Intellectual Property and High TechnologyTechnical Amendments Act of 2001." The House passed an amended version of the measure on March 14, 2001. Both bills provide for clerical, technical, and minor substantive changes to the AIPA, as well as trademark and copyright statutes.

Madrid Protocol. The House of Representatives approved H.R. 741, "The Madrid Protocol Implementation Act," on March 14, 2001. The Senate Judiciary Committee approved a companion bill, S. 407, on July 19, 2001. The ratification package is pending in the Senate Foreign Relations Committee. The Protocol would permit U.S. trademark owners to file for trademark registration in any number of member countries by filing with the USPTO a single standardized application, in English, with a single set of fees.

Copyright-Distance Learning Legislation/USPTO report. On June 7, 2001, the Senate approved S. 487, "The Technology, Education, and Copyright Harmonization Act of 2001." The House Judiciary Subcommittee on Courts, the Internet and Intellectual Property passed the measure on July 11, 2001. The bill would amend copyright law to update educational use provisions to account for advancements in digital transmission technologies that support distance learning. It also would require the USPTO to submit a report to Congress (within 180 days of the bill’s enactment) describing technological protection systems intended to protect digitized copyrighted works and prevent infringement. The report would not include any recommendations or comparative assessments of those technologies.

The following international activities of IP interest to the USPTO occurred in FY 2001:

Substantive Patent Law Harmonization. In order to reduce the costs for American patent owners to secure IP rights abroad, the USPTO is working with WIPO to harmonize substantive patent law. In FY 2001, the Standing Committee on the Law of Patents, meeting under the auspices of WIPO, began developing treaty articles, rules, and practice guidelines that attempt to harmonize the different substantive requirements associated with obtaining patent protection throughout the world. Upon conclusion, these measures will provide a truly harmonized system governing not only the substantive law of patents but also the practice to implement that law, allowing for uniform treatment of patent applications and patent grants.

Patent Law Treaty (PLT)/Patent Cooperation Treaty (PCT). The USPTO is leading efforts to simplify procedural matters for securing patents abroad through reform of the PCT and implementation of the PLT. The USPTO is preparing the ratification package for the PLT and is drafting the necessary implementing legislation for the treaty. The PLT, signed in June 2001 by 43 WIPO member states including the United States, will enter into force upon ratification by 10 member states. The treaty provides uniform filing requirements and formal procedures among the member countries in order to reduce the high costs of patent protection abroad.

Trilateral Patent Cooperation. Recognizing the need for a standardized approach to the electronic filing of applications, the trilateral offices of the USPTO, EPO, and JPO agreed in FY 2001 on a number of technical issues related to the finalization of a WIPO standard for electronic filing. This standard will allow for future interoperability of software among the trilateral offices for the national/regional phase, as well as for PCT applications. It also will allow Member State Offices and customers the flexibility to choose their own system/software for filing applications.

WIPO Meeting of the Assemblies of Members States. At a September 2001 WIPO Meeting of the Assemblies of Members States, a number of noteworthy IP developments occurred. An important U.S.-sponsored modification to the PCT was approved to simplify the treaty and alleviate a serious workload problem faced by certain International Searching and Preliminary Examining Authorities, including the USPTO. The change extends from 20 to 30 months from the priority date the time limit under Article 22(1) in which applicants must perform certain acts in order to ensure that processing of the international application is commenced by the designated offices in which the application is to proceed. In the area of trademarks, the General Assembly of WIPO adopted a "Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet." This document represents the first international consensus position on a standard approach for determining when a mark used on the Internet has been infringed and what actions might indicate good faith rather than intent to infringe. Additionally, a significant international consensus was achieved regarding the protection of audiovisual performances. For the very first time, a general international agreement exists on the economic and moral rights of performers in their performances in the digital environment.

Trademark Trilateral. In an historic meeting held May 22-23, 2001, the USPTO organized and hosted the first-ever trilateral cooperation meeting with JPO and OHIM. The meeting resulted in a commitment by the three offices to further improve the systemic environment for trademark owners worldwide. Cooperative efforts include standardization of identifications of goods/recitations of services, creation of a Nice Classification-based database of such identifications/recitations, electronic filing and use of the Internet, electronic standards for the display of color marks, and standardized application of the Vienna Classification for figurative elements.

Geographical Indications (GI). The USPTO continues to work to educate U.S government colleagues, foreign governments, and international organizations on the relationship between GI and trademarks. International understanding of the WTO/Trade Related Aspects of Intellectual Property (TRIPs) Agreement’s obligations related to GIs and trademarks is critical because U.S. trademarks abroad are being cancelled in favor of foreign "geographic" terms, while U.S. parties with interests in geographical indications (e.g., "IDAHO" for potatoes) are unable to obtain protection in many countries. Accordingly, the USPTO was very active in representing the U.S. government in its dispute-settlement consultations with the EU over GI violations in EU Regulation 2081/92. It also participated in a variety of international fora, including the WTO/TRIPs Council, WIPO's Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications, and the Free Trade Area of the Americas (FTAA) negotiations to increase understanding of GI.

Domain Names. USPTO is an active participant in events affecting domain names, participating in the Government Advisory Committee constituency of the Internet Corporation for Assigned Names and Numbers (ICANN) and preparing formal written comments in response to the Second WIPO Internet Domain Name Process interim report. To ensure that bilateral and multilateral agreements include reference to WHOIS (search-tool)-type databases and Uniform Dispute Resolution Process type procedures within the country-code top-level domains, USPTO crafted relevant language for inclusion in the Singapore and Chile Free Trade Agreements (FTAs) and the Free Trade Agreement of the Americas (FTAA) text. The USPTO also coordinated the Washington, D.C. regional consultation for the Second WIPO Internet Domain Name Process, held at the Department of Commerce on May 29, 2001.

WIPO Copyright Treaties. The USPTO continues to promote the ratification and implementation of the 1996 WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), which are designed to ensure international protection of copyrighted works, performances and sound recordings in the digital environment. The U.S. deposited its instruments of ratification for the treaties in 1999, and 30 ratifications or accessions are necessary for each treaty to enter into force. At the end of FY 2001, 28 countries had ratified/acceded to the WCT and 26 had ratified/acceded to the WPPT.

Hague Convention on Jurisdiction and Foreign Judgments. The USPTO continues to be engaged in the Hague Conference on Private International Law as the conference negotiates a convention on jurisdiction and the recognition and enforcement of foreign judgments in civil and commercial matters. The proposed convention would create jurisdictional rules governing international lawsuits and provide for recognition and enforcement of judgments by the courts of Contracting States in other Contracting States. On October 17, 2000, the USPTO published a Request for Comments seeking views on the impact that the draft of the proposed convention would have on IP-related litigation. A second Request for Comments was published in August 2001. The first session of a Diplomatic Conference on the convention was held in June 2001 in The Hague, Netherlands. However, delegates were unable to decide how to move the negotiations forward, and an agreement was reached to reconvene in early 2002 to decide the scope of future negotiations.

During FY 2001, the USPTO engaged in the following key IP enforcement activities:

National Intellectual Property Law Enforcement Coordination Council (NIPLECC). The USPTO Director serves as co-chair of NIPLECC, which coordinates domestic and international IP law enforcement among federal and foreign entities. The USPTO co-hosted a public NIPLECC meeting in November 2000 at the U.S. Department of Commerce to solicit public comment on the issues to be addressed by the council. Participants included the Business Software Alliance, the Recording Industry Association of America, the Pharmaceutical Researchers and Manufacturers of America, and the International Trademark Association. In January 2001, the USPTO issued a report to Congress on the effort to refine the NIPLECC’s mission and to identify areas in which interagency coordination could improve the government’s performance in IP law enforcement.

Trade Related Aspects of Intellectual Property Compliance (TRIPS). The USPTO provides technical assistance to developing country WTO Members on implementation of the Agreement on the Trade Related Aspects of Intellectual Property, including thorough review of, and advice on, legislation and seminars and other technical assistance on particular areas of IP. Developing country members had until January 1, 2000, to be in full compliance with their obligations. In FY 2001, the USPTO reviewed the laws of 50 developing country WTO members to prepare questions for the reviews of those countries’ implementation of their obligations under TRIPs. The USPTO also participated in four TRIPs council meetings and provided follow- up questions for members under review.

IP Enforcement Training. In FY 2001, the USPTO was engaged on a number of fronts to strengthen IP administration and enforcement abroad. The USPTO developed a number of country-specific, interagency enforcement training initiatives and administered these programs worldwide. During FY 2001, the USPTO cosponsored with the U.N. Economic Commission for Europe’s IP Advisory Group an IP and Internet enforcement program for government and private sector participants from Europe. It sponsored or cosponsored over a half-dozen enforcement programs for government officials from Asia, Eastern Europe, the Americas and Africa and took the lead in developing country-specific interagency enforcement training initiatives for China, Taiwan, Mexico, Oman, Croatia, Russia, and Vietnam. The USPTO, in cooperation with WIPO, also continues to offer its twice-annual IP Enforcement Program to government officials from around the world.

Visiting Scholars Program. For more than 15 years, USPTO’s Visiting Scholars Program has provided representatives from IP offices around the world with a better understanding of the critical role IP protection plays in economic development. In FY 2001, 68 participants from 26 countries were provided two weeks of classroom and hands-on study during the sessions in October 2000 and June 2001. The programs focused on U.S. patent, trademark, and copyright law and examination issues, including topics such as computer software patents, biotechnology, and geographical indications.