Intellectual Property Policy Developments AND Domestic Litigation
Under 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 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 FY 2005, the USPTO assisted the Solicitor General in formulating
the government’s position before the Supreme Court in several important
intellectual property cases. For example, the USPTO assisted the Solicitor
General’s Office with the Government’s brief in Metro-Goldwyn
Mayer Studios v. Grokster, U.S., 125 S.Ct. 2764 (2005). In keeping with
the government’s recommendation, the Supreme Court held that one
who distributes file-sharing software designed for use in copyright infringement
by third parties is liable for any resulting acts of infringement by those
parties. The USPTO also assisted the Solicitor General’s Office
with the government’s brief in Merck KGAA v. Integra Life Sciences
I, Ltd., et al., U.S., 125 S.Ct. 2372 (2005). In Merck, the Supreme Court
held that the safe harbor provisions of 35 U.S.C. § 271(e)(1), which
exempt from patent infringement the use of a patented invention “solely
for uses reasonably related to the development and submission of information”
to the Food and Drug Administration (FDA), extend to experiments using
patented drugs for developing new drugs which will be the subject of an
FDA submission, not just to clinical trials related to an FDA submission.
In addition to the USPTO’s amicus curiae work before the Supreme
Court, the Court of Appeals for the federal Circuit 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., 415 F.3d 1303
(Fed. Cir. 2005), the Federal Circuit asked the USPTO to brief the proper
role of technical dictionaries and the patent specification when construing
patent claims, which is a core issue in both patent application prosecution
and patent infringement litigation. In keeping with the USPTO’s
amicus curiae brief, the Federal Circuit reaffirmed the principle that
the specification is the best guide to the meaning of a disputed patent
claim term, and rejected an approach to claim construction that gives
primacy to dictionaries over the specification.
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International judges attend the USPTO - WIPO Academy for the Judiciary. |
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The Solicitor’s Office also appeared as a party in several other
important patent cases before the Federal Circuit. For example, in In
re Fisher, F.3d (Fed. Cir. 2005), the Federal Circuit considered for the
first time whether the requirement of 35 U.S.C. § 101 that a patented
invention must be “useful” is satisfied by an allegation that
patent claims to a nucleic acid compound have utility as a research tool
even where there is no known practical significance to any result from
a test using the claimed nucleic acids. The Court ruled that the USPTO
correctly applied the Supreme Court’s patent utility standard to
genetic materials, and expressly approved the USPTO’s “Utility
Examination Guidelines.” The USPTO’s position was supported
by amicus curiae briefs from the biotechnology and pharmaceutical industries,
professional associations, and the National Academy of Sciences. The USPTO
also appeared as a party in In re Rath, 402 F.3d 1207 (Fed. Cir. 2005).
Rath is a trademark case in which the Federal Circuit considered whether
the statutory prohibition against registering surnames that have not acquired
distinctiveness conflicts with the U.S.’ obligations under the Paris
Convention. The Court affirmed the USPTO’s TTAB’s refusal
to register two proposed marks as primarily merely surnames, and that
the Paris Convention is not “self executing” and thus cannot
override the statutory prohibition.
Registration
Office of Enrollment and Discipline
The Office of Enrollment and Discipline (OED) had a very successful FY
2005. OED fully implemented computerized testing of applicants for registration
to practice in patent cases before the USPTO. Several important advantages
of computerized testing that were expected have been realized. These include:
steady-state, non-cyclical workflow in processing applications and preparing
examination questions; and greater convenience for applicants scheduling
examinations. Turnaround time for processing applications and examination
results has been reduced. Applicants who take the examination via computer
obtain their results on the day of the examination. In FY 2005, OED processed
3,025 applications concerning the registration examination. OED admitted
2,669 applicants who took the computerized registration examination and
32 applicants who took the examination in a paper format. OED registered
941 individuals as agents and 501 individuals as attorneys. OED issued
146 limited recognition numbers to non-citizens of the United States.
During the course of the year, OED also supported USPTO’s Patents
organization, with emphasis on assuring quality patent examination, by
successfully administering promotion examinations for patent examiners
and patent manager candidates. In FY 2005, OED continued to effectively
protect members of the public. Upon OED’s review of the applications
for registration that were received, OED determined that in 46 applications,
the issue of an applicant’s present moral character was raised.
Six applicants were not registered because of negative moral character
decisions by the OED Director. One applicant withdrew the application
after the OED Director issued a Show Cause requirement. OED either dismissed
or closed the investigations regarding 34 candidates and proceeded with
their registration. During the course of the year, OED received 113 grievances
concerning possible misconduct by registered practitioners. OED opened
51 investigations. Twenty-five grievances were dismissed, after thorough
review and analysis, without investigation. OED closed 61 pending investigations
through a combination of warning letters, memorandums for the Committee
on Discipline, and closure for lack of probable cause to determine that
a USPTO Disciplinary Rule had been violated.
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