Congress Expands Protection for American Intellectual Property

Press Release

Brigid Quinn

Washington - Congress enacted today, as part of the Justice Department Reauthorization Act, a bill that will simplify international trademark registration, improve patent quality, decrease reliance on patent litigation, protect the small inventor, and enhance educational opportunities for Americans.

"I want to thank our lawmakers for reinforcing confidence in this nation's intellectual property system by providing American innovators new tools to advance technology and protect their international market share, and strengthening USPTO's ability to issue quality patents," noted Under Secretary of Commerce for Intellectual Property James E. Rogan. "With enactment of this legislation, Congress has again proclaimed that a strong intellectual property system provides the foundation for a strong economy. House and Senate conferees, as well as Judiciary Committee Chairmen Sensenbrenner, Leahy, and Coble, and Ranking Members Conyers, Hatch, and Berman, are to be particularly commended for their hard work on this bill," Rogan added.

The intellectual property provisions of the legislation include:

  • Permitting the U.S. to join the Madrid Protocol, a procedural agreement allowing U.S. trademark owners to file for registration in any number of over 56 member countries by filing a single standardized application at the USPTO, in English, with a single set of fees. American businesses--large and small--seeking to market their products in new countries can gain valuable protection for their trademarks, faster and less expensively than is presently possible.
  • Allowing a third party requester in a patent re-examination to appeal a final agency decision on patentability to the Court of Appeals for the Federal Circuit. This change will help to minimize costly patent litigation by making it more attractive to challenge a patent at the USPTO, rather than in court.
  • Clarifying that patent applications filed with the World Intellectual Property Office (WIPO) will not be used to prevent applicants for U.S. patents from obtaining U.S. patents unless the WIPO application is published before the applicant files in the USPTO, or the publication is in English and was the result of an international application filed before the applicant files in the USPTO. This limits evidence from foreign language applications that may be considered "prior art" and could affect patentability. This is an important safeguard for independent inventors and small American businesses that do not have access to expensive translation services and foreign patent offices.
  • Extending the current exemption of educational use of copyrighted materials to distance learning, allowing teachers at schools, colleges, and universities to send digitized books, music and movies over the Internet without first getting permission from the copyright holder.

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