108th Congress exits, leaving several intellectual property bills stalled on the hill

After working through the weekend and on the Columbus day holiday, the members of the 108th Congress left Washington to break for the upcoming elections. Several bills relating to intellectual property have been left on the table and now have little chance for passage by this Congress. The members are expected back following elections in a lame-duck session for passage of the remaining appropriations bills, and possibly the intelligence overhaul bill. The odds that an intellectual property bill not related to (or dumped into) an appropriations bill will be passed are slim at best.

Here’s a quick run-down of some of the major patent and trademark bills Congress is leaving behind:

1. H.R. 1561 — The United States Patent and Trademark Fee Modernization Act. This bill is the legislative workhorse behind the United States Patent and Trademark Office 21st Century Strategic Plan. It includes provisions for the new fee and examination structure, and also includes the controversial anti-fee diversion provisions that prevents the diversion of funds from the Office. The new fee structure has been incorporated into S.2809 (the appropriations bill for Commerce, Justice and State) without the anti-fee diversion language. Consideration of S.2809 appears to be the most interesting bill to watch in the upcoming lame-duck session.

2. S.2192 — The Cooperative Research and Technology Enhancement (CREATE) Act. This bill amends 35 USC 103(c) to clarify the intent of Congress that patenting of inventions that result from collaborative or “team research” efforts be permitted. Under current obviousness law, inventions arising from such efforts may not be patentable.

The bill is a direct response to the Federal Circuit’s 1997 decision in Oddzon Products v. Just Toys [html]. In that case, the Court found that the sharing of confidential information by members of a research team could render an invention obvious if the researchers did not have an obligation to assign their rights to the invention to a single entity in advance of making the invention. The CREATE Act responds by extending the “safe harbor” provisions of current law that apply to “common owner inventors” to “joint research agreement inventors.”

Under the Act, such “joint research agreement inventors” must identify the parties to the applicable agreement in the application for patent. This can be done via amendment practice.

The practical effect of the bill is to allow patentably indistinct claims to be separately owned, which is not permitted under current law. To protect the public from the effect of this newly-permitted obviousness-type double patenting, the patentably indistinct patent must include a disclaimer that will require the owner of that patent to waive the right to enforce that patent separately from the first-issued patent. The disclaimer will also tie the terms of the patents together.

3. S.1191 — The Intellectual Property Protection Restoration Act. This bill responds to decisions of the Supreme Court in Florida Prepaid v. College Savings Bank and its companion case, College Savings Bank v. Florida Prepaid. In these cases, the Court ruled that States and their institutions cannot be held liable for damages for patent infringement and other violations of the federal intellectual property laws.

The bill responds to these cases by giving States a choice: it gives States reasonable incentives to waive their immunity in intellectual property cases, but does not require them to do so. States that choose not to make such a waiver cannot recover any money damages in suits for infringement.

4. S.2796 — a bill to clarify that service marks, collective marks, and certification marks are entitled to the same protections, rights, and privileges of trademarks. The bill responds to the decision of the Second Circuit Court of Appeals in Idaho Potato Commission v. M&M Produce Farm and Sales [.pdf] (335 F.3d 130, 2d Cir. 2003). In Idaho Potato Commission, the court interpreted the Lanham Act as requiring that certification marks be treated differently than trademarks with respect to “no challenge” provisions in license agreements. Under an agreement that includes a “no challenge” provision, the licensee acknowledges and agrees not to challenge the validity of the mark.

See this prior PTP post for an overview of S.2796 and Idaho Potato Commission.

5. H.R. 4358 — The Stop Counterfeiting in Manufactured Goods Act. This bill is aimed at strengthening trademark law used to prosecute counterfeiters. The bill provides for the mandatory destruction of equipment used to manufacture and package counterfeit goods, clarifies that the law prohibits trafficking in counterfeit labels, patches, and medallions that are not attached to any goods, and offers greater protection for famous marks by removing the requirement that a spurious mark be used in connection with the goods or services identical to those for which the famous mark is already registered.