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United States Patent and Trademark Office Performance and Accountability Report Fiscal Year 2003 Management Discussion and Analysis |
Intellectual Property Policy Developments in Domestic LitigationLitigation
Under 35 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 IP policy, both domestic and international. For example, in domestic litigation, in addition to defending cases in which the Office is sued for decisions it has rendered, the USPTO advises the Solicitor General of the United States on IP matters before the U.S. Supreme Court. In FY 2003, the Office was requested by the Solicitor General to assist in formulating the United States position in six cases before the Supreme Court. In Moseley v. V. Secret Catalogue, 537 U.S. 418 (2003), the Supreme Court addressed for the first time the Federal Trademark Dilution Act of 1995, in particular the standard of proof required to show that a famous trademark is being diluted by a trademark being used by another. Upon the Courts granting certiorari, the U.S. filed an amicus brief supporting the petitioner in-part. The USPTO had a direct interest in the case because under the Act, the TTAB is also charged with resolving issues concerning whether a proposed trademark dilutes a famous trademark. Adopting a position not taken by either party, the U.S. proposed that, in a court case alleging use of a mark in violation of the Act, a plaintiff must show actual dilution, but may do so without necessarily establishing economic harm. The Supreme Court largely adopted an approach proposed by Solicitor General Theodore B. Olson on behalf of the Patent and Trademark Office. N.Y. Times, March 5, 2003. In five other IP cases on which private parties sought certiorari to the Supreme Court, the Court invited the Solicitor General to address the question of whether the petition should be granted. The Solicitor General accepted the Supreme Courts invitation in all five cases and enlisted the assistance of the Solicitors Office in each case. The United States recommended against certiorari in each of these cases for different reasons and the Supreme Court agreed, leaving intact the circuit court decision. Thus, the Court let stand the following:
In addition, the USPTO participated as amicus curiae in cases before the Federal Circuit that raised issues of significant patent policy even when it was not a party. Thus, in Eli Lilly v. Bd. of Reg. of the Univ. of Wash., 334 F.3d 1264 (Fed. Cir. 2003), the USPTO filed an amicus brief in support of the decision entered by the USPTOs BPAI. In agreeing with the USPTO, the Court held that the patent interference statute, 35 U.S.C. § 135, gives the USPTO Director discretion to declare interferences by applying a two-way test for determining whether two parties are claiming the same patentable invention. Significant policy issues also arose among the 48 court of appeals cases and 22 district court cases resolved in the fiscal year in which the USPTO was a party. For example, in In re Boulevard Entmt, 334 F.3d 1336 (Fed. Cir. 2003), the Court held that a showing of vulgarity suffices to establish scandalousness, and that the USPTO satisfied its burden of proof based on dictionary evidence of the terms vulgarity. In Star Fruits v. United States, 03-463-A (E.D. Va.), the Court held that the USPTO did not act arbitrarily in declaring a patent application abandoned when applicant, claiming that the requested information could not be the basis for a rejection of its application, failed to comply with the examiners requirement for information under 37 C.F.R. § 1.105. |
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