Intellectual Property Policy and Leadership Performance

The DOC and the USPTO fully appreciate the crucial role of intellectual property development and protection in promoting the economic competitiveness of the United States. In addition to the examination and issuance of patents and trademarks, the USPTO is leading efforts to improve protection of the intellectual property of American innovators and creators on both the domestic and international levels.

STOP! Initiative Provides Information to Businesses about Protecting Intellectual Property: The USPTO continued throughout FY 2006 working with other governmental agencies and the private sector on the STOP! initiative, which is the most comprehensive U.S. government-wide initiative created to combat trade in pirated and counterfeit goods. The initiative’s goals are to stunt the growth of global trade in fake goods that threaten America’s innovation and economy, the competitiveness of U.S. businesses, and the livelihood of their workers.

As part of STOP!, the USPTO manages a hotline (1-866-999-HALT) that helps small- and medium-sized businesses leverage U.S. Government resources to protect their intellectual property rights in the United States and abroad. Callers receive information from a staff of over three dozen intellectual property attorneys at the USPTO with expertise on how to secure patents, trademarks, and copyrights, and on enforcement of these rights throughout the world. In FY 2006, the USPTO Hotline received 1,460 calls including calls regarding counterfeiting and piracy concerns with respect to China and other countries.

STOP! Works Around the World: The USPTO has established a link from its USPTO website to the DOC website www.stopfakes.gov, which provides in-depth information about the STOP! initiative. One key feature of the website is the country-specific “toolkits” that have been created by our overseas embassies to assist small- and medium-sized businesses to understand the atmosphere and how to protect and enforce their rights in a particular country. During FY 2006, toolkits for Brazil and Malaysia were added to those already in existence for China, Korea, Mexico, Taiwan, and Russia. Additional toolkits will be posted in FY 2007.

STOP! also seeks to increase global awareness of the risks and consequences of intellectual property theft through a section of its website, www.stopfakes.gov/smallbusiness, that is specifically designed and operated by the USPTO to answer common questions of small businesses so they can better identify and address their intellectual property protection needs. This information emphasizes the need for businesses to consider securing their trademark and patent rights on a country-by-country basis.

STOP! Works for Small- and Medium-Sized Businesses: While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk since they often lack the knowledge and expertise to effectively combat that theft. In addition, since small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

As part of the STOP! initiative in FY 2006, the USPTO continued its intensive national public awareness campaign by offering conferences targeting small- and medium-sized businesses where participants learned what intellectual property rights are, why they are important, and how to protect and enforce these rights. Six workshops were conducted throughout the country in FY 2006. The USPTO will continue to hold small-business outreach seminars in FY 2007 to give American businesses face-to-face contact with intellectual property experts.

USPTO Efforts in China and Other Countries: The USPTO also organized and conducted China intellectual property-focused programs in FY 2006 in four U.S. cities for companies with an established presence in China, companies contemplating entering China, and companies that simply want to know more about how to protect and enforce their intellectual property rights against counterfeiting and piracy in China. Topics included a review of recent laws and regulations promulgated by the Chinese government that affect protection and enforcement of intellectual property, what the U.S. Government is doing to improve intellectual property protection and enforcement in China, how to best protect business assets to avoid intellectual property problems, how to recognize product infringement, and steps to take if infringement occurs. Additional China intellectual property-focused programs are being planned for FY 2007. These will include expanded technical assistance programs for Chinese government officials and greater outreach to U.S. businesses.

The USPTO expanded its intellectual property awareness campaign in FY 2006 through its increased participation in U.S. Export Assistance Center (USEAC) programs, the federal government’s program run by DOC’s U.S. & Foreign and Commercial Service (U.S.&FCS), that promotes and assists businesses in exporting and financing U.S. goods and services worldwide. These programs allow the USPTO to reach a wide audience of small businesses and help them integrate intellectual property protection into their business strategy. Through these programs, the USPTO attorney-advisors provided personalized assistance to small- and medium-sized businesses in various cities throughout the U.S. with respect to the STOP! initiative, the resources on the www.stopfakes.gov website, and the need to consider securing patents and trademarks on a country-by-country basis. The USPTO plans to continue its partnership with the USEAC programs in FY 2007.

In FY 2006, in conjunction with DOC’s U.S.&FCS and the Department of State, the USPTO placed attorney-advisor intellectual property experts in high-profile countries with serious intellectual property challenges. These individuals, posted in Bangkok, Thailand; New Delhi, India; Cairo, Egypt; Beijing, China; and Sao Paulo, Brazil, will support U.S. embassies and consulates on IPR issues, advocate U.S. intellectual property policies, coordinate training on IPR matters, and assist U.S. businesses that rely on IPR protection abroad. These five postings complement the USPTO attaché currently detailed in Beijing, China. The USPTO plans to continue expanding its overseas IPR initiative in FY 2007 by placing additional experts in Moscow, Russia and Guangzhou, China.

GIPA Trains Foreign Officials in Intellectual Property Management: The USPTO greatly increased its training and capacity-building initiatives on intellectual property protection and enforcement by creating the GIPA in FY 2005. Through GIPA, USPTO brings foreign government officials - including judges, prosecutors, police, customs officials, patent, trademark, and copyright officials and policy makers - to the United States to learn, discuss, and strategize about global IPR protection and enforcement.

In FY 2006, the USPTO conducted 17 GIPA programs for foreign officials at its headquarters in Alexandria, Virginia. One of these included an additional four-city study tour for 21 judges and prosecutors from seven different countries in the Middle East and Northern Africa that highlighted U.S. Government and private industry/rights holder initiatives to combat IPR theft and infringement. The program also provided the participants the opportunity to interact with U.S. judges, prosecutors, and private rights holders to learn more about the harm caused by IPR infringement. Another initiative, with 19 Middle Eastern and Northern African librarians and legal advisors participating, continued its program by touring seven U.S. cities where participants were provided information on how to modernize their libraries and implement library information management in their countries while balancing the needs for stronger intellectual property protection and enforcement to stimulate research and education. In FY 2007, the USPTO plans to conduct at least 21 such programs domestically as well as numerous other programs around the world. Through these GIPA programs, foreign government officials are equipped to improve protection and enforcement of intellectual property rights in their home countries through intellectual property rights practices.

USPTO Advises the President on Intellectual Property Issues: Under the AIPA of 1999 (Public Law 106-113), the USPTO is directed to advise the President, through the Secretary of Commerce and all federal agencies, on national and international intellectual property policy issues, including intellectual property protection in other nations. The USPTO is also authorized by the AIPA to provide guidance, conduct programs and studies, and otherwise interact with foreign intellectual property offices and international intergovernmental organizations on matters involving the protection of intellectual property.

Through the Offices of Congressional Relations, International Relations, and Enforcement, the USPTO: (1) helps negotiate and works with Congress to implement international intellectual property treaties and develop domestic intellectual property related legislation; (2) provides technical assistance to foreign governments that are looking to develop or improve their intellectual property laws and systems; (3) provides capacity-building training programs to foreign intellectual property officials on intellectual property enforcement; (4) advises the Department of State and the USTR on drafting and reviewing of intellectual property sections in bilateral and multilateral investment treaties and trade agreements; (5) advises the USTR and the Department of State on intellectual property issues in the WTO; (6) works with USTR, the Department of State, and American industry on the annual review of intellectual property protection and enforcement under the Special 301 provisions of the Trade Act of 1974; and (7) consults with the Department of Justice and other federal law enforcement entities who are responsible for intellectual property enforcement.

INTELLECTUAL PROPERTY TREATIES/AGREEMENT

PCT Reform: The USPTO continued to participate in WIPO’s Working Group on Reform of the PCT in an effort to achieve a simpler, more cost-effective system. Major treaty reforms, based on a U.S. initiative, became effective on January 1, 2004. In FY 2006, the USPTO initiated discussions in two sessions of the Meeting of the International Authorities of pending proposals from the Working Group on Reform of the PCT. These discussions continue to refine the reforms initiated in 2004, including adoption of quality management standards for international searching and examining authorities. As a result of this effort, the PCT Assembly approved a number of outstanding reform proposals in FY 2006.

Standing Committee on the Law of Patents (SCP) and Patent Law Harmonization: The USPTO participated in WIPO’s informal meeting of the SCP in an effort to agree to a work program for that body and move forward the discussions on substantive patent law harmonization. The United States maintained its strong support for the proposal, sometimes referred to as the “limited package.” The proposal was introduced previously by the Trilateral Offices consisting of the USPTO, JPO, and EPO, to limit the discussions to prior-art related issues. Although a number of compromise proposals were considered, a work program was not adopted due to firm opposition from Brazil, Argentina, and a number of other member states. In FY 2006, the WIPO General Assembly raised the issue of the future work of the SCP and agreed that consultations would be held on this matter. In the interim, due to the advocacy of the United States, the members of the so-called “Group B+” continue progress on the limited package work program of patent law harmonization and have agreed to pursue work based on a compromise by the body Chair, with the view of reaching agreement in the near term.

WIPO Internet Treaties: The WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), commonly known as the WIPO Internet Treaties, are designed to ensure international protection of copyrighted works, performances, and sound recordings in the digital environment. Over the last several years, the USPTO has worked to ensure the ratification and full implementation of the treaties, which entered into force in FY 2002. Currently, 59 countries are members of the WCT and 58 are members of the WPPT, helping to create a seamless web of protection for copyright works on-line.

Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT): The USPTO continued to promote United States Government policy goals within the discussions of the Standing Committee regarding future work items for the SCT now that the Trademark Law Treaty (TLT) reform efforts ended with a successful Diplomatic Conference in March of 2006. These goals include expert discussions regarding geographical indications, opposition procedure best practices, and Article 6ter of the Paris Convention, all of which have been included on the future agenda of the SCT.

Singapore Treaty on the Law of Trademarks: In March of 2006, a Diplomatic Conference of WIPO adopted the text of the Singapore Treaty on the Law of Trademarks. The USPTO represented the United States at the Diplomatic Conference and was one of 41 delegations to sign the treaty. The USPTO continues to work to ensure ratification of the treaty by the U.S. The Singapore Treaty updates the 1994 TLT to adapt to certain business realities. The TLT is designed to harmonize formalities and simplify procedures in the application for, registration, and renewal of trademarks by establishing maximum requirements that contracting parties can impose on trademark applicants and holders. The beneficial features of the 1994 TLT are included in the text of the Singapore Treaty in addition to improvements, such as allowing for national trademark offices to take advantage of electronic communication systems as an efficient and cost saving alternative to paper communications. License recordal provisions in the treaty will reduce the formalities trademark owners must face when doing business in a country that is a party to the Singapore Treaty requiring recordal and will reduce the damaging effects that can result from failure to record a license in those jurisdictions. In addition, the Assembly provisions create a more attractive treaty for WIPO member states since the Assembly can discuss matters relating to the regulations governing implementation of the treaty.

Standing Committee on Copyright and Related Rights (SCCRR): The USPTO continued in FY 2006 to participate in the work of the SCCRR to develop its proposal on treaty language for a new WIPO treaty for the Protection of the Rights of Broadcasting, Cablecasting, and Webcasting Organizations. The SCCRR also monitored national developments in the legal protection of databases and reported on related developments in U.S. legislation.

Free Trade Agreements (FTA): The USPTO is participating in FTA negotiations with several countries, including South Korea, Malaysia, Thailand, Ecuador, United Arab Emirates, and the Southern Africa Customs Union, composed of Botswana, Lesotho, Namibia, South Africa, and Swaziland. In these negotiations, the USPTO works with the USTR and delegations from each country to ensure that standards are created which build on the foundation established in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIP) and other international agreements to protect intellectual property. In addition, the USPTO has been engaged in talks with our FTA trading partners, the most recent being El Salvador, Nicaragua, Honduras, Guatemala, and the Central America Free Trade Agreement – Dominican Republic (CAFTA-DR), to address the implementation of their FTA obligations. These implementation discussions serve to make certain that the IPR legislation of our new trading partners reflect the obligations found in the FTA. Moreover, the USPTO, in cooperation with the USTR, continues to monitor compliance with existing FTAs such as the United States FTA agreements with Australia, Chile, Bahrain, and Morocco.

WTO/TRIPs: The USPTO actively participated in U.S. delegations to the WTO’s Council for TRIPs of the WTO throughout FY 2006. The TRIPs Council continued to review the intellectual property regimes of numerous countries and advanced its discussions relating to traditional knowledge, genetic resources, technology transfer, and the protection of Geographical Indications (GI). Included were the negotiations for the establishment of a multilateral system of notification and registration of GI wines and spirits, and other issues. Although the ongoing round of multilateral trade negotiations in the WTO was suspended on July 24, 2006, the USPTO will remain actively involved in WTO intellectual property issues as discussions in the TRIPs Council continue.

WIPO Intergovernmental Committee: The USPTO headed the U.S. delegation to the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge, and Folklore. The focus of U.S. efforts is to encourage developing countries to meet stated concerns about protecting genetic resources, traditional knowledge, and folklore either through current intellectual property regimes or through non-intellectual property laws. Progress has been made in the development of model contractual provisions and traditional knowledge databases. In FY 2006, the USPTO worked with the Australian, Canadian, and Japanese Patent Offices to block a proposed negotiation of treaty language on the misappropriation of traditional knowledge (TK) and traditional cultural expressions (TCE), and instead encouraged working toward common objectives and principles with respect to protection of TK and TCEs.

International Science and Technology (S&T) Agreements: Throughout FY 2006, the USPTO continued working closely with the Department of State in the negotiation of cooperative S&T agreements with other countries, including provisions of the intellectual property annex to S&T agreements that ensure equitable allocation of rights to intellectual property created in the course of cooperative research.

Enforcement

Technical Assistance and Capacity-Building: The USPTO participated in FTA negotiations and/or follow-up with Malaysia, Panama, Thailand, Andean Community, Oman, United Arab Emirates, South Korea, and Morocco by providing advice relating to enforcement obligations. Technical assistance was provided in the implementation of the Dominican Republic-Central America FTA and FTAs with Australia, Bahrain, Singapore, and Morocco. The Office of Enforcement assisted the USTR with the negotiation of trade and investment framework agreements with Malaysia, Brunei, Singapore, Turkey, and the Philippines and provided comments, analyses, and questions in connection with WTO TRIPs Council or Trade Policy Reviews. Within the context of WTO accession negotiations, the Office of Enforcement provided policy guidance to the USTR. Additionally, guidance and recommendations were provided to the USTR relating to the Special 301 review, FTA negotiations, and bilateral and multilateral negotiations.

The Office of Enforcement partnered with numerous international and non-governmental organizations in designing and delivering technical assistance programs including the Association of South East Asian Nations (ASEAN), United Nations Economic Commission for Europe (UNECE), International Intellectual Property Institute (IIPI), WIPO, Asia-Pacific Economic Cooperation (APEC), Secretariat for Central American Integration (SIECA), Bureau for International Narcotics and Law Enforcement Affairs (INL), and carried out a range of capacity-building programs under the auspices of the Middle East Partnership Initiative (MEPI). The Office of Enforcement analyzed IPR enforcement components, provisions, and ramifications in international documents, including position papers or proposed policy statements of the World Health Organization, WIPO, Organization for Economic Cooperation and Development, APEC, ASEAN, and the Caribbean Community and Common Market.

The Office of Enforcement increased technical assistance offered in China, with a focus on providing the provinces with capacity-building programs relating to civil, criminal, and border enforcement. Programs in China included: World Customs Organization Regional Forum, Shanghai; Criminal Copyright Enforcement Seminar in Guangzhou; Criminal Copyright Seminar, “How to File a Criminal Case,” Beijing; and the Pearl River Delta Seminar on Intellectual Property Enforcement in southern China. The Office of Enforcement also participated in the following programs: the Ambassador’s Roundtable Meeting and training, Beijing and Shanghai; U.S. Chamber IP Enforcement seminars in Guangzhou and Nanjing; meeting/training with local Chinese officials on IP Enforcement in Yiwu; a program with Temple University and Qinghua University on IP Enforcement for Chinese prosecutors in China, Beijing; American Chamber of Commerce Programs on IP Enforcement in Shanghai and Guangzhou; Trade Fair Enforcement and a Customs Training program, Guangzhou; and an automotive anti-counterfeiting seminar in Shanghai.

The USPTO, in coordination with IIPI, provided technical assistance in Russia for border enforcement officials in St. Petersburg and Vladivostok. These programs utilized a case study method involving discussions of problem solving exercises. Additional programs in Europe and Central Asia included: UNECE Intellectual Property Advisory Group consultations with Romania and Turkey; USPTO Intellectual Property Enforcement Conference in Azerbaijan; USPTO/IIPI Intellectual Property Border Enforcement Workshop for customs officials and judges in Russia; Commercial Law Development Program Workshop on the Implementation and Coordination of IP Border Enforcement for 35 customs officials from Russia and Ukraine; Intellectual Property Enforcement program for government officials in Lithuania; Intellectual Property Enforcement program for government officials from new European Union member states on copyright infringement in the digital environment in Estonia; a joint USPTO-Patent Office of the United Kingdom-Slovenian Intellectual Property Office workshop on IPR border and market enforcement in Slovenia; WIPO-UNECE-World Customs Organization Sub-regional Seminar on Enforcement of Intellectual Property Rights in Almaty, Kazakhstan; and an IPR roundtable in Madrid.

In Asia, the Office of Enforcement conducted intellectual property protection and enforcement programs that included: ASEAN-USPTO Workshop on Optical Media Regulation and Enforcement, Bangkok, Thailand; International Association for the Protection of Intellectual Property-Japan IPR Enforcement Symposia on Anti-Counterfeiting, Tokyo and Fukuoka, Japan; U.S.-Vietnam Trade Council Program in Ho Chi Minh City, Vietnam; U.S. Consulate-United States Vietnam Trade Council-Association of American Publishers Seminar on Copyright Licensing, Ho Chi Minh City, Vietnam; Support for Trade Acceleration Program Vietnam-KI Asia-IIPI Judicial Education Program on IPR Protection and Enforcement, Hanoi, Vietnam; ASEAN-USPTO Workshop on Effective Practices in Combating Trade in Counterfeit Hard Goods, Bangkok, Thailand; ASEAN-USPTO Seminar on IPR Capacity-Building for Small- and Medium-Size Enterprises in Bangkok, Thailand; Combating Internet Piracy, Taipei, Taiwan; Intellectual Property Enforcement Program for 28 judges from Vietnam in Ho Chi Minh City, Vietnam; USPTO/ASEAN and U.S. Department of Justice IP Enforcement Workshop for 56 customs and enforcement officials from ten Asian countries in Bangkok, Thailand; USPTO/IIPI Intellectual Property Enforcement program in Bangladesh; regional IPR Enforcement training for officials from ten Asian countries in Hong Kong; USPTO/ASEAN Workshop on IP Office Administration and Enforcement for 88 government officials from 12 countries in the Asian region in Bangkok, Thailand; intellectual property training program for the Thai IP Court in Bangkok, Thailand; IPR Enforcement program in Phnom Penh, Cambodia; lectures, meetings, and training on IPR issues in China throughout various cities in Japan; regional IPR Training for Law Enforcement Officials in Hong Kong; a training program on IPR Enforcement for 29 government officials in Jakarta, Indonesia; International IP Enforcement Training Event in Delhi, India; four IP Enforcement Training Seminars throughout India; and intellectual property protection and enforcement workshops and public awareness seminars in Ulaan Baatar, Mongolia.

In addition, the Office of Enforcement participated in the following programs: IP Judicial Education Program for 36 judges from four Asian countries in Bangkok, Thailand; meeting and training with government of Vietnam officials regarding amending intellectual property enforcement laws in Vietnam; WIPO Asia Pacific Regional Symposium on IP Enforcement for 120 officials from 22 countries in Kuala Lumpur, Malaysia; ASEAN Regional Workshop on IP Enforcement for prosecutors in Kuala Lumpur, Malaysia; ASEAN Workshop on Optical Media Piracy for 85 regional government officials in the Philippines; U.S. Government of Malaysia Roundtable event on IPR enforcement with government officials and business in Malaysia; and Judicial Education Workshop on IP Law and Civil Procedures with U. S. Agency for International Development for 70 judges in Vietnam.

Through partnership with MEPI, programs were provided that focused on a variety of enforcement issues including: IPR Enforcement Seminar for Kuwaiti officials in Kuwait; Workshop on IP Enforcement for 70 enforcement officials in Kuwait; USPTO/MEPI Border Enforcement seminar for over 20 Moroccan Customs officials in Casablanca, Moroco; and USPTO/MEPI IPR Enforcement program for copyright enforcement officials in Rabat, Morocco. The Office of Enforcement also participated in the following programs: USPTO/MEPI regional judicial workshop for judges on IP Enforcement in Dubai, United Arab Emirates; USPTO/MEPI regional workshop for prosecutors on IP Enforcement in Oman; and MEPI regional customs program for 43 government officials in Bahrain. In addition, a special program and study tour was conducted for Middle Eastern librarians and information legal advisors on copyright protection and library management in the digital environment.

Technical assistance programs were offered in Africa, which included: USPTO-IIPI Botswana program on Making IP Work for Development; and INL, Department of State/USPTO Program on Combating Counterfeit Medicines in Sub-Saharan Africa, Johannesburg.

In the Americas and Caribbean, the Office of Enforcement organized and/or participated in intellectual property protection and enforcement programs that included: a program on the Enforcement of Intellectual Property Rights at the border for customs officials in Lima, Peru; USPTO/SIECA intellectual property training for judges and prosecutors from seven regional countries in Antigua, Guatemala; a conference for police and prosecutors in San Pedro Sula, Honduras; and a conference for Honduran diplomats in Tegucigalpa, Honduras focusing on intellectual property enforcement obligations under CAFTA-DR.

Several enforcement programs were conducted in the Washington, D.C. area for foreign officials including: USPTO Enforcement Academies; the USPTO-WIPO Academy for the Judiciary on the Enforcement of Intellectual Property Rights; a week-long Enforcement seminar followed by a study tour of the U.S. for 21 judges and prosecutors from countries throughout the Middle East and North Africa; and GIPA trainings and seminars on intellectual property enforcement including those for MEPI region and for CAFTA-DR countries plus Belize and Panama. In addition, the Office of Enforcement participated in the Department of State’s International Visitors Programs. Training was also provided to U.S. Government officials whose portfolios include intellectual property issues, including briefing numerous offices of the U.S. Congress including authorizing and appropriation committees on intellectual property matters ranging from patent reform and trademark disputes, trade agreements, international intellectual property enforcement, and a two-day conference for U.S. Government personnel on intellectual property protection in China.

The USPTO also participated in conferences for U.S. businesses and industries that specifically were concerned with intellectual property enforcement. Some of these conferences included: the Motor Equipment Manufacturing Association’s Meeting in Detroit; the International Anti Counterfeiting Coalition (IACC) Anti-Counterfeiting Summit in New York City; the American Intellectual Property Law Association Conference in Philadelphia; the U.S. Chamber of Commerce’s Conference on Trade Roots in Seattle; the American Apparel and Footwear Association Anti-Counterfeiting Conference in New York City; the American Made Alliance’s “The Buyer’s Market of American Craft” trade show in Philadelphia; the National Confectioners Association Annual Meeting in Orlando; the National Association of Manufacturers Meeting in Chicago; an IACC Anti-Counterfeiting Conference in Toronto; and the International Trademark Association Conference in Toronto.

Trilateral

Patent Trilateral Offices: The USPTO, JPO, and EPO continued working together, building on a cooperative effort that began in 1983, to find mechanisms to streamline processing and avoid redundancies among the offices as well as for applicants.

In FY 2006, the USPTO and JPO implemented a one-year trial program known as the “Patent Prosecution Highway” which leverages fast-track patent examination procedures available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. The program is an important step toward reducing duplication of searching through work-sharing as it permits each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality.

The USPTO successfully deployed the TDA system with the EPO and the JPO that permits examiners of the three offices electronic access to the contents of each office’s published application files. This tool is an important component in facilitating work sharing activities.

The USPTO and EPO are working toward implementing a pilot for electronic priority document exchange. The system will allow for direct office-to-office transmission of priority documents that would streamline the process by eliminating the need for customers to request and mail these documents. Full implementation of both the USPTO and EPO exchange and the USPTO and JPO exchange is expected to occur in FY 2007.

At the request of the Industry Trilateral Group, the Trilateral Offices began working towards standardization of the formal aspects of patent applications to allow applicants to file in the same format for all three of the offices. This effort will allow for the implementation of the first step towards a phased approach to patent harmonization.

Trademark Trilateral Offices: The USPTO, together with the JPO and Europe’s OHIM, continued its work on the Trademark Trilateral Identification Manual Project’s list of identifications for goods and services that will be accepted in trademark applications filed in the three offices. This list of accepted identifications streamlines the trademark application process for those filing applications within the United States, Europe, and Japan.

GEOGRAPHICAL INDICATIONS

WTO GI Issues: The USPTO actively works on GI issues in the WTO context including the WTO Agriculture Committee, TRIPs Council, and the WTO Dispute Settlement Body. Negotiations continue on establishing a multilateral system of notification and registration of GIs wines and spirits. The USPTO and other U.S. Government agencies do not support establishing a multilateral system that treats GIs differently from trademarks and undermines the existing protection for trademark rights. Discussions also continue regarding extension of higher-level protection to products other than wine and spirits. The United States opposes amending the TRIPs Agreement to change the level of protection for all GI products, as there has not been any demonstration that existing protection is inadequate. Also, the topic of GIs continues to be included in the modalities on the WTO Agriculture negotiations where generic terms (i.e., parmesan, feta, chablis) would be considered intellectual property of a particular region. In March 2005, the USPTO worked with the USTR to obtain a win at the WTO on a GI case against the European Communities (EC). The WTO Panel affirmed the U.S.’ assertion that the EC regulations discriminate against foreign owners of GIs and that the EC cannot deny trademark owners their rights. The USPTO continues to work on an inter-agency basis to ensure that the domestic and export interests of U.S. trademark holders are not damaged through WTO proposals and national legislation of our trading partners.

CHINA INITIATIVES

Technical Assistance: The USPTO continued technical assistance offered in China, with a focus on providing the provinces with capacity-building programs relating to civil, criminal, and border enforcement. In addition to enforcement programs, the USPTO hosted various seminars on substantive intellectual property issues, including a seminar on the protection of GIs through use of a trademark system in Beijing and Xiamen and a seminar on Traditional Knowledge and Genetic Resources with China’s State Intellectual Property Office (SIPO) in Beijing and Kunming. In early FY 2007, the USPTO in coordination with JPO and EPO, will host a two-day conference on intellectual property protection and enforcement of pharmaceuticals.

Diplomatic Initiatives: In FY 2006, the USPTO strengthened its bilateral relationships with Chinese intellectual property offices. In February 2006, the USPTO signed a Work Plan for Strategic Cooperation with SIPO. The work plan is intended to increase office-to-office cooperation as a means to assist each office with reducing workloads and improving the quality of patent examination for the benefit of both Chinese and U.S. patent applicants. Both offices have already begun implementing the first phase of the work plan and are actively pursuing the next steps.

In FY 2006, the USPTO hosted the head of the China Trademark Office and his delegation to discuss capacity building, improving administration and management of the China Trademark Office and the Trademark Review and Adjudication Board. Also discussed was improving trademark protection in China for foreign and Chinese brand owners. Also in FY 2006, Under Secretary Dudas met with the General Administration for Press and Publication (which includes China’s copyright office) to discuss copyright issues, including how to improve China’s newly-promulgated protections for copyrights on the Internet.

Training: The USPTO hosted visiting Chinese delegations from both Beijing and from the provinces. The visitors have included Chinese officials from Shanghai and Guangzhou, as well as intellectual property officials from Guangdong, Hubei, and Zhejiang provinces. These officials visited the USPTO to learn about our legal system, the administrative procedures followed by the USPTO, how IPRs are protected and enforced in the U.S., and the functions and responsibilities of the USPTO and other U.S. Government intellectual property-related agencies.

During FY 2006, the USPTO also utilized GIPA to greatly expand USPTO-led training and capacity-building programs on IPR protection and enforcement. Through GIPA, the USPTO brings foreign government officials to the United States to learn and strategize about global IPR protection and enforcement issues facing the global economy. In FY 2006, several Chinese intellectual property officials participated in programs offered through GIPA, including the Copyright Program offered in August 2006.

Diplomatic Negotiations: In early FY 2006, Under Secretary Dudas led a U.S. interagency delegation to Beijing, China for the U.S.-China JCCT IPR Working Group meeting. The IPR Working Group, co-chaired on the U.S. side by the USTR and the USPTO, helped negotiate an additional set of commitments from the Chinese government to reduce counterfeiting and piracy in China. Later in FY 2006, Under Secretary Dudas took part in the 17th Plenary Session of the JCCT in Washington, DC. In August 2006, Deputy Under Secretary Pinkos led a U.S. interagency delegation to Beijing, China for another JCCT IPR Working Group meeting. The next meeting of the JCCT IPR Working Group is scheduled to take place in December 2006 in Washington, DC.

In early FY 2007, a delegation from the DOC is expected to participate in the Ambassador’s Roundtable on IPR in China.

Expert Posting: During FY 2006, the USPTO posted an additional intellectual property expert in Beijing with the U.S.&FCS and another expert will be placed in Guangzhou in early FY 2007. This will supplement the work of USPTO’s already existing intellectual property attaché who has been in Beijing since FY 2004. The new team of experts will expand the USPTO’s program of providing in-country assistance to U.S. businesses facing intellectual property problems and work with local officials on efforts to curb piracy.

CONGRESSIONAL ACTIVITY

During FY 2006, Under Secretary Dudas, Deputy Under Secretary Pinkos, and the USPTO’s Offices of Congressional, International Relations, and Enforcement participated in numerous meetings, hearings, and briefings with members of Congress and staff relating to patent, trademark, and copyright issues including patent reform and intellectual property protection and enforcement. In addition, the USPTO was host to several congressional delegations throughout FY 2006 at its USPTO facilities. The Office of Congressional Relations furthered outreach between industry and government by meeting and working with property rights groups, business associations such as the U.S. Chamber of Commerce, and interested industry groups. The Offices of Congressional, International Relations, and Enforcement continued developing its intergovernmental partnerships with federal agencies, including Department of Justice, U.S. Customs and Border Protection, USTR, DOC, International Trade Administration, and Department of State.

Patent Quality: During FY 2006 Under Secretary Dudas testified on “Patent Quality Enhancement in the Information-Based Economy” and on “H.R. 5120, To Amend title 35, United States Code (USC), to conform certain filing provisions within the Patent and Trademark Office” before the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property. The ever-increasing importance of intellectual property in today’s economy is putting greater pressures on the patent examination system. The USPTO has taken important steps to improve patent quality and plans to propose additional changes that will have a positive impact. Under Secretary Dudas and the Office of Congressional Relations will continue working with Congress throughout FY 2007 to help ensure a quality-focused, efficient patent system that benefits all interested parties and the American economy.

Strategy Targeting Organized Piracy!: Deputy Under Secretary Pinkos provided testimony to the Senate Committee on Homeland Security and Governmental Affair’s Subcommittee on Oversight of Government Management, the Federal Workforce, and the District of Columbia on “STOP!: A Progress Report on Protecting and Enforcing Intellectual Property Rights Here and Abroad.” The USPTO has made combating piracy and counterfeiting a top priority and will work with Congress, other federal agencies, and all other interested parties to ensure that the efforts are successful.

Patenting of Tax Strategies: USPTO’s General Counsel testified before the House Ways and Mean’s Subcommittee on Select Revenue Measures on “Issues Relating to the Patenting of Tax Advice.” Consistent with applicable law, the USPTO has issued patents on various business methods including those involving tax-planning strategies. This issue will be a topic of continued interest in FY 2007.

Telework: USPTO’s Senior Advisor for Telework testified before the House Government Reform’s Subcommittee on Federal Workforce and Agency Organization on “Telecommuting: A 21st Century Solution to Traffic Jams and Tourism.” During FY 2006, the Trademark work-at-home program received the “Telework Program with Maximum Impact on Government” award from the Telework Exchange for its extremely successful program with 80 percent of its eligible trademark attorneys working from home. The PHP was introduced in 2006 with 506 patent examiners participating in the program through the end of FY 2006. The USPTO will continue to serve as a role model and leader in promoting telework opportunities and programs throughout FY 2007.

Patent Reform: Patent reform was the subject of several House and Senate subcommittee hearings during FY 2006 with various parties weighing in, including independent inventors, high tech companies, legal academics, pharmaceutical groups, software companies, economists, financial services representatives, and U.S. Government officials.

Various legislative initiatives offered in the House during FY 2005 and FY 2006 contained numerous provisions intended to overhaul the U.S. patent system by improving patent quality, limiting litigation abuses, and harmonizing the U.S. patent laws with those of our key trading partners. Some of the major proposals include a shift from a first-to-invent system to a first-inventor-to-file, the establishment of a post-grant opposition proceeding at the USPTO, the submission of prior art by third parties, a modified definition of prior art, expansion of the inter partes reexamination proceeding, a limitation on treble damages for willful infringement, a codification into law of an apportionment rule for calculating damages, allowance of assignee filing, the publication of all patent applications after 18 months, the elimination of the best mode requirement, a codification of duty of candor, the transfer of venue for certain patent cases, and broadening of the scope of prior user rights.

In August 2006, the Senate introduced its own version of patent reform legislation, which contains many of the provisions included in the various House versions, including first-inventor-to-file, post-grant review, a revised definition for prior art, assignee filing, apportionment of damages, willful infringement, prior user rights, inter partes reexamination, 18-month publication, third party submission of prior art, and venue. However, the Senate bill contains additional provisions, including the award of attorney’s fees to the prevailing party, substantive rulemaking authority for the USPTO, and the right to an interlocutory appeal on claims construction.

Under Secretary Dudas welcomes the discussion of reform initiatives and shares Congress’ commitment to ensure the USPTO’s policies and practices promote invention, disseminate new technologies, and reduce patent pendency. Discussions on patent reform initiatives to ensure the U.S. patent system remains the world’s leader will resume in FY 2007.

Piracy and Counterfeiting: Under Secretary Dudas applauded the President’s March 2006 signing of H.R. 32, the “Stop Counterfeiting in Manufactured Goods Act,” that significantly strengthens U.S. anti-piracy and counterfeiting laws. This legislation provides for the mandatory destruction of counterfeit goods, the forfeiture of equipment used to manufacture or package counterfeit goods, prohibits trafficking in counterfeit labels, patches, tags or medallions that are unattached to goods, criminalizes the possession of counterfeit goods with the intent to sell or traffic in those goods, expands the definition of “traffic,” and criminalizes the unauthorized import or export of goods bearing a counterfeit mark or copies of copyrighted works.

Trademark Dilution: The Trademark Dilution Revision Act of 2006 passed in FY 2006. The bill clarifies the standard for injunctive relief under the Federal Trademark Dilution Act of 1995 by providing the owner of a famous mark entitlement to injunctive relief against another person’s use of a mark that is likely to cause dilution by blurring or tarnishment, regardless of actual confusion, competition, or economic injury. The legislation sets forth the definition of a “famous mark,” as those “widely recognized by the general consuming public of the United States.” The legislation also defines “dilution by blurring,” and “dilution by tarnishment.” Finally, the bill allows the owner of a famous mark to seek additional remedies if the defendant acted willfully.

Pilot Program for Patent Judges: Legislation passed the House and was introduced in the Senate in FY 2006 that would establish a pilot program in certain U.S. district courts where judges would have the choice of opting-in to hear patent cases while maintaining random assignments. The goal of this bill is to enhance the expertise of district court judges who hear patent cases while avoiding forum shopping. These discussions are expected to continue in FY 2007.

The Office of Congressional Relations is a vital component of the USPTO that provides outreach and informational support to members of Congress, their staff, and congressional bodies including the House and Senate Judiciary Committees, the House and Senate Appropriations Committees, the House Government Reform Committee, the House Ways and Means Committee, the Joint Committee on Taxation, the House and Senate Small Business Committees, the Senate Committee on Homeland Security and Governmental Affairs, the House Committee on Education and the Workforce, the U.S. China Interparliamentary Exchange, the U.S.-China Economic and Security Review Commission, the Intellectual Property Caucus, and the Congressional International Anti-Piracy Caucus. During FY 2006, the Office of Congressional Relations reviewed and prepared analyses of numerous legislative proposals regarding intellectual property matters that originated in other Executive agencies or were proposed by members of Congress. In addition, Congressional Relations responded to and consulted with Congressional staff on hundreds of diverse constituent-related intellectual property issues throughout FY 2006.

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