[Ip-health] Sanders, Brown Request Patent Office Assessment Of ACTA

James Love james.love at keionline.org
Fri Oct 22 12:43:55 PDT 2010

Inside U.S. Trade - 10/22/2010 
Sanders, Brown Request Patent Office Assessment Of ACTA 
Posted: October 21, 2010 

Members of the U.S. Congress continue to question if the nearly
finalized Anticounterfeiting Trade Agreement (ACTA) is in line with U.S.
law. The latest inquiry comes from Sens. Bernard Sanders (I-VT) and
Sherrod Brown (D-OH), who sent a letter to the U.S. Patent and Trademark
Office (USPTO) on Oct. 19.

The letter asks David Kappos, the director of the USPTO, to examine the
text of the ACTA "in light of laws within the jurisdiction of your
office." It asks that specific consideration be given to assessing if
ACTA provisions on injunctions, damages, other remedies and border
measures are inconsistent with U.S. laws on patent infringement.

"It is our understanding that ACTA has been negotiated as an 'executive
agreement,' not requiring congressional approval, on the premise that it
would not require changes to U.S. laws," the letter states.

The letter comes on the heels of a similar request made by Sen. Ron
Wyden (D-OR) who on Oct. 8, asked the Congressional Research Service to
assess on whether the ACTA commitments "diverge" from U.S. laws (Inside
U.S. Trade, Oct. 21).

Sanders and Brown get more specific in their request, asking the USPTO
to look at the implications of including patents in the scope of the
civil enforcement section -- which the EU had pressured the U.S. to
agree to but is still unresolved in the current ACTA text -- and the
implication for specific U.S. laws.

USPTO is to examine if the ACTA contradicts state sovereign immunity,
which exempts state governments from any damages as a result of any
intellectual property infringement. This was established by a Supreme
Court ruling, the letter notes.

Other specific laws the senators ask USPTO to examine include
limitations on damages and injunctions for patent infringement in the
context of the development of generic biological drugs. A generic
company can directly request patent information from a patent holder
before it develops a biological drug. Even if a patent holder alleges
there has been an infringement as a result of disclosing its patents but
has not enforced them in a timely manner, they are limited to receiving
a reasonable royalty from the infringement. If the patent holder alleges
infringement but has neither disclosed its patent nor enforced it, it
cannot pursue any remedy for the infringement. 

The letter also asks that USPTO examine if the ACTA contradicts a law
that allows the limitation of damages against a health care worker that
uses a patented surgical method during a medical procedure.

Additionally, Sanders and Brown request the USPTO to determine if the
ACTA contradicts a U.S. law that limits remedies in cases of innocent
infringement by printers and publishers solely responsible for the act
of printing and not an case of infringement in the content of what is

Finally, the senators want USPTO to look at the possibility of the ACTA
contradicting limitations on liability for Internet service providers
found in U.S. copyright law.

James Love, Director, Knowledge Ecology International
http://www.keionline.org | http://www.twitter.com/jamie_love
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