On November 2, 2002, President Bush signed into law (Public Law No: 107-273) the 21st Century Department of Justice Appropriations Authorizations Act, H.R. 2215. As part of this Act, there are several intellectual property provisions enacted which streamline filing international trademarks, allow third parties to participate in inter parties reexaminations, allow previously cited art to be considered during a reexamination, and extend the educational use exemption of copyrighted material to distance-learning.

International Trademarks Will Soon Be Available

By signing this Act into law, President Bush has permitted the U.S. to join the Madrid Protocol, an international trademark agreement established in 1989. Currently, over 50 member countries are signatories to the Madrid Protocol, including Australia, China, the European Union member countries, Japan, and Russia. Now, a trademark filer can submit a single application, in English, to the USPTO with a single fee, and secure a trademark registration that is valid in all countries that are signatories to the Madrid Protocol. This new process will allow U.S. businesses a faster and less expensive process for obtaining trademark protection in foreign countries. It is anticipated that the costs for filing an international trademark application under the newly adopted Madrid Protocol will be less than when filing individual trademark applications in numerous countries. It is also expected that businesses may realize a cost savings since the involvement of foreign affiliates should also decrease. This part of the Act will go into effect either on the date the treaty enters into force in the United States or one year after the date of enactment of the legislation, which ever comes later.

Reexamination First, Litigation Second

Prior to the passage of this Act, if a third party initiated an inter parties reexamination of a patent and did not agree with a decision reached by the USPTO, the third party had no further recourse whereas the patent owner could appeal an unfavorable reexamination to the U.S. Court of Appeals for the Federal District (Federal Circuit). Now, with the enactment of H.R. 2215, the third party also has the same recourse as the patent holder, specifically, appealing to the Federal Circuit. The Act also eliminates the judicially mandated rule that only prior art that had not previously been considered during the examination of the patent application may be considered during a reexamination. If a third party believes that prior art previously cited by the patent holder was not reviewed thoroughly enough and the reference raises a new question of patentability, the previously cited art may be the basis for reexamination. Thus, the USPTO now has greater flexibility in reviewing the validity of a patent since it may consider prior art previously considered as well as new prior art brought to the USPTO's attention. This change should help to minimize the cost of challenging a patent since the cost of a reexamination in the USPTO may be less than litigation, and now a third party has the same rights to appeal to the Federal Circuit as the patent holder. Thus, prior to challenging a patent's validity in court, a third party may first request a re-examination, and if this fails, then pursue its position in court.

Exemption Of Educational Use Of Copyrighted Material Extended To Distance Learning Education

Previously, the copyright laws provided for a fair use exemption when parts of copyrightable material were used in educational settings. In the past few years, schools, colleges, and universities have begun distance-learning programs that often include transmittal of copyrighted material as part of the curriculum. The law has now extended the exemption granted for using copyrighted material for educational use to exempt copyrighted material used for distance learning. Thus, teachers may send digitized material, such as a portion of books, music, and movies over the Internet for educational purposes without first obtaining permission from a copyright owner. However, a clearly defined rule or guide is not available for determining an amount and substantiality of the portion of a copyright work that may be used in relation to the work as a whole that is acceptable for fair use without infringing the work's copyright. Accordingly, the safest course is to always seek permission from the copyright owner before using copyrighted material in an educational setting.

Should you have questions or care to take advantage of these new laws, members of our firm can provide you with services specifically designed to meet your needs. Contact the author of this article, Terry M. Sanks, as provided below, or contact your current Beusse Brownlee Bowdoin & Wolter, P.A. attorney.