CASRIP Newsletter - Fall 1998, Volume 5, Issue 3
Report on Intellectual Property Related Bills in the 105th Congress
Yoshitake Kihara (Translated by Toshiko Takenaka)
Director, Institute of Intellectual Property, Washington Office
The 105th Congress, which began in January, 1997, adjourned on October 21, 1998. In sum, no progress was made with respect to bills related to the Patent Statute. In contrast, significant progress has been made with bills revising the Copyright Statute.
Patent Law Bill
Congress discarded the Omnibus Patent Reform Bill (HR 400, S507). The bill was introduced to fulfill commitments made by the U.S. PTO Commission to the JPO commissioner and included provisions to introduce 18-month publication and change reexamination proceedings. The bill also covered other areas such as the establishment of the USPTO as a government corporation, protection of domestic prior commercial users, and increases in the protection of the inventor. No progress has made since HR 400 passed the House of Representatives last April and then the Senate Judiciary Committee last May. In examining the bill in the House of Representatives, Rep. Rohrbacher led a group of Representatives opposing the bill in response to lobbying activities by groups of small- and middle-sized companies and individual inventors, including the Lemelson Foundation. In the Senate, Senator Bond joined with other senators to hinder the examination of the bill.
In examining the bill in the House of Representatives, Rep. Rohrbacher led a group of Representatives opposing the bill in response to lobbying activities by groups of small- and middle-sized companies and individual inventors, including the Lemelson Foundation. In the Senate, Senator Bond joined with other senators to hinder the examination of the bill.
In order to enact the provisions in the bill, a new bill must be reintroduced into the 106th Congress that will begin in January, 1999. The Congress must begin the examination of the new bill from scratch. This situation has resulted in a
significant delay in the adoption of 18-month publication that has been adopted by most countries.
Copyright Law Related Bill
Through discussions at the House-Senate Conference, Congress passed the Copyright Omnibus Bill (HR 2281: Digital Millennium Copyright Act) and enacted it as PL 105-304. The content of the new Act was as follows:
Title I: WIPO Treaties Implementation
Including an aspect relating the prohibition of the knowing removal, deactivation, or circumvention of technological measures used by a copyright owner to preclude or limit reproduction of a work for purposes of infringement.
Title II: Online Copyright Infringement Liability Limitation
Limitations on liability for copyright infringement by online service providers(OSPs).
Title III: Computer Maintenance or Repair Copyright Exemption
Permission to make a copy of program to maintain or repair computers.
Title IV: Miscellaneous Provisions
Permission of ephemeral recording
Limitations for exclusive right: distant education
Expansion of fair use at Libraries and Archives
Scope of exclusive rights in sound recordings; ephemeral recordings; etc.
Title V: Protection of Certain Original Designs
Copyright protection for designs of boat hulls
Please note the Senate refused the provisions for the protection of databases and removed them from the enacted Act. Databases are not protected under the current copyright law. The proposed provisions protected databases as misappropriation of information based on an unfair competition theory, instead of through copyright. They included a provision to limit the period one can bring an action to court to 15 years from the investment of resources for developing the violated part of the database.
Other IP-related Acts enacted by the 105th Congress are as follows:
HR 672: A bill to make technical amendments to certain provisions of Copyright Law (PL105-147)
HR2265: No Electronic Theft Act (PL-147)
Prevention of electronic theft by increasing criminal sanction.
HR1197: Plant Patent Amendment Act of 1998 (PL105-289)
Increase protection of plant patent owners by introducing protection against the unauthorized sale of plant parts taken from plants illegally reproduced, and for other purposes.
S505: Copyright Term Extension of 1998 (PL105-298)
Extension of Copyright Term from 50 years to 70 years from the author's death. Including Fairness in Music License Act of 1998 that exempts restaurants etc. from license-related provisions.
HR3332: Next Generation Internet Research Act of 1998 (PL 105-305)
Study by Department of Commerce with respect to impact on trademark protection of adding protection of top level domain names.
S2193: Trademark Law Treaty Implementation Act (PL 105-305)
Changes of current trademark law to accommodate provisions in the WIPO Trademark Law Treaty. Includes technical amendments to certain provisions of Lanham Act including those relating to cancellation of trademark registration.
HR3723: United States Patent and Trademark Office Reauthorization Act, Fiscal Year 1999 (PL105-358).