Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Autumn 1999, Volume 6, Issue 2

Legislative Updates

By Liz Peterson

New Statutory Law:

Early this Fall, Congress passed two important intellectual property laws, the "Patent Fee Integrity and Innovation Act of 1999," and the "Trademark Amendment Act of 1999." Sen. Orrin Hatch (R-UT) sponsored both bills, and the latter bill was co-sponsored by Sen. Patrick Leahy (D-VT). Both bills were signed into law within three months of their introduction on the Floor of the Senate.

The Patent Fee Integrity and Innovation Act, Public Law 106-42, concerns funding for the Patent and Trademark Office. A budget for the fiscal year 2000 of $116,000,000 is authorized from the fees collected in the years 1999 to 2000. The Commissioner of USPTO is not authorized to collect fees to cover indirect personnel costs other than those costs charged pursuant to Title of the US Code and the Trademark Act of 1946.

The Trademark Amendment Act, Public Law 106-43, concerns the dilution of famous marks. The law applies to any application for registration of a trademark filed on or after January 16, 1996. Section Number Two of the act makes dilution a ground for opposition and cancellation under the Trademark Act of 1946, 15 USC 1052 for a mark, which would cause dilution under section 13 (15 USC 1063). The amendment also provides cancellation of a mark, which when used would cause dilution , pursuant to a proceeding brought under either Section 14 (15 USC 1064), regarding petitions to cancel registrations or Section 24, (15 USC 1092) concerning cancellation of a trademark.

Section Number Three of the new law offers remedies in cases of dilution of famous marks. Under the Trademark Act, the amendment provides for damage or imposition of injunction for violation under Section 43(a), or a willful violation under 43(c), (15 USC 1125 (c) or (a).

Section Number Four of the Public Law 106-43 deals with the liability of governments, both at the Federal level and at the state level, for trademark infringement and dilution. Section (b)(2) further the U.S. government shall not be immune from suit in Federal or State court for violations of Trademark Act. Section (b)(3) provides that states also wave the right of sovereign immunity.

Section Number Five of the new law deals with civil action for trade dress infringement. It establishes the burden of providing infringement for unregistered marks to the party asserting protection.

Patent Reform Act Signed into Law:

Title IV - Inventor Protection was signed into law by the President on November 29th as part of the omnibus spending bill H.R. 3194. The passage of this bill marks a major reform in the U.S. patent system by adopting an early publication system and by moving the U.S. reexamination system closer to the opposition system at the European Patent Office and the Japanese Patent Office. This reform will fulfill commitments made by former Commissioner Lehman through an agreement between the U.S. Patent and Trademark Office and the Japanese Patent Office. However, the JPO may find the reform unsatisfactory because U.S. applicants who do not apply for any foreign patents can choose to keep their application confidential. In addition, the newly adopted inter partes reexamination is optional and the reasons for requesting reexamination remain the same. A summary of Title IV is available at

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