Formatting Resolutions for Presentation to the Board of Directors

Transcription

1 Formatting Resolutions for Presentation to the Board of Directors The following is the accepted format for proposing resolutions at Board of Directors Meetings. The following notes will walk you through the details of what warrants a resolution and how to structure it for presentation to the Board of Directors. A sample resolution follows to show you how to put these directions into action. 1. Proposed Resolutions - The purpose of proposed committee resolutions is to set forth as broadly as the committee deems warranted a position the Association may adopt on subjects relating to patents, trademarks, copyrights, unfair competition and related subjects. These subjects will generally involve legislation, treaties, administrative rules and regulations, case law and judicial interpretations of legislation and rules. Resolutions should, whenever feasible, embody a statement of principle which reflects as broadly as possible the consensus of the committee and which is reasonably related to any specific purpose or statement of position which the resolution may include. When appropriate, resolutions should be directed to specific bills or rules with which the stated principle is involved or should make specific recommendations as to action to be taken. However, the resolution should be understandable in and of itself without reference to the rules or bills. 2. Body of Resolution - The body of each proposed resolution should begin with "RESOLVED, that the American Intellectual Property Law Association.... Use double spacing throughout body of proposed resolution. Each line including the first should begin at the margin. Each resolution shall be addressed to a single principle. If several principles are involved in the committee consideration, several resolutions should be offered. 3. If a principle is involved and it is also proposed to endorse or oppose a specific bill or proposition, a multi-part resolution should be offered. The specific bill should be identified by number, introducer and Congress, and a brief statement of subject matter added. Also, the phrase "or similar legislation" should be inserted after identification of the bill. For example, a resolution might properly read as follows: RESOLVED, that the American Intellectual Property Law Association favors, in principle,...[state a principle, e.g., the United States Patent and Trademark Office being permitted to receive and use all fee revenues paid to the Office ]...; and Specifically, the AIPLA approves H.R. 740, (Coble), 107th Cong., 1st Sess. (2001), or similar legislation, relating to...

2 4. Resolutions should not be prefaced by a whereas or introductory clause. Resolutions should be cast in the present tense. Resolutions shall be understandable in and of themselves without reference to cited bills or rules. 5. Specifically Clauses - Note that "Specifically" begins on a new line. 6. Past Action - All past actions taken by the AIPLA should be stated. Start with the most recent. Resolutions need not be quoted verbatim but any abstract should be complete i.e. do not incorporate by reference. Identify the past action by citing the information regarding its adoption (e.g., Board of Directors Meeting May 17, 1986) as stated in the Past Action Manual. Mere consideration or recommendation by a committee is not properly included under "Past Action" but may appear under "Discussion". Positions of other organizations and proposals by their committees, that have not also been approved by AIPLA, are not properly included in "Past Action. 7. Discussion - Pertinent comments, explanations, discussions, etc., should follow the Past Action section. This portion of the document is critically important. It should explain in detail why the principle stated in the resolution is correct. It is the basis for the text of comments to the Congress, the USPTO, the Copyright Office, WIPO, or other intended recipient of the position set forth in the resolution. It is, for example, the response to the question What s so bad about special treatment for business method inventions? The heading "Discussion" is double spaced below "Past Action" and should be flush at the left margin. At the end of the discussion, there may be a conclusion. If so, it should begin following the heading "Conclusion." at the left margin. 8. Committee Vote A tabular indication of the votes of the voting members of the full committee, including the Chair, is required. A majority of the active voting committee members constitutes a quorum. To be validly reported as a committee action, approval of a majority of a quorum is required. When reporting voting results, the report should list the number of active voting members of the committee voting for or against, including those active voting members abstaining and those not heard from. Committee Chairs have the discretion to reclassify an active voting committee member to an information only committee member following two successive failures of an active voting member to respond to a request for a vote. However, as long as a majority of the voting committee members respond, and a majority of those responding are in favor of a proposal, the proposal is a valid committee recommendation. A committee Chair should not send out final reports and resolutions and tell voting members that no response by a certain date will be interpreted as an affirmative vote.

3 SAMPLE RESOLUTION NOTE: Numbers on far left refer to specific notes above. PATENT LAW COMMITTEE CHAIR: JOHN WIEDEMANN SUBJECT: DISCRIMINATORY TREATMENT OF FIELDS OF INVENTION See # RESOLVED, that the American Intellectual Property Law Association is opposed, in principle, to any legislative, judicial, or administrative action that would result in discriminatory treatment of patent applications based on the field of invention, including different requirements for patentability, different criteria for publication, different opportunities for third parties to challenge patentability, or different requirements to disclose the extent to which the applicant searched for prior art for business method-related inventions; and See # 5. Specifically, opposes H.R. 5364, (Berman), 106 th Cong., 2d Sess. (2000), or similar legislation, that would discriminate against patents on business method inventions. See # 6. Past Action. RESOLVED, that the AIPLA favors, in principle, relying on the statutory provisions and legislative history of 35 U.S.C. 101 in determining whether computer-related technology constitutes subject matter that is potentially eligible for patent protection; and Specifically, opposes the use of special rules or tests not grounded in the statute with respect to questions of subject-matter patentability. (Board of Directors Meeting December 7, 2000) RESOLVED, that the AIPLA favors, in principle, that subject matter which is potentially eligible for patent protection includes any application of an abstract idea, law of nature, or natural phenomena to achieve a useful, concrete and tangible result including, but not limited to, the use of computer implemented inventions encompassing business methods, user interfaces, algorithms, performance enhancements, data structures, usability enhancements, or other inventions which have a beneficial result or other practical application. (Board of Directors Meeting January 30, 1999) See # 7. Discussion. H.R introduces changes that are discriminatory to business method inventions as defined therein. Based on the statements on October 3, 2000 by Representatives Berman and Boucher, the proposed legislation is intended to address the issuance of patents for business method inventions that are invalid in light of the prior art, and improve the examination of patent applications for such inventions. The Committee

4 believes that the proposed legislation is a response to an exaggerated and misperceived problem. Title 35 of the United States Code and Title 37 of the Code of Federal Regulations currently provide appropriate mechanisms for preventing the issuance of patents for inventions that are obvious in light of the prior art. No legislative amendments to the existing patent laws are necessary to further the stated goals of the proposed legislation. At worst, the adherence to the existing laws should be examined. There is nothing about business methods inventions, either as defined in the proposed legislation or otherwise, that warrants treatment that differs from that afforded to other types of inventions. It is likely that public awareness of these types of inventions is higher due to media coverage and various patentees increased use of press releases to publicize such patents. By contrast, the general public s knowledge of patents for other types of inventions is much more limited, due to the lack of similar widespread coverage. Accordingly, to the extent that there are similar issues with patents for other types of inventions, they would tend to be unnoticed by the general public. The media coverage of patents for business method inventions has been high, relative to coverage of other types of patents, due in part to the relative ease with which laypersons may understand, or believe they understand, the scope of protection of a patent for a business method invention. Some business method inventions may be summarized, or may be believed to be summarized, in terms that are comprehendible to the average person. Although these summaries may not accurately convey the true scope of the claims, describing such inventions typically does not require imposing terminology or subject matter, providing a sense that the subject matter is somewhat familiar and understandable. By contrast, it would typically be difficult to explain to a layperson many types of inventions in other fields. It is very likely that much of the rhetoric regarding certain patents for business method inventions is based on unsubstantiated allegations (e.g., a layperson s interpretation of what the claims cover and a layperson s belief as to the scope of the relevant prior art) without any evidence that the problem actually exists (e.g., actual determination of the scope of the particular claims in light of the analogous art and prosecution of the patent). There has been no study of the quality of patents for business methods relative to patents for other types of inventions. Further, there has been no estimate of the number of invalid patents for business inventions other than often-repeated references to a handful of well-known patents. If only a few patents were invalid in light of art, that would not necessarily imply a problem requiring legislative action, much less action that applies to an entire type of invention and several thousand patents and patent applications. Another concern that has been expressed is that business method patents stifle competition by conferring ownership on an entire business concept regardless of the implementation. While it is true that a claim for a method may typically be infringed without regard to the device

5 used to perform the method, a method claim does not necessarily confer complete competitive domination using the method. A method claim does not necessarily cover all possible implementations of a particular method. It is well settled that a claim may only cover what the patentee has invented, described, and enabled. If a claim is directed to subject matter beyond what the patentee has invented, described, or enabled, such subject matter is not covered despite what the layperson s reading of the claim might be. Further, it is possible that competitors will develop nonobvious variations of such a business method and obtain patent protection for those variations. As is common in many other fields, this situation would likely lead the parties to cross-license their patents and enable both to practice the improved method. Also, any singling out of types of inventions will ultimately be over-inclusive or under-inclusive. This will be especially true of new fields of inventions which, by definition, are not fully understood or appreciated. For this reason, it will be extremely difficult for the USPTO to consistently identify business method inventions from other types of inventions. There would almost certainly be an overwhelming amount of litigation regarding whether an invention is a business method invention as defined by the proposed legislation. Finally, discriminatory treatment based on the type of invention is at odds with commitments to the World Trade Organization. The Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPs) specifies in Article 27 (1) that patents shall be available and patent rights enjoyable without discrimination as to the field of technology. The proposed legislation would limit both the availability of patents and the scope of patent rights for inventions in the field of business. The proposed legislation would also limit the availability of patents and the scope of patent rights for other inventions included in the generally broad definition of business method invention included in H.R Updated 10/6/04