Many people don't know about the Anti-Counterfeiting Trade Agreement (ACTA) because it is being negotiated in secret. This secrecy apparently stems from pressure from the US Trade Representative Ron Kirk. Because of this secrecy, Congress, MSM, & the public are not paying attention to ACTA. The people who have being doing the most to focus attention on ACTA are two Canadians: Cory Doctorow of BoingBoing.net and Michael Geist a law professor at the University of Ottawa. They have posted about ACTA many times on their websites, exposing the issue to me & other internet users.
But why should the public be concerned? The secrecy of ACTA negotiations is troubling, & so is the fact it is being negotiated as an Executive Agreement as pointed out by skeptical observer. This means ACTA could be passed before the majority of Americans know about it. Passage of ACTA would have the effect of voiding Safe Harbor laws, according to an article on the Knowledge Ecology International website.
Among the laws ACTA would void are Safe Harbor protections on generic medicines, surgeons using patented procedures during operations, nuclear power designs & inventions, use by the federal government of patents, copywrited works, or patented plants, innocent infringement by printers & publishers, and protection of semi-conductor chips.
CASES IN U.S. PATENT LAW WHERE COURTS CANNOT ISSUE INJUNCTIONS
The Safe Harbour infringement exception for generic medicines: 28 USC 271 (e) (3)
This is also known by different names, including "the Bolar amendment," and the Waxman Hatch Infringement Provisions. It concerns the use of patented inventions for purposes of registering generic medicines with the FDA.
28 USC 271 (e) (3)
In any action for patent infringement brought under this section, no injunctive or other relief may be granted which would prohibit the making, using, offering to sell, or selling within the United States or importing into the United States of a patented invention under paragraph (1).
Patent infringement involving medical practitioners: 35 USC 287 (c)(1)
A short but informative history of this exception is provided by Robert Gunderman and John Hammond, The Limited Monopoly: Under the Knife – Patenting Surgical Procedures, in the February 2009 issue of The Rochester Engineer. In short, the American Medical Association and many of its member were alarmed by efforts to sue doctors for infringements of patents when preforming surgical procedures. A number of legislative approaches were considered to address the issue. In the end, Congress allowed the patents to be issued, but eliminated any remedies against a licensed medical practitioner who infringed the patents while providing care.
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
(c) (1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.
(2) For the purposes of this subsection:
(A) the term "medical activity" means the performance of a medical or surgical procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.
(B) the term "medical practitioner" means any natural person who is licensed by a State to provide the medical activity described in subsection (c)(1) or who is acting under the direction of such person in
the performance of the medical activity.
Nuclear power 48 USC 2184
According to 48 USC 2184, in certain cases involving patents on nuclear energy, "no court shall have jurisdiction or power to stay, restrain, or otherwise enjoin," the use of patented inventions.
TITLE 42 > CHAPTER 23 > Division A > SUBCHAPTER XII § 2184. Injunctions; measure of damages
No court shall have jurisdiction or power to stay, restrain, or otherwise enjoin the use of any invention or discovery by a patent licensee, to the extent that such use is licensed by section 2183 (b) or 2183 (e) of this title. If, in any action against such patent licensee, the court shall determine that the defendant is exercising such license, the measure of damages shall be the royalty fee determined pursuant to section 2187 (c) of this title, together with such costs, interest, and reasonable attorney’s fees as may be fixed by the court. If no royalty fee has been determined, the court shall stay the proceeding until the royalty fee is determined pursuant to section 2187 (c) of this title. If any such patent licensee shall fail to pay such royalty fee, the patentee may bring an action in any court of competent jurisdiction for such royalty fee, together with such costs, interest, and reasonable attorney’s fees as may be fixed by the court.
Use of patents by or for the government. 28 USC 1498 (a)
In cases involving the use of a patented invention "by or for" the U.S. federal government, no court can issue an injunction. The sole remedy for the patent owner is a claim for compensation. This includes:
Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. . . .
For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States.
This provision in U.S. law is widely used by the U.S. Department of Defense, but also by NASA, the Department of Energy, the National Institutes of Health (NIH), and other federal agencies.
CASES IN U.S. COPYRIGHT LAW WHERE COURTS CANNOT ISSUE INJUNCTIONS
Use of copyrighted works by or for the government. 28 USC 1498 (b)
(b) Hereafter, whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement . . .
TRADEMARK CASES
Innocent infringement by printers and publishers: 15 USC 1114
Remedies; infringement; innocent infringement by printers and publishers. 15 USC Chapter 22, Subchapter III, Section 1114.
(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125 (a) or (d) of this title shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125 (a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing.
(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510 (12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125 (a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125 (a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.
PLANT BREEDER RIGHTS
Use of plant variety by or for the government. 28 USC 1498 (d)
Hereafter, whenever a plant variety protected by a certificate of plant variety protection under the laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government, and with the authorization and consent of the Government, the exclusive remedy of the owner of such certificate shall be by action against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement . . .
PROTECTION OF TOPOGRAPHY OF SEMICONDUCTOR CHIPS
Protection of Semiconductor Chip Products 17 USC Chapter 9
Article 37 of the TRIPS (Acts Not Requiring the Authorization of the Right Holder) provides a mandatory exception from injunctions in cases involving the protection of semiconductor chip products, "where the person performing or ordering such acts did not know and had no reasonable ground to know, when acquiring the integrated circuit or article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced layout-design." The relevant provision in US law follows:
Limitation on exclusive rights: innocent infringement § 907.
(a) Notwithstanding any other provision of this chapter, an innocent purchaser of an infringing semiconductor chip product —
(1) shall incur no liability under this chapter with respect to the importation or distribution of units of the infringing semiconductor chip product that occurs before the innocent purchaser has notice of protection with respect to the mask work embodied in the semiconductor chip product; and
(2) shall be liable only for a reasonable royalty on each unit of the infringing semiconductor chip product that the innocent purchaser imports or distributes after having notice of protection with respect to the mask work embodied in the semiconductor chip product.
(b) The amount of the royalty referred to in subsection (a)(2) shall be determined by the court in a civil action for infringement unless the parties resolve the issue by voluntary negotiation, mediation, or binding arbitration.
(c) The immunity of an innocent purchaser from liability referred to in subsection (a)(1) and the limitation of remedies with respect to an innocent purchaser referred to in subsection (a)(2) shall extend to any person who directly or indirectly purchases an infringing semiconductor chip product from an innocent purchaser.
(d) The provisions of subsections (a), (b), and (c) apply only with respect to those units of an infringing semiconductor chip product that an innocent purchaser purchased before having notice of protection with respect to the mask work embodied in the semiconductor chip product.
ACTA would also effect case law established by the Supreme Court decision eBay v MercExchange.