Sovereign Immunity Study

Cited as85 FR 70589
CourtCommerce Department, Patent And Trademark Office
Publication Date05 Nov 2020
Record Number2020-24621
70589
Federal Register / Vol. 85, No. 215 / Thursday, November 5, 2020 / Notices
1
527 U.S. 627 (1999).
2
527 U.S. 666 (1999).
3
140 S. Ct. 994 (2020).
4
U.S. Const. amend. XI.
5
427 U.S. 445 (1976).
6
521 U.S. 507 (1997).
Committee serves as advisors to the
Council’s Citizen Science Program.
Committee members include
representatives from the Council’s
fishery Advisory Panels (AP), Habitat &
Ecosystem AP, and Information &
Education AP. Their responsibilities
include identifying citizen science
research and data needs across all the
Council’s fishery management plans;
assisting with development of volunteer
engagement strategies for recruiting,
training, retaining, and communicating
with volunteers; and serving as outreach
ambassadors for the Program.
Agenda Items Include
1. Update on the Citizen Science
Program
2. Discuss and provide feedback on
volunteer engagement and outreach
strategies
3. Discuss the development of a
volunteer recognition program
4. Other Business
Special Accommodations
The meeting is physically accessible
to people with disabilities. Requests for
auxiliary aids should be directed to the
Council office (see
ADDRESSES
) 5 days
prior to the meeting.
Note: The times and sequence specified in
this agenda are subject to change.
Authority: 16 U.S.C. 1801 et seq.
Dated: November 2, 2020.
Rey Israel Marquez,
Acting Deputy Director, Office of Sustainable
Fisheries, National Marine Fisheries Service.
[FR Doc. 2020–24573 Filed 11–4–20; 8:45 am]
BILLING CODE 3510–22–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO–T–2020–0043]
Sovereign Immunity Study
AGENCY
: United States Patent and
Trademark Office, Commerce.
ACTION
: Request for Information.
SUMMARY
: At the request of Senators
Thom Tillis and Patrick Leahy, the
United States Patent and Trademark
Office (USPTO) is undertaking a study
of the extent to which patent or
trademark rights holders are
experiencing infringement by state
entities without adequate remedies
under state law, and the extent to which
such infringements appear to be based
on intentional or reckless conduct. The
USPTO seeks public input on these
matters to assist in preparing the study.
DATES
: Comments must be received by
5 p.m. ET on December 21, 2020.
ADDRESSES
: You may submit comments
and responses to the questions below by
one of the following methods:
(a) Electronic Submissions: Submit all
electronic comments via the Federal e-
Rulemaking Portal at http://
www.regulations.gov (at the homepage,
enter PTO–T–2020–0043 in the
‘‘Search’’ box, click the ‘‘Comment
Now!’’ icon, complete the required
fields, and enter or attach your
comments). The materials in the docket
will not be edited to remove identifying
or contact information, and the USPTO
cautions against including any
information in an electronic submission
that the submitter does not want
publicly disclosed. Attachments to
electronic comments will be accepted in
Microsoft Word or Excel, or Adobe PDF
formats only. Comments containing
references to studies, research, and
other empirical data that are not widely
published should include copies of the
referenced materials. Please do not
submit additional materials. If you
submit a comment with business
confidential information that you do not
wish to have made public, please do so
as a written/paper submission in the
manner detailed below.
(b) Written/Paper Submissions: Send
all written/paper submissions to: United
States Patent and Trademark Office,
Mail Stop OPIA, P.O. Box 1450,
Alexandria, Virginia 22314. Submission
packaging should clearly indicate that
materials are responsive to [Docket
Number: PTO–T–2020–0043], Office of
Policy and International Affairs,
Comment Request; State Sovereign
Immunity.
Submissions of Business Confidential
Information: Any submissions
containing business confidential
information must be delivered in a
sealed envelope marked ‘‘confidential
treatment requested’’ to the address
listed above. Submitters should provide
an index listing the document(s) or
information that they would like the
Department of Commerce to withhold.
The index should include information
such as numbers used to identify the
relevant document(s) or information,
document title and description, and
relevant page numbers and/or section
numbers within a document. Submitters
should provide a statement explaining
their grounds for objecting to the
disclosure of the information to the
public as well. The USPTO also requests
that submitters of business confidential
information include a non-confidential
version (either redacted or summarized)
that will be available for public viewing
and posted on https://
www.regulations.gov. In the event that
the submitter cannot provide a non-
confidential version of its submission,
the USPTO requests that the submitter
post a notice in the docket stating that
it has provided the USPTO with
business confidential information.
Should a submitter either fail to docket
a non-confidential version of its
submission or to post a notice that
business confidential information has
been provided, the USPTO will note the
receipt of the submission on the docket
with the submitter’s organization or
name (to the degree permitted by law)
and the date of submission.
FOR FURTHER INFORMATION CONTACT
:
Laura Hammel, USPTO, Office of Policy
and International Affairs, at
Laura.Hammel@uspto.gov or 571–272–
9300. Please direct media inquiries to
the Office of the Chief Communications
Officer, USPTO, at 571–272–8400.
SUPPLEMENTARY INFORMATION
: Several
Supreme Court decisions have
invalidated statutes that barred states’
assertions of sovereign immunity in
intellectual property (IP) disputes. In
Florida Prepaid Postsecondary
Education Expense Board v. College
Savings Bank
1
(Florida Prepaid), the
Court found that the Patent and Plant
Variety Protection Remedy Clarification
Act, which had abrogated states’
immunity from patent infringement
suits, was unconstitutional. In College
Savings Bank v. Florida Prepaid
Postsecondary Education Expense
Board (College Savings),
2
the Court
found that the Trademark Remedy
Clarification Act, which provided that
states could be sued for false and
misleading advertising under section
43(a) of the Trademark Act, was
unconstitutional. This year, in Allen v.
Cooper,
3
the Court ruled that the
Copyright Remedy Clarification Act of
1990, which abrogated states’ immunity
for liability for copyright infringement,
was also unconstitutional.
In both Florida Prepaid and Allen, the
Supreme Court made clear that Congress
does have authority, in certain
circumstances, to strip states of the
immunity they enjoy under the 11th
Amendment.
4
Both decisions pointed to
a line of cases, including Fitzpatrick v.
Bitzer
5
and City of Boerne v. Flores,
6
holding that section 5 of the 14th
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70590
Federal Register / Vol. 85, No. 215 / Thursday, November 5, 2020 / Notices
7
U.S. Const. amend. XIV(5).
8
U.S. Const. amend. XIV(1).
9
U.S. Const. amend. XIV.
10
Allen, 140 S. Ct. at 1004.
11
Florida Prepaid, 527 U.S. at 643.
12
Florida Prepaid, 527 U.S. at 645; Allen, 140 S.
Ct. at 1006.
13
Florida Prepaid, 527 U.S. at 643–44; Allen, 140
S. Ct. at 1006–7.
14
Allen, 140 S. Ct. at 1007.
15
Id.
16
Senators Tillis and Leahy also requested the
United States Copyright Office (USCO) to conduct
a parallel study on copyright issues. See a Notice
of Inquiry that the USCO published in the Federal
Register (85 FR 34252, June 3, 2020) in connection
with that request.
17
As used in this Notice, ‘‘state entities’’ includes
entities such as public state universities and state-
owned entities such as transportation entities, and
economic development entities.
Amendment
7
empowers Congress to
abrogate state sovereign immunity in
order to prevent conduct prohibited by
section 1 of that Amendment,
8
such as
the deprivation of property without due
process of law. In principle, Congress
may abrogate state sovereign immunity
to prevent the unconstitutional
deprivation of an IP right.
Nevertheless, in both Allen and
Florida Prepaid, the Court emphasized
that some, but not all such deprivations
are unconstitutional. A state’s
deprivation of property will violate the
14th Amendment
9
only if (1) it is
‘‘intentional, or at least reckless’’
10
and
(2) the state does not provide an
adequate remedy to redress the
deprivation. Due process is not lacking
where there is an adequate remedy in
place.
11
In both cases, the Court found that
Congress’s abrogation of state sovereign
immunity was not supported either by
a record that showed a pattern of
infringing conduct by the states
12
or by
consideration of whether there were
adequate state remedies available for
any infringement that does
occur.
13
Allen stressed that Congress was
not precluded from passing a valid law
in the future that abrogated state
sovereign immunity for copyright
infringement.
14
It suggested that such a
statute should ‘‘link the scope of its
abrogation to the redress or prevention
of constitutional injuries,’’
15
and that
this linkage should be supported by a
legislative record.
In a letter to the Director of the
USPTO dated April 28, 2020, Senators
Thom Tillis and Patrick Leahy asked
that the USPTO study the extent to
which patent and trademark owners
experience infringements by state
entities without adequate state law
remedies. They further asked that the
analysis include a study of the extent to
which such infringements may be
intentional or reckless. Finally, they
requested that the USPTO provide a
public report summarizing the findings
of the study so that Congress can
evaluate whether legislative action
should be taken.
16
Request for Information: To aid in the
study that Senators Tillis and Leahy
requested, the USPTO invites written
comments on the questions below. In
responding to the questions,
commenters are encouraged to explain
the reasons for their responses when
appropriate. In addition, the USPTO
asks that commenters explain their
interest in the study and the basis for
their knowledge (e.g., the commenter is
a patent and/or a trademark rights
holder, or a state attorney general or
other state official, or represents a state
entity, such as a state university).
Commenters need not respond to every
question and may provide relevant
information even if not responsive to a
particular question.
1. Extent of asserted patent and/or
trademark infringements by states or
state entities:
17
a. How frequently do rights holders
assert that a state or state entity has
infringed their patents or trademarks,
either via lawsuits or through some
other means?
b. Has there been an increase in the
number of assertions of patent and/or
trademark infringements by states or
state entities since the Supreme Court’s
decision in Florida Prepaid, which had
invalidated a statutory abrogation of
state sovereign immunity from patent
infringement, and what empirical
evidence is available to determine
whether there has been a change over
time? What metrics can be used to
determine the frequency of state patent
and/or trademark infringement?
c. If you are an official of a state or
a state entity, does your state track
claims of patent and/or trademark
infringement, and if so, how many such
claims were asserted before and since
1999, (i) via lawsuits and (ii) otherwise?
d. Do you anticipate that the Allen
decision will result in a rise in the
number of instances in which states and
state entities will engage in, or be
accused of engaging in, patent and/or
trademark infringement?
e. Are you aware of state laws,
regulations, and/or policies that either
minimize or increase the likelihood that
the state or a state entity will engage in
patent or trademark infringement? If
yes, can you provide copies of, or
citations to, those state laws,
regulations, and/or policies?
2. Information about particular
instances of infringement:
a. Please identify all instances you are
aware of in which, since 1999, a state or
state entity was accused of infringing a
patent or trademark. For each, please
indicate what role, if any, you had in
the dispute (e.g., you acted on behalf of
a state through its Attorney General’s
office, or as counsel to a state entity; or
you acted as or on behalf of a rights
holder; or you were an observer), and
for each please:
i. Identify the patent or trademark
asserted to have been infringed and the
state entity involved, and with respect
to the trademark, indicate whether it
was registered, either federally or with
one or more states;
ii. Describe how, when, and where the
asserted acts of infringement were
committed;
iii. If the matter was the subject of a
lawsuit, identify: (a) The court, (b) the
names of the parties, (c) the claims
asserted and the relief sought, and (d)
the ultimate resolution, if any. In
addition, if the litigation resulted in the
issuance of judicial opinions, please
provide copies of these if unpublished,
and citations if published;
iv. If the matter was not the subject of
a lawsuit, clarify whether the state was
nevertheless contacted about it, and if
so, how did the state respond, and how
was the matter resolved? If you are the
rights holder or its representative, what
was the basis of the decision not to
litigate the matter?
v. Were there allegations that the
asserted infringement was intentional or
reckless, and if yes, what was the basis
for that allegation?
vi. Explain whether the asserted
infringement was carried out pursuant
to a state policy. If yes, and that policy
is set forth in an official state document,
please provide a citation to, or a copy
of, that document.
vii. Explain whether the asserted
infringement was carried out pursuant
to a state law or regulation. If yes, please
provide a citation to that law or
regulation.
3. How defenses of sovereign
immunity are asserted and treated in
patent and trademark infringement
cases:
a. How do states and state entities
typically respond to credible claims of
patent and trademark infringement? Do
they frequently assert defenses of
sovereign immunity in litigation and in
discussions with rights holders about
claims of infringement? Do they
frequently seek to resolve the claims
outside of litigation, even though
sovereign immunity would be available
if the rights holder filed suit?
b. Which state entities are entitled to
assert sovereign immunity, and
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18
15 U.S.C. 1051 et seq.
19
35 U.S.C. 1 et seq.
pursuant to which state policies, laws,
or regulations?
c. Are there formal or informal state
policies that require or permit states
and/or particular state entities to assert
sovereign immunity? Are there any
policies that prohibit such assertions? If
any such policies are set forth in official
government documents, or in relevant
laws, regulations, ordinances, or
constitutions, please provide copies or
citations.
d. Are there instances in which states
or state entities have explicitly waived
sovereign immunity in patent and/or
trademark infringement cases, and if so,
under what authority? Alternatively, are
there state laws, regulations, or policies
that preclude such waivers, and if yes,
please provide copies or citations.
e. Are there instances in which a
court has found that a state or state
entity has waived sovereign immunity
in patent and/or trademark infringement
cases, and if yes, what were the bases of
those findings?
f. When states or state entities assert
defenses of sovereign immunity in
patent and/or trademark infringement
cases, do courts generally accept these
defenses? If courts reject these defenses,
on what basis do they do so?
g. What defenses other than sovereign
immunity, if any, do states or state
entities typically assert in patent and/or
trademark infringement lawsuits?
4. Other impacts of availability of
sovereign immunity:
a. In your view, do the outcomes of
claims of patent and trademark
infringement, whether asserted in
litigation or otherwise, differ depending
on whether the asserted infringement
was carried out by a private party or a
state or state entity, and, if yes, are such
differences attributable to the
availability of sovereign immunity?
Please explain the basis for your view,
and if it is based on particular instances
in which there were claims of patent or
trademark infringement, please describe
those instances.
b. In your view, does the availability
of sovereign immunity as a defense in
litigation lead patent and/or trademark
rights holders to enter into licensing
arrangements with states or state entities
on terms that are more favorable than
those granted to private licensees or to
otherwise change their licensing
practices? Please explain the basis for
your view, and if it is based on
particular instances in which the
availability of sovereign immunity did
or did not impact the outcome of
licensing negotiations, please describe
those instances.
c. Are you aware of instances in
which the availability of sovereign
immunity as a defense in litigation has
deterred patent and/or trademark rights
holders from commencing litigation
against a state entity and/or from
notifying it about an infringement?
5. Nature and availability of state
remedies:
a. Are there causes of action under
state law that may provide adequate
remedies for patent and/or trademark
infringement by states or state entities?
For example, are any of the following
causes of action available and typically
asserted: State trademark infringement;
takings claims, such as conversion or
reverse eminent domain; tort claims;
contract claims; or writs of trover,
replevin, or detinue?
i. If yes, are the elements of these
causes of action and the associated
remedies comparable to those associated
with infringement actions brought
pursuant to the Lanham Act
18
and/or
the Patent Act?
19
ii. Are you aware of instances in
which damages were awarded in patent
and/or trademark suits brought against
states or state entities pursuant to such
causes of action? If yes, please identify
those instances and provide information
about them.
iii. In which state courts can a rights
holder bring a patent or trademark
infringement action against a state or
state entity? Which of the following
doctrines, if any, are impediments to
doing so: Sovereign immunity, state
law, federal preemption, or others?
b. In cases of patent and/or trademark
infringement by states and state entities,
to what extent is injunctive relief
available against state officials who act
within the scope of their authority? Is
such relief adequate to address the
needs of patent and/or trademark rights
holders whose rights are infringed?
6. Other matters:
a. Please describe any formal or
informal policies that states may have
for responding to claims of patent and/
or trademark infringement, including
policies regarding payments to or
negotiations with rights holders. If these
policies are written, please provide
copies.
b. When rights holders notify states or
state entities of patent or trademark
infringements informally rather than via
lawsuits, do they typically do so
through the Attorney General’s office or
through other officials? In cases in
which the interactions are with offices
other than the Attorney General, is the
Attorney General’s office typically
notified?
c. Do states or state agencies typically
carry insurance policies that would
cover patent or trademark infringement
by state employees, and if so, would
such coverage extend to intentional,
reckless, or negligent infringements?
d. Please identify any other pertinent
issues that the USPTO should consider
in conducting its study.
Dated: October 30, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2020–24621 Filed 11–4–20; 8:45 am]
BILLING CODE 3510–16–P
INTERNATIONAL DEVELOPMENT
FINANCE CORPORATION
Notice of Public Hearing
AGENCY
: International Development
Finance Corporation.
ACTION
: Announcement of public
hearing.
SUMMARY
: The Board of Directors of the
U.S. International Development Finance
Corporation (‘‘DFC’’) will hold a public
hearing on December 9, 2020. This
hearing will afford an opportunity for
any person to present views in
accordance with Section 1413(c) of the
BUILD Act of 2018. Those wishing to
present at the hearing must provide
advance notice to the agency as detailed
below.
DATES
: Public hearing: 2:00 p.m.,
Wednesday, December 9, 2020.
Deadline for notifying agency of an
intent to attend or present at the public
hearing: 5:00 p.m., Wednesday,
December 2, 2020.
Deadline for submitting a written
statement: 5:00 p.m., Wednesday,
December 2, 2020.
ADDRESSES
: Public hearing: Virtual;
Access information provided at the time
of attendance registration.
You may send notices of intent to
attend, present, or submit a written
statement to Catherine F. I. Andrade,
DFC Corporate Secretary, via email at
candrade@dfc.gov.
Instructions: A notice of intent to
attend the public hearing or to present
at the public hearing must include the
individual’s name, title, organization,
address, email, telephone number, and
a concise summary of the subject matter
to be presented. Oral presentations may
not exceed five (5) minutes. The time for
individual presentations may be
reduced proportionately, if necessary, to
afford all participants who have
submitted a timely request an
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