USPTO Launches Public Image File Wrapper System

The U.S. Patent and Trademark Office has launched its public Image File Wrapper system as part of its new and improved Patent Application Information Retrieval website. The public IFW system allows you to view and download images of file histories for U.S. patents and published applications by just entering a serial number, patent number, or publication number, and then clicking on the "image file wrapper" tab. According to Carl Oppedahl's posting to the PAIR Listserv, it includes all cases filed on or after June 28, 2003, as well as some cases that were pending on that day and that were later scanned into electronic files.

For a sample file history, enter 2003-0223231 for the pblication numer here.

Intellectual Property Auction Service

According to their website, "ipAuctions Inc. was formed to provide a professional auction process for the sale of Intellectual Property assets. The site is designed for the corporate and business professional, as well as, U.S. Bankruptcy Court trustees, attorneys and other individuals who wish to auction valuable intangible assets. Results of recent auctions:

• Sold for $10,525.00 - U.S. Patent No. 5,5721,832Patent – Method and Apparatus for an Interactive On-Line Catalog
• Sold for $18,250.00 - U.S. Patent No. 5,968,110Trademark and Service Mark – HardwareStreet.com
• Sold for $125.00 - Software Package – Online Order Entry System
• Sold for $10,000.00 - Catalog Support Package with Online Inventory, Credit Card Verification and Support for 10,000 + ProductsCustomer Database – 90,000 Computer Products Buyers
• Sold for $950.00 - Buyer File – 24 months old Sold for $10,525.00 - U.S. Patent No. 5,5721,832"

TGIF: Need a Lawyer Joke?

Then check out "Laughing at Lawyers and the Law" by Robert J. Ambrogi in Law Technology News on July 26, 2004.

USPTO ePAVE Improvements Delayed

According to the USPTO, "The EFS systems & software upgrade release originally slated for July 31st will be rescheduled. Please continue to file electronic patent applications using PASAT along with ePave 5.1a."

Click here for updates and tools from the USPTO. Click here for more EFS User Resources from www.patents.com.

UKPO Proposes Patent Enforcement Insurance Scheme with U.S. Lawyers

In a study released last night aimed at improving IP rights enforcement, the Patent Office called for the creation of a mutual insurance association to provide a fighting fund of £50,000, and possibly much more, for each member, to allow companies to take patent infringers to court. Government funding would be required for an initial period while membership numbers grew to a level for the mutual to be self sustaining.  According to the Patent Enforcement Project study

• It would be funded by subscriptions, income from investments. Additional
  funding may be possible through recoupment of costs from patentees the mutual has successfully assisted to obtain a favourable settlement or damages.
• Government funding would be required for an initial period while membership numbers grew to a level for the mutual to be self sustaining.
• The mutual would provide cover to fund preliminary investigations to
  establish the scope and validity of the patent for any member who can show prima facie that their patent is being infringed.
• The mutual will also purchase patent insurance to cover the litigation costs of any member whose preliminary investigation shows a strong case that its patent is valid and has been infringed.
• The mutual should establish a panel of high quality lawyers in the United
  States who would be prepared to take on mutual-funded cases on a contingency basis.
• Premiums, or member subscriptions, must be priced differentially, according to risk.

TGIF: Stop Losing Passwords

Besides remembering IDs and passwords, Yodlee aggregates data from other sites that you use. For many accounts, an auto-register feature lets Yodlee do the job of registering for you. You can sign up for it free at www.Yodlee.com or through any of the major Web sites that rebrand the service, such as American Express, Quicken.com, and Yahoo Finance.  The main display is a simple tabular list of all the accounts you selected, with summary information such as your current balance or a list of news headlines. 

 

Click here for more information from PC World magazine,or here for more information from PC magazine. Click here to register with Yodlee.

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

News Service:  http://www.ip-updates.com/

CAFC Dicta: Intentional Concealment Required for Best Mode Violation?

According to Circuit Judge Newman in HIGH CONCRETE STRUCTURES, INC. v. NEW ENTERPRISE STONE AND LIME CO., INC. decided July 29, 2004

"Invalidation based on a best mode violation requires that the inventor knew of and intentionally concealed a better mode than was disclosed. The specification states that the tilting action is assisted by gravity and does not need 'heavy equipment.' New Enterprise conceded, for purposes of its motion for summary judgment, that the placement of the pivot point four inches from the center of gravity was at "about" the center of gravity. High Concrete argued that since the tilting occurs primarily with gravity, the loading crane is a stabilizing and safety device, as any person in the field would understand and use for heavy or bulky cargo. New Enterprise conceded that use of a crane to assist with heavy loads is well known to persons in the field of loading cargo. There was neither evidence nor inference of concealment of this information by the inventors."

"Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention."

Cf, e.g., MPEP Sec. 2165 (active concealment not required for best mode violation)

Rule of Thumb for IP in M&A

According to Adam Liberman, "The extent to which the price proposed to be paid for the relevant acquisition exceeds the value of net tangible assets should be adopted as a 'rule of thumb' for determining the importance of intellectual property to that transaction. The greater the disparity between the proposed price and the value of net tangible assets, the more likely intellectual property is to be important to the transaction, and therefore the greater the reason to properly investigate the seller's intellectual property."

U.S. Legislators Urge China to Improve IPR Enforcement Mechanisns

On July 14, 2004, the U.S. House of Representatives passed by 416-3 H.RES.576 entitled "Urging the Government of the People's Republic of China to improve its protection of intellectual property rights, and for other purposes." The non-binding resolution states that "the market value of counterfeit goods in China is between $19,000,000,000 and $24,000,000,000 annually" and that the "proof-of-sale requirement totaling approximately $24,100 for business enterprises and $6,030 for individuals (according to current exchange rates) makes criminal prosecution against those enterprises or individuals that violate intellectual property rights extremely difficult."

USPTO Application Filing Guides

Click here for "A  Guide to Filing A Non-Provisional (Utility) Patent Application."

Click here for "A Guide to Filing a Design Patent Application."

Click here for more "Guidance, Tools & Manuals."

Click here for a "tutorial" on filing a trademark application.

Click here for a Fastener Insignia Recordal Form.

Atlanta Patent Practitioner Statistic

Atlanta, the 39th largest U.S. city in 2000, is number 14 in terms of patent practitioners.

Unfair Import Investigations Before the U.S. International Trade Commission

Click here for a recorded slide presentation on "Section 337" patent enforcement procedures by Bill Heinze of Thomas, Kayden, Horstemeyer & Risley, L.L.P.  For an in-person presentation on this topic (or others) to your intellectual property organization, contact BillHeinze@tkhr.com or BilHeinze@yahoo.com. 

 

GAAS = PCAOB Standard No. 1

PCAOB Auditing Standard No. 1 requires that auditors' reports on audits and other engagements relating to public companies and other issuers include a reference that the engagement was performed in accordance with the standards of the PCAOB. This replaces the previous reference to generally accepted auditing standards, or GAAS.  However, according to the SEC's Order on May 15, 2004,  

The PCAOB adopted those generally accepted auditing standards, including their respective effective dates, as they existed on April 16, 2003, as interim PCAOB standards. Therefore, changing the reference from "generally accepted auditing standards" to "the standards of the Public Company Accounting Oversight Board (United States)" does not change the substantive procedures performed by an auditor. Because GAAS and the standards of the PCAOB are one and the same for PCAOB-registered public accounting firms, the PCAOB believes that a reference to GAAS in auditors' reports would no longer be appropriate or necessary.

CAFC: Mere ANDA Filing Not Willful Infringement

On July 27, 2004, the U.S. Court of Appeals for the Federal Circuit stated in Glaxo Group v. Apotex that "[An ANDA] a filing cannot constitute willful infringement for purposes of establishing an exceptional case and the award of attorney’s fees under 35 U.S.C. § 271(e)(4)."  Click here for  more information about Abbreviated New Drug Applications.

Mediatek Requests Import Investigation of Optical Disk Controller Chips and Chipsets

On July 23, 2004, Alexander Hadjis of Fish & Richardson filed a "Section 337" complaint at the U.S. International Trade Commission on behalf of MediaTek, Inc in Taiwan.  The complaint requests that an unfair import investigation be instituted involving "Certain Optical Disk Controller Chips and Chipsets and Products Containing Same, Including DVD Players and PC Optical Storage Devices."  The proposed respondents are Zoran Corporation and Oak Technology, Inc. both of Sunnyvale, California.  

According to a July 26, 2004 press release from Mediatek, the ITC complaint is parallel to proceedings in the U.S. District Court for Delaware involving U.S. Pat. Nos. 6,229,773 and 5,970,031 entitled "Servo Controller Chips in Optical Disk Drive" and "Player Vibration-Immune Uninterrupted Playback."

The ITC complaint has been designated as confidential and assigned Docket No. 337-2389 for indexing in the Commission's database.  The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible. 

Click here for more information on the importance of monitoring these ITC investigations, such as by subscribing to the free "I/P Updates" news service at www.ip-updates.com.  And click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission." 

For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

New USPTO Fee Schedule Effective July 26, 2004

The latest USPTO Fee Schedule became effective July 26, 2004 and includes fee increases for PCT filings.

UKPO To Provide Non-Binding Infringement Opinions?

According to IP Law Bulletin on July 23, 2004, "The United Kingdom has amended its existing patent law in an effort to deter unreasonable infringement suits and encourage out-of-court settlements." Although status information from the UK Parliament is currently available only through July 19, the bill reportedly enables the UK Patent Office to provide non-binding opinions on patent infringement in order to settle disputes over patent rights without parties having to resort to expensive litigation.

In the U.S. , Patent Examiners are not allowed to suggest a field of search for patented inventions, much less comment on infringement.

Business Method Patent Fights Reach Japan

According to a July 27, 2004 article in Japan Today, JAL sued rival airline ANA for 10 billlion yen over an online ticketing patent.

NY Judge Quashes Subpoena Aimed at Patent Prosecution/Litigation Counsel

According to a July 23 article in New York Lawyer, New York District Court Judge Robert W. Sweet applied the law of the Second Circuit to quash a subpoena aimed at the prosecuting and litigating patent attorney in ResQNet.com, Inc. v. Lansa Inc., 01 Civ. 3578.

Structure, Function and the Spectrum of Patent Claiming

Click here for a recorded slide presentation on the issue of "claim-type differentiation" by Thomas, Kayden, Horstemeyer & Risley, L.L.P. For an in-person presentation on this topic (or others) to your intellectual property organization, contact BillHeinze@tkhr.com or BillHeinze@yahoo.com.

"Illegal Art" on the Fringes of Intellectual Property

 
When Utah artist Tom Forsythe took this photograph as part of a series of critical fine-art Barbie photos, Mattel got pissed.  Then, Tom got even.   National Barbie-in-a-Blender Day is celebrating his defense of free speech with a Barbie-Art exhibit opening on July 27, 2004. Help celebrate by sending your Barbie-Art creation to FreeCulture.org at blended@barbieinablender.org.  

According to Stanford Law Professsor Lawrence Lessig's work, "Creativity and innovation always builds on the past. The past always tries to control the creativity that builds upon it. Free societies enable the future by limiting this power of the past. Ours is less and less a free society."

But does limiting this power of the past discourage us from creating the future? Perhaps ours is actually a more and more creative society. 

Help Tom Forsythe create the future by purchasing selections from his Food Chain Barbie series here.  For more "art and ideas on the legal fringes of intellectual property," check out Illegal Art and Illegal Art.

Free Book Gets Read AND Makes Money

A memo that Professor Lawrence Lessig wrote to his publisher convinced Penguin Books that releasing Free Culture: How Big Media Uses Technology and the Law to Lock Down Culture and Control Creativity online would actually increase sales of hardcover copies. According to an article in the July/August 2004 issue of Stanford Magazine, there have now been more than 180,000 downloads of his book and Penguin is on its third printing.

ICANN to Create IDN Advisory Group

ICANN wrapped up its week-long meetings in Kuala Lampur with a number of new initiatives directed at further stewarding a stable global Internet. These new initiatives include the creation of an advisory group to engage the global Internet community in the use of Internationalised Domain Names (also referred to as "IDNs") within the domain name system to further Internet growth in new languages and regions of the world. If you like working with transliterated trademarks, you love internationalized domain name disputes.

Industry Functional Advisory Committee for Intellectual Property Rights

The Industry Functional Advisory Committee (IFAC) on Intellectual Property Rights is comprised of industry representatives that includes advising the U.S. negotiators on the World Trade Organization (WTO) Members' implementation and compliance of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).  Click here for a list of members representing your industry.

FDA: Patent Term Restoration, Frequently Asked Questions

In order to stimulate product development and innovation, Congress in 1984 enacted Title II of the Drug Price Competition and Patent Term Restoration Act (Public Law 98-417) to extend patent life to compensate patent holders for marketing time lost while developing the product and awaiting government approval. Title II of the Act created a program whereby patent holders whose patents claim a human drug product, medical device, food additive or color additive could recoup some of the lost patent time. In 1988, Congress enacted the Generic Animal Drug and Patent Term Restoration Act (Public Law 100-670) which contained provisions for patent restoration to animal drug products. The regulations governing the Patent Term Restoration program are located in the Code of Federal Regulations, 21 CFR Part 60.

 

Click here for answers to frequently asked questions about patent term restoration program from the U.S. Food and Drug Administration's Center for Drug Evaluation and Research.

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

I/P Updates:  http://billheinze.blogspot.com (RSS/Atom feeds)

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.

 

This message may contain confidential information that is covered by the attorney-client privilege and/or work-product doctrine. 

 

IFPI: Domestic Music Piracy Levels

Domestic music piracy levels in 2003, from the International Federation of the Phonographic Industry (IFPI) annual global piracy report:

less than 10%:  Australia, Austria, Canada, Denmark, France, Germany, Iceland, Ireland, Japan, Norway, Sweden, Switzerland, UK, USA

10 - 24%:  Bahrain, Belgium, Finland, Italy, Netherlands, New Zealand, Oman, Qatar, Singapore, Slovenia, South Korea, Spain, Turkey, UAE, Zimbabwe

25 - 50%:  Chile, Costa Rica, Croatia, Cyprus, Czech Republic, Greece, Hong Kong, Hungary, India, Israel, Philippines, Poland, Portugal, Saudi Arabia, Slovakia, South Africa, Taiwan, Thailand

greater than 50%:  Argentina, Brazil, Bulgaria, China, Colombia, Ecuador, Egypt, Estonia, Indonesia, Kuwait, Latvia, Lebanon, Lithuania, Malaysia, Mexico, Pakistan, Paraguay, Peru, Romania, Russia, Ukraine, Uruguay, Venezuela

According to the report, rising global overcapacity for the manufacture of discs is a key factor behind the spread of disc piracy.  In the countries shown in red above, estimated capacity (in thousands of units)  outstrips local legitimate demand by no less than nine times and, in some cases, by more than 30 times.

Country             Capacity     Demand    %Demand

TAIWAN                 7,900             270                 2926 CHINA                    4,900             1,100               445
HONG KONG        2,500             140                  1786
INDIA                     1,900              400                  475
MALAYSIA            1,860              60                     3100
SINGAPORE         620                 60                    1033 BRAZIL                   630                 140                   450
THAILAND            570                 27                     2111
POLAND                 500                 150                   333
RUSSIA                   370                 30                     1233

TOTAL         217,500         23,770                   915

German Court Sentences Pirate to 5 Years

According to a July 22, 2004 report from IDG News Service, a "professional chess player, and presumed leader of Europe's largest known software counterfeiting network, was sentenced Thursday by a German judge with five and half years in prison without probation."

OAMI-ONLINE: Decisions on Invalidity concerning Community Designs

Decisions on Invalidity concerning Community Designs are now available on-line. Click here for "Guidelines for the Proceedings relating to a declaration of invalidity of a registered community design" and click here for other Practical Aspects of Communtiy Designs.

A Long Shot at Redemption through Reexamination

Stephen Maebius and Harold Wegner write in I/P Law & Business, "We have reviewed the histories of all reexaminations in which the losing party in court has sought a reexamination, and found that it takes 10.3 years for these reexaminations to move through the system.  Now that PTO leaders have opened the door to a preappeal reexamination, the patent bar may follow in full force. "

What’s new about CTM-ONLINE

CTM-Online is now updated daily with

• Better supporting information via the help page, which now includes a glossary of statuses and information on Vienna codes
• Links to other databases, such as OHIM Case-Law (refusals, opposition, cancellation, appeals) and Curia, the European Court of Justice and Court of First Instance database
• Improved basic search criteria:
  Search by type of mark – word, figurative, 3D, colour, sound, olfactory, hologram, others
  Search by trade mark name now possible using ‘stemming’
  Search by Vienna Classification for figurative trade marks 
• Improved advanced search criteria:
  The use of Boolean operators and wildcards for trade mark names
  Search by Nice class
  Search by filing or registration date
  Search by status
  Limit search to trade marks with or without acquired distinctiveness
• Improved results: 
  Sorting results by number, filing date or name, in ascending or descending order
  Up to 1,000 results may be displayed
  Refine search based on the previous results
  More precise status information & visual representation
  Historical log of statuses
  Detailed information on opposition, cancellation, appeal and recordals

USPTO Eliminating Credit Cards as Payment for Replenishing Deposit Accounts

Starting August 23, 2004, the United States Patent and Trademark Office is amending its rules of practice to eliminate acceptance of credit cards as payment for replenishing deposit accounts. Deposit account customers may still submit payments to replenish their deposit accounts by electronic funds transfer (EFT) through the Federal Reserve Fedwire System or over the Office’s Internet Web site, and by check or money order sent through the mail. The Office will continue to accept credit cards as payment for all other products and services for which fees are required.

The Plastic Card Network (PCN) allows Federal agencies to accept nationally branded credit and debit cards for Government receipts in exchange for a percent fee paid by the Department of the Treasury Financial Management Service (FMS).  The Office was notified by the FMS of excessive transaction fees resulting from high dollar credit card charges processed by the agency. Nearly all of those high dollar credit card charges were payments made by customers to replenish deposit accounts.  Under the PCN, the Office is not allowed to establish minimum or maximum single transaction amounts or to charge a transaction fee for a specific group of transactions as conditions for a specific group of transactions as conditions for accepting credit cards.  This final rule supports the FMS in controlling the PCN costs, and ensures the Office can continue participating in the PCN and provide the credit card payment option to customers for other products and services.

Acacia: This Season's Controversial Patent Licensor

According to a July 2004 article in IP Law & Business, Acacia isn't the first company to make a business out of patent licensing, they just happen to be this season's controversial patent licensor. "When someone opens a conversation with 'I've got 40 million bucks in the bank,' sure you're going to be intimidated," says Delwin Hinkle, an Acacia Research Corporation license and founder of a small online educational company.

Forbes.com: Perfume Ruling Fuels Industry Debate

According to a July  23 article in Forbes.com, "Some hailed the decision to protect Lancome's "Tresor" perfume with a copyright as 'revolutionary.' But others called it a mistake to ban imitators, saying the move could rattle the global cosmetics industry."

In my view, unlike text, images, or sculpture, there is no structure associated with the constituent componets of perfume.  Therefore a perfume creator should be required to prove usefulness (such as pheromonal activity) before receiving exclusive (patent) rights for the invention.

Click here for more "Structure, Function, and the Spectrum of Intellectual Property Rights."  

 

EU Fine-Tuning Copyright, But No Term Extension

The European Commission has launched consultations on simplifying and fine-tuning existing EU legislation on copyright and related rights. The consultations, open until 31st October 2004, are based on a Commission working paper which suggests that current EU copyright legislation is generally effective and consistent, but would benefit from some improvements. 

In a press release on July 19, 2004, Internal Market Commissioner Frits Bolkestein said that  â€œSeven copyright Directives have been adopted over ten years. We need to make sure the early Directives are consistent with the more recent ones. This type of nuts and bolts work makes a real difference to how EU law works on the ground and we owe it to rights holders and content users, including consumers, to make this important body of EU law as coherent and as simple as possible.â€�

The first generation of EU copyright law consists of five Directives (91/250 Computer Programs, 92/100 Rental/Lending Right, 93/83 Satellite and Cable, 93/98 Term of Protection, 96/09 Legal Protection of Databases). The Commission has to make sure that this first generation of EU legislation is still up to speed with today’s technology and the realities of the markets. The review was started in 2002 at the Conference on “European Copyright Revisited� in Santiago de Compostela.

Some rights holders have argued for extending copyright protection for recorded music from 50 years to 95, to bring the EU in line with the US. However, the working document suggests that there is no apparent justification for such a change, given for example that there are no longer trade distortions arising from different terms of protection within the EU’s Internal Market. It also notes that in nearly all other industrialised countries, the relevant period is also 50 years.

USPTO: Patent Term Guarantee Overview

The "patent term guarantee" set forth in the American Inventors Protection Act of 1999 establishes three main bases for adjusting the term of a utility or plant patent: (1) if the USPTO fails to take certain actions within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; or (3) for delays due to interference, secrecy order, or successful appellate review.  Click here for more from the USPTO.

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

I/P Updates:  http://billheinze.blogspot.com (RSS/Atom feeds)

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.

 

This message may contain confidential information that is covered by the attorney-client privilege and/or work-product doctrine. 

 

The Law, Technology, and Success (So Far) of Pop-Up Ads

According to Thomas C. Morrison's article entitled "Is Your Company Being 'Gatored'?," Gator has boasted that over 35 million people actively use its "OfferCompanion" software, the success of which can be measured by the "click through" rate, i.e., the percentage of those users who, when confronted with a pop-up ad, actually click through to the website of the pop-up advertiser. With respect to the travel industry, the average click through rate for pop-up ads was 10%. Individual advertising campaigns were said to yield click-through rates that were as high as 24% (travel), 26% (credit cards), 29% (automotive) and 48% (house-hold products).

Like Gator, WhenU offers consumers a variety of free software programs that are bundled with a spyware program known as "SaveNow". Testimony in one of the WhenU lawsuits disclosed that approximately 25 million people are active SaveNow users. Ironically, while over 100 million people have at one time downloaded the SaveNow software, 75 million of them have uninstalled it.
Several lawsuits have been filed against Gator and WhenU leading to several decisions, However, none of these cases has proceeded to trial and no decision has been reviewed by an appellate court. The results to date are presented in his article.

Click here to get free pop-up blocker software for your computer. Click here to get free adware removal software.

EPO: Free Virtual Esp@cenet® Classroom August 5 and 6, 2004

Would you like to take part in a live, interactive, free of charge Esp@cenet® coaching session? On August 5 and 6, 2004 the European patent Office will conduct an introductory virtual classroom session on "Searching in Esp@cenet®."  For details and registration go to the virtual classroom pages.

The Blawg Channel

Dennis Kennedy, Ernest Svenson, Marty Schwimmer, and Tom Mighell have started the Blawg Channel as a combined blog of the four founders that will quickly add other prominent legal bloggers to the mix. Nipper likes to think of them as "The Blawging Wilburys."

Senate Webcast Today on S. 2560, "The Inducing Infringement of Copyrights Act of 2004"

The Hearing Before the Senate Judiciary Committee on “Protecting Innovation and Art while Preventing Piracy�
on Thursday, July 22, 2004, at 2:00 p.m. in the Dirksen Senate Office Building Room 226 will be available by
Webcast. The witness list includes

The Honorable Marybeth Peters
Register of Copyrights
United States Copyright Office

Mr. Gary Shapiro
President and Chief Executive Officer
Consumer Electronics Association

Mr. Robert Holleyman
President and Chief Executive Officer
Business Software Alliance

Mr. Andrew Greenberg
Vice-Chairman, Intellectual Property Committee
IEEE-USA

Mr. Kevin McGuiness
Executive Director and General Counsel
NetCoalition

Mr. Mitch Bainwol
Chairman and Chief Executive Officer
Recording Industry Association of America

CAFC Orders En Banc Hearing on Dictionaries for Patent Claim Construction, Amicus Briefs Due in 60 Days

This court has determined to hear this case en banc in order to resolve issues concerning the construction of patent claims raised by the now-vacated panel majority and dissenting opinions.  The parties are invited to submit additional briefs directed to these issues, with respect particularly to the following questions:

1. Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?   If both sources are to be consulted, in what order?
2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope?  If so, what language in the specification will satisfy those conditions?  What use should be made of general as opposed to technical dictionaries?  How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term?  If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?
3. If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?
4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5. When, if ever, should claim language be narrowly construed for the sole    purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?
6. What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?
7. Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings?  If so, on what aspects, in what circumstances, and to what extent?

This case will be heard en banc on the basis of the briefs already filed and any additional briefs addressing the questions set forth above.  Amicus curiae briefs may be filed by bar associations, trade or industry associations, government entities, and other interested parties.  Amicus briefs shall be limited to 5,000 words, and shall be filed within sixty days from the date of this Order.

Top 50 in IP According to Managing Intellectual Property

The list is here, the story is here.

Free Webcast Today: Patent Predators; Moral Rights, Legal Wrongs

Thursday, July 22, 2004
3:00 PM to 3:30 PM Webcast

Patent infringement suits are up more than 70% since 1993 and accusations of patent infringement are on the rise. Who are these "patent predators" and what strategy should be used when you receive a demand letter from one of them?
A Federal Court has upheld a multi-million dollar verdict for a "moral rights" violation in a music copyright case. Can anything be done to make sure written, video and other works are not the next subject for moral rights decisions?
Join the Association of Corporate Counsel's (ACC) Intellectual Property Law Committee and Kilpatrick Stockton for a webcast presentation on these issues.

CORDIS: Support for Innovation Entrepreneurs

The European Community Research and Development Information Service has opened a new website for innovation entrepreneurs. The portal is available in English, French, German, Italian and Spanish and publishes weekly the latest news and events related to European innovation, including sections devoted to innovation policy, support services to enterprises, and innovation within the research framework programmes. In addition, it provides research, background, and best-practice resources via a searchable archive of articles on innovation, as well as a library of policy documents and official publications.

ND GA Local Patent Rules Effective July 15, 2004

The new local patent rules for the U.S. District Court for the Northern District of Georgia are now effective for any case filed or transferred after July 15, 2004.  They apply to all civil actions which allege infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. 

Among other things, the new local rules require

• confidentiality prior to entry of a protective order,
• stipulated protective orders,
• early disclosure (and amendment) of infringement and invalidity contentions, 
• a presumption against bifurcation of damages and liability issues,
• late discovery of opinions of counsel,
• limited disqualification of infringement and prosecution counsel (from witness examination only),
• exchange of disputed claim terminology and interpretations leading to a joint claim construction conference,
• disclosure of expert witness reports for issues other than claim construction, and
  a presumption against expert witness report amendments. 

Click here for all of the local rules from the ND GA and click here for information on other jurisdictions.

Sanford Requests Unfair Import Investigation for Ink Markers

On July 20, 2004, Sanford, LP filed a "Section 337" complaint at the U.S. International Trade Commission requesting an unfair import investigation involving "Certain Ink Markers and Packaging Thereof."

The proposed respondents named in the complaint are Asia Global (HK) Ltd., Hong Kong; Bangkit USA, Inc., Vernon, California; Cixi City Heng Bao Pen Manufacturer, China; Cixi Guaneheng Yangtse River Pen Company, China; Lineplus Corporation, South Korea; LiShui Laike Pen Co., Ltd., China; Luxor International Pvt. Ltd., India; MidWestern Home Products, Inc., Columbus, Ohio; Mon Ami Co., Ltd., South Korea; Ningbo Beifa Group Co., Ltd., China; Southern States Marketing, Inc., Marietta, Georgia; and Uchida of America Corporation, Torrance, California.

The complaint has been designated as confidential and assigned Docket No. 337-2388 for indexing in the Commission's database at https://edis.usitc.gov/hvwebex//.

The Commission now has 30-35 days from the dates indicated above in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written initial determination, usually within about 10 months. Due to the expedited nature of these proceedings, it is important to notify any interested parties as soon as possible.

General information about Section 337 investigations is available from the APLF at http://www.aplf.org/events/roundtables/2002-06-20.shtml. For more information on this particular investigation, please contact the author, Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta.

A (Self-Promoting) Apology to the INTA Listserv

-----Original Message-----
From: Megan Sanders
Sent: Wednesday, July 21, 2004 9:30 AM
To: Heinze, William
Subject: INTA TMtopics List Policies

Dear Mr. Heinze,

Your recent submission to INTA's TMtopics email discussion list violated the list's guidelines and policies in that it was clearly self-promotion. (Please see http://www.inta.org/legal/tmtopics.html - specifically underGuidelines "Do not blatantly promote yourself or otherwise spam the list. Self-promotion should be kept to a brief signature file at the end of yourposts. Signature files should not exceed 5-6 lines.")  Please be sure toreview the list guidelines and policies before sending any postings to thelist in the future. 

It was my mistake in that I did not realize your submission was apromotional piece until after it had been posted and several othersubscribers inquired about the nature of it and its acceptance.We strive to maintain the list as an informative and beneficial resource forall and these types of postings would contradict that mission. Thank you in advance for your understanding and adherence to these policies.If you have any questions, please feel free to contact me.

Sincerely,
Megan Sanders
Information Resources Coordinator
Staff Liaison, Information Resources Committee
International Trademark Association

-----Original Message-----
From: Heinze, William
Sent: Wednesday, July 21, 2004 9:36 AM
To: 'Megan Sanders'Subject:
RE: INTA TMtopics List Policies

My apologies for the signature file and any inconvenience.  I did receive a thank you note for the article from one reader.  Quite a few readers also checked-out my free I/P Updates website.  Some even subscribed.  Feel free to do the same.

--Bill

William F. Heinze
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)  

Trilateral Acceptable Goods ID Manual Update

According to an article in the July/August 2004 issue of Managing Intellectual Property, the USPTO has said that the new Trilateral Acceptable Goods ID Manual will be incorporated into the current U.S. Acceptable Identification of Goods and Services Manual. Designated entries will be accepted in all three offices, while others will be accepted only in the US. The publication delay reportedly stems from the search for an appropriate format and technology to be agreed upon by the trilateral offices. A publication schedule has not yet been determined.

Creative London's "Own It" Free I/P Service

Creative London is offering a free copyright and Intellectual Property service to ensure London's creative community actually profits from its innovations. Called 'Own It', this service will work with 16 major industry organizations to deliver seminars, online and face-to-face advice to ensure creative professionals understand how to exploit and protect their ideas.

According to Creative London's Vision and Plan, one in every five new jobs in the capital city is in the "creative industries." Their Creative Sector 2004 Update from GLA Economics also reports that one in seven of London’s jobs is now in the creative sector. Nearly half its creative industry employees are in creative occupations, in contrast to an average of 30 per cent in the rest of the UK.

ChemFinder Free Chemical Searching

ChemFinder has been providing free chemical searching to hundreds of thousands of scientists since 1995. This free database includes: 2D structures & 3D models, physical properties, and links to other websites with information about your compound.

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

I/P Updates:  http://billheinze.blogspot.com (RSS/Atom feeds)

 

WestLaw Offering "WestDocket" Sheets

According to Thomson/West publishing, "A simple template on Westlaw now lets you search a particular court's docket by docket number, parties, attorneys, and more. In the upcoming months, you will be able to retrieve and print copies of many documents listed on the docket directly from Westlaw. If a document is not available online, you’ll be able to link to a convenient order form for the document."

InternetNews.com: ICANN Moves Toward Self-Rule and Unlimited Domain Names

Accroding to a July 19, 2004 artcle, "Speaking from the Shangri-La Hotel in Kuala Lumpur, Malaysia, during ICANN's tri-annual meeting Monday, Vint Cerf, ICANN chairman, said seven of the 24 tasks needed to move ICANN's operations out of the hands of the U.S. government are complete."

According to a separate report from Reuters, Mr. Cerf also said the next-generation protocol, IPv6, had been added to its root server systems, making it possible for every person or device to have an Internet protocol address.

Other issues, including ICANN's contentious $15.8 million budget, are on the agenda.

FTC Reopens Unocal Antitrust Investigation on Patented Standards-Setting

On July 7, 2004, the Federal Trade Commission announced that it has reinstated charges that the Union Oil Company of California violated antitrust laws by defrauding the California Air Resources Board in connection with regulatory proceedings regarding development of patented gasoline formulations.

The Commission's opinion holds that "as a matter of law . . . misrepresentation can warrant denial of Noerr-Pennington protection, but that false petitioning loses Noerr-Pennington protection only in limited circumstances, such as when the petitioning occurs outside the political arena; the misrepresentation is deliberate, factually verifiable, and central to the outcome of the proceeding or case; and it is possible to demonstrate and remedy this effect without undermining the integrity of the deceived governmental entity."

According to the FTC's complaint, Unocal illegally acquired monopoly power in the technology market for producing Phase 2 “summer-time� CARB gasoline during the 1990's by misrepresenting that certain information was non-proprietary and in the public domain, while at the same time pursuing patents that would enable it to charge substantial royalties if the information were used by CARB. The complaint alleges that through these misrepresentations, Unocal induced CARB to adopt reformulated gasoline standards that substantially overlapped with Unocal’s patent rights. The Commission’s latest opinion did not rule on the factual validity of these allegations, which have not yet been subject to trial, but rather rejected an earlier decision by the agency's Administrative Law Judge on the legal insufficiency of the FTC's complaint.

Click here for the latest information on "In the Matter of Union Oil Company of California."

PLI: Free Patent Bar Exam Briefing

On Monday, July 26, 2004, the Practising Law Institute is offering a FREE one-hour briefing on the new patent bar application and exam procedures, at 1:00 p.m. (Eastern Time). For more information, visit PLI's Patent Bar Review Web site, www.patentbarreview.com, or call (888) 296-5973.

Courtesy of William F. Heinze
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

News Service:  http://www.ip-updates.com/

 

APLF: Blogging for I/P Legal Expertise

From the Association of Patent Law Firms:

Unlike general practice firms, APLF member firms do nothing but provide their clients with cutting-edge intellectual property counseling and services. As part of that commitment to excellence, two of our attorneys now offer free "blogs" with the latest news and information in this rapidly evolving field. If you have not seen them already, then check out

"I/P Updates" at http://billheinze.blogspot.com
News and information for sophisticated intellectual property practitioners, courtesy of William F. Heinze at Thomas, Kayden, Horstemeyer & Risley, L.L.P. in Atlanta.

"Patently Obvious" at http://patentlaw.typepad.com/
A patent law resource by Dennis Crouch at McDonnell, Boehnen, Hulbert, & Berghoff, LLP in Chicago.

What is a Blog?

According to Wikipedia, the term "weblog" was coined by Jorn Barger in December 1997 to describe frequently "updated sites that point to articles elsewhere on the web, often with comments, and to on-site articles." The shorter version, "blog," first appeared in 1999 when Peter Merholz broke the word "weblog" into "wee' blog" in the sidebar of his site. The word was later popularized by Pyra's creation of the Blogger weblog service and, in 2002, earned a draft definition in the Oxford English Dictionary.

Most blogs are now in "web syndication" so that periodic "feeds" are available by e-mail with a list of the latest content additions. The feeds come in RSS or Atom formats, and subscribers use "feed reader" applications or services to monitor new postings. Most syndicated blogs will also have links several free feed reader services, such as Bloglet, Bloglines, or My Yahoo! (beta).

For more information on blogging for legal expertise, check out

"Blawg" at http://www.blawg.org/index.php
Categorized directory of blogs that are focused on the law or legal-related professions.

"Law Sites" at http://www.legaline.com/lawsites.html
Tracking new and intriguing Web sites for lawyers by Robert J. Ambrogi.

"Jaffe Legal News Service" at http://www.jlns.com/
Weekly media tipsheet with Top Stories, Practice Specific News, Law Firm News, and Articles for Publication.

And, for information on joining the intellectual property experts in the Association of Patent Law Firms, contact info@aplf.org.

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

I/P Updates:  http://billheinze.blogspot.com (RSS/Atom feeds)

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.  

 

Google, DSpace, and Other Emerging Repositories for Non-Patent Prior Art

According to an April 9, 2004 article in the Chronicle of Higher Education, a "DSpace search feature" could soon appear on Google's advanced-search page. DSpace is a digital library system to capture, store, index, preserve, and redistribute the intellectual output of a university’s research faculty in digital formats.  It is freely available to research institutions world-wide as an open source system that can be customized and extended, and it accepts all forms of digital materials including text, images, video, and audio files. 

Click here for links to other projects involving similar institutional repositories for digital preservation and related technologies.

Perfume Gets Copyright Protection in the Netherlands

According to a July 16, 2004 posting in IPKat by an associate with the Dutch law firm of NautaDutilh, his firm succeeded in convincing a Dutch court that the blend of ingredients in Lancome's TRESOR perfume constituted an original work of authorship that was infringed by a competitor using 24 of the 26 olfactory components:

The Tresor perfume was considered by the court as having an original character bearing the personal imprint of its creator, thus entitling it to copyright protection in the Netherlands. In view of this, and the improbability of the resemblance to Tresor being coincidental, the court concluded that the defendant had deliberately and unlawfully infringed Lancomes copyright.

Peoples Daily: World patent agents targeting Chinese mainland market

According to a July 12 article in China's Peoples Daily, 69 percent of people responding to the survey by the Hong Kong Trade Development Council view Chinese mainland a market of great potential for patent business. And, TKHR is ready to meet that demand:

M. Paul Qualey, Jr., Esq.,
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
Taiwan Office
3rd Floor, No. 279, Sec. 4, Hsin-Yi Rd.
Taipei, Taiwan, R.O.C.
Phone (886) 2-2325-6370
Fax (886) 2-2704-4520

OECD: Generic Top Level Domain Names Market Development And Allocation Issues

According to a July 13, 2004 paper from the Organization for Economic Co-operation and Development, "Most concerns that might apply to using auctions as a tool to allocate new gTLDs do not apply to any decision on the future allocation of existing gTLDs. For example, there seem to be few, if any, obstacles to ICANN auctioning the right to be the registry responsible for .net as an adjunct to pre-qualification procedures. Indeed, there would be clear and demonstrable benefits in meeting the objectives set by ICANN. An auction would provide a transparent and verifiable mechanism for the market to value .net appropriately and avoid the pitfalls associated with comparative selection."

Free Patent Watch Service

Patent Alert is a free e-mail publication for people interested in patents. Upon subscription, you will receive periodical updates about inventions recently patented in the United States. Your e-mails will include descriptions of patents in the fields of your choice.You can choose to receive updates weekly, bi-weekly or monthly. Using the system of customizable subscriptions, you will be able to select only the content that is relevant to you. Alternatively, you can specify a wider range of themes for a broader view of affairs.

For more information on the importance of patent and trademark watches for your business, or to set up a courtesy watch service, contact me,

William F. Heinze
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948 (USA)

Tel.: (770) 738-2382
Fax: (770) 951-0933
Mobile: (404) 729-0729
E-Mail: BillHeinze@tkhr.com (business)
E-Mail: BillHeinze@yahoo.com (personal)
E-Mail: BillHeinze@tmo.blackberry.net (mobile)
Profile: http://www.tkhr.com/Bill.Heinze
News Service: http://www.ip-updates.com/

August 2, 2004 U.S. Cable and Satellite Royalty Deadlines Under 69 FR 30577

August 2:  Due date for receipt of claims to 2003 cable and satellite royalties that are sent by U.S. mail

 

August 2 at 4 p.m.: Due date and time for receipt of claims to 2003 cable and satellite royalties that are hand delivered by commercial courier

 

August 2 at 5 p.m.: Due date and time for receipt of claims to 2003 cable and satellite royalties that are hand delivered by private party

 

August 2 at 11:59 p.m.: Due date and time for receipt of claims to 2003 cable and satellite royalties that are submitted online 

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

I/P Updates:  http://billheinze.blogspot.com (RSS/Atom feeds)

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.

Linear Technology Requests Unfair Import Investigation Against Monolithic Power Involving Voltage Regulator Circuits

On July 16, 2004, Linear Technology Corporation filed a "Section 337" complaint at the U.S. International Trade Commission requesting that an unfair import investigation involving "Certain Voltage Regulator Circuits, Components Thereof, and Products Containing Same" be instituted against Monolithic Power Systems of Los Gatos, CA. The complaint has been assigned Docket No. 337-2387 for indexing in the Commission's database.

The Commission now has 30-35 days from the dates indicated above in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trail, and issue a written initial determination, usually within about 10 months. Due to the expedited nature of these proceedings, it is important to notify any interested parties as soon as possible.

Click here for more information about why your patent attorney should be monitoring Section 337 filings and click here for general information about "Section 337" unfair import investigations from the Association of Patent Law Firms.

For more information on this particular investigation, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, or visit the new and improved "I/P Updates" news service website at http://www.ip-updates.com/.

Beijing Designer Sues Nike over Copyright

According to a July 16, 2004 article from Xinhuanet, Zhu Zhiqiang, a Chinese designer widely known as Xiaoxiao on the Internet, said the stickman in a recent advertisement of Nike (top) pirated a logo of his serial Flash works (bottom)."

UPI: Fate of Beijing's Silk Alley Still Undecided

According to a July 15, 2004 article in the Washington Times, authorities in Beijing postponed a meeting set for Thursday concerning the fate of Silk Alley, a popular shopping spot with tourists and local residents searching for extremely high quality imitation designer goods at bargain prices. The official reason given for moving the narrow alley of independent vendors into a building now being erected next to the site is public safety; however enforcement of intellectual property rights is also an issue.

According to a contemporaneous article from Xinhuanet, Xiushui Market is ". . . the most famous outdoor garments marketplace in the city haunted by foreigners. Built in 1984 next to the area of foreign embassies to China, the market is actually a commercial street that receives 20,000 to 30,000 visitors a day and generates an annual turnover exceeding 100 million yuan or 12 million US dollars."

A Review of the USPTO's "EPAS" Electronic Patent Assignment System

"The system worked wonderfully and very efficiently," says J. Matthew Buchanan in "Promote the Progress," a blog focused on intellectual property and technology law issues.

TGIF: Benefits of Attending the ABA Annual Meeting in Atlanta on August 5-11

The Section of Intellectual
Property Law is offering
several CLE
programs on August 6-8 as part of the ABA Annual Meeting
in Atlanta on August
5-11. Click here for
more "Benefits of Attending the ABA Annual Meeting." I hope to se you
there. --Bill

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948 (USA)

Tel.: (770) 738-2382
Fax: (770) 951-0933
Mobile: (404) 729-0729
E-Mail: BillHeinze@tkhr.com (business)
E-Mail: BillHeinze@yahoo.com (personal)
E-Mail:
BillHeinze@tmo.blackberry.net (mobile)
Profile: http://www.tkhr.com/Bill.Heinze
News Service: http://www.ip-updates.com/

*Admitted to practice in the Commonwealth of Virginia. Not admitted in
Georgia.

INTA: Iraq Amends Trademark Law

According to this month's INTA Bulletin, "The Coalition Provisional Authority (CPA) of Iraq issued a decree amending the Trademarks and Descriptions Law 21 of 1957. Effective from April 26, 2004, the law of 1957 has been renamed 'Trademark and Geographical Indications Law.'�

ICANN Announces Inter-Registrar Transfer Policy Starting November 12, 2004

The new policy covers transfers initiated on or after November 12, 2004.

Under the new policy, if you wish to transfer your domain name from one ICANN-accredited registrar to another, you may initiate the transfer process by contacting the registrar to which you wish to transfer the name. This registrar is required to confirm your intent to transfer your domain name using Form GR. If you do not respond or return Form GR, your transfer request will not be processed. Your current registrar may also choose to confirm your intent to transfer using Form LR. You may not transfer your domain name to a new registrar within the first 60 days after initial registration, or the first 60 days after a transfer.

The Inter-Registrar Transfer Policy includes a "Registrar Transfer Dispute Resolution Policy" for resolving disputes between registrars involving alleged violations of the policy.

EU rental rights and public lending rights in Spain, France, Italy, Ireland, Luxembourg, Portugal

Under the terms of EU Directive 92/100/EEC (Articles 1 and 5), authors and other rightholders have an exclusive lending right and the power to authorize or prohibit public lending of their works or other subject matter. The European Commission has found that Spain, Italy, Ireland and Portugal are incorrectly applying this text by exempting all lending institutions from the obligation to pay rightholders. Luxembourg and France have still not transposed the lending right. On July 13, 2004 t he Commission announced that it has sent reasoned opinions to these States, for failure to implement, or for having incorrectly implemented the Directive. This sending of reasoned opinions constitutes the second step in the infringement proceedings the Commission launched in January 2004. If the six Member States concerned fail to comply with it, the matter might be brought before the European Court of Justice.

Enforcement of Orders by the U.S. International Trade Commission

The Commission is authorized under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) to issue two types of remedial orders -- exclusion orders and cease and desist orders.  Both types of orders may be issued in the same case. 

 

An exclusion order directs the U.S. Customs Service to exclude articles from entry into the United States.  If an entity has previously attempted to import an excluded article into the United States and the article was previously denied entry by the U.S. Customs Service, the Commission may further order the seizure and forfeiture of subsequent shipments of the article.  In contrast, a cease and desist order directs a respondent in the Commission investigation to cease its unfair acts, including selling infringing imported articles out of U.S. inventory. Unlike exclusion orders, cease and desist orders are enforced by the Commission, not by the Customs Service.

Proceedings to enforce these orders (including consent orders) may be formal or informal, and conducted before the Commission or before a U.S. federal district. 

 

Upon request, the Commission may also issue an "advisory opinion" upon whether proposed conduct will violate any particular order.  Once an exclusion order has been issued, advisory administrative rulings may also be obtained from Customs and appealed through the Court of International Trade.  However, the Customs Service prefers to leave the technical patent issues for resolution by the International Trade Commission.    

 

Based upon informal proceedings usually conducted by the Commission's Office of Unfair Import Investigations, or its own public hearings, the Commission may issue whatever orders it deems appropriate to to implement and ensure compliance with any of its previous orders, including seizure and forfeiture orders.  The Commission may also implement formal enforcement proceedings under it own rules, or by brining a civil action in a federal district court.  

 

The commission's enforcement and advisory proceedings are often delegated to an Administrative Law Judge acting under the independent authority of the Administrative Procedures Act (5 USC 551 et seq.), and following the procedural Rules of Practice and Procedure the Commission (19 CFR 210 et seq.).  Although the Commission's rules do not set deadlines for advisory proceeding determinations, the Commission may order the ALJ to follow a certain schedule.

 

Perhaps the most effective enforcement tool in the Commission's arsenal is the power to assess a civil penalty, payable to the U.S. Treasury, of up to the greater of $100,000 per day or twice the value of the goods for each day that a cease and desist order is violated.  The monetary penalties are imposed by the Commission, but, if necessary, can be collected by U.S. Marshals via a civil action in a federal district court. For example, the Commission successfully brought a civil action to collect $2,320,000 in the Agricultural Tractors investigation involving gray market imports that we have previously discussed for another client. 

 

Since this is all rather complicated, please feel free to pass this along to your clients and tell them that I would be happy to review the facts of their case and recommend a course of action at no charge.

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

Blog:     http://billheinze.blogspot.com

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.