Webcasts Excluded from WIPO Brodcast Treaty Negotiations

According to a November 22, 2004 report from AFX, Member States to WIPO's Rome Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, sidelined a US proposal on November 19 that would have extend protection for television and radio productions to cover webcasting on the Internet. "There had been the proposal by the United States to have webcast included in the process of updating the broadcast treaty. There was no support for it," WIPO Deputy Director General Rita Hayes was quoted as saying.

USPTO Fee Schedule Effective November 22, 2004

Until the President signs the appropriations legislation discussed below (in the next few days), the latest USPTO fee schedule (effective November 22, 2004) is available here.

For those who just can't wait for the President to return from South America, here are links to the revised (non-fillable) PDF forms:

PTO/SB/17 Fee Transmittal (for more information, click here)

PTO/SB/17i Processing Fee Under 37 CFR 17(i) Transmittal

PTO/SB/17p Petition Fee Under 37 CFR 17(f), (g) & (h) Transmittal

PTO/SB/23 Petition for Extension of Time under 37 CFR 1.136(b)

USPTO Fee Increases Effective on Presidential Signature

The American Intellectual Property Law Association reported today that Congress passed H.R. 4818 on November 20, 2004with USPTO fee increases and appropriations incorporated into an omnibus appropriations bill. The fee increases will become effective immediately upon the signing of the bill by the President, "so patent and trademark applicants and owners and registrants have a short window of time to take this into account in their decisions to file applications, pay maintenance fees, and renew trademark registrations."

AIPLA members click here for a summary of the relevant provisions.

(Don't tell my wife where you saw this. She won't like that I'm working during our vacation.)

Why a Blog?

"A lawyer's brand is based on his or her knowledge and expertise. Getting potential clients to experience your knowledge, expertise and passion first-hand [through a blog] is one of the best ways to make the case that you're a good choice to be their lawyer." --Kevin O'Keefe, author of lexBlog on blogging for lawyers.

I/P Issues in Strategic Alliances

According to Victoria A. Cundiff, finding a "good technological fit is only the starting point for successful strategic alliance negotiation. . . . This article flags some common issues and explores a variety of ways of solving them."

Interpreting the Progress Clause

According to a paper by Dotan Oliar, the intellectual property "Progress Clause" in the U.S, Constitution originated from eight proposals made by Charles Pinckney and James Madison that were derived from American states' enactments. It was intended to serve as a limitation on Congress' power to grant intellectual property rights. However, the Supreme Court has construed and enforced these limitations on Congress' intellectual property power using a non-deferential approach.

In his view, the social, cultural and economic costs of past statutes that expand the boundaries of intellectual property are substantial, while the social benefits are often very small. Courts should therefore take the social effects of intellectual property statutes into account when interpreting these statutes. He goes on to suggest an array of interpretive possibilities for giving the Progress Clause a meaning that dovetails with his view of the Clause's text, history, and precedent.

Best Practices in Electronic Discovery Production

According to a November 3, 2004 article by Thomas M. Freeman, several steps outlined by Judge Shira A. Scheindlin of the U.S. District Court for the Southern District of New York in Zubulake v. UBS Warburg LLC, 2004 WL 1620866, at *1 (S.D.N.Y, July 20, 2004) are likely to become the standard for "best practices" in electronic discovery.

In Judge Scheindlin's view, it is not sufficient for counsel to simply notify employees that there is a litigation hold and expect that the party will then retain and produce all relevant information. Counsel must take reasonable affirmative steps to accomplish the following:

1. "identify sources of discoverable information";
2. "put in place a litigation hold and make that known to all relevant employees by communicating with them directly";
3. reiterate the litigation hold instructions "regularly" and "monitor compliance so that all sources of discoverable information are identified and retained on a continuing basis"; and
4. "call for employees to produce copies of relevant electronic evidence, and . . . arrange for the segregation and safeguarding of any archival media (e.g., back-up tapes) that the [client] has a duty to preserve."

Eraser Data Removal Freeware

Deleting files doesn't actually destroy all the data--it just makes it harder to find. To make sure those files are gone, you need to overwrite them with a tool like Eraser.

The overwriting methods implemented by this free software are based on Peter Gutmann's paper entitled "Secure Deletion of Data from Magnetic and Solid-State Memory," the National Industrial Security Program Operating Manual of the US Department of Defense, and a fast cryptographic random number generator. You can also define your own overwriting methods.

Click here for awards and reviews.

Lost Profits Patent Claim Drafting

According to an article by David Beckwith discussing Juicy Whip, Inc. v. Orange Bang, Inc., Case No. 03-1609 (Fed. Cir. Sept. 3, 2004), patent practitioners should "Always consider whether a lost profit claim can include the sale of non-patentable items used with any patented devices. In prosecuting patents on devices that utilize consumables, consider including claims which combine the device together with the consumables."

USPTO Notices of Abandonment for Dummies

Click here for official instructions on responding to a Notice of Abandonment from the USPTO.

Google Scholar for Prior Art Searching

According to their website, "Google Scholar enables you to search specifically for scholarly literature, including peer-reviewed papers, theses, books, preprints, abstracts and technical reports from all broad areas of research. Use Google Scholar to find articles from a wide variety of academic publishers, professional societies, preprint repositories and universities, as well as scholarly articles available across the web. Google Scholar also automatically analyzes and extracts citations and presents them as separate results, even if the documents they refer to are not online. This means your search results may include citations of older works and seminal articles that appear only in books or other offline publications."

Click here for more about Google Scholar from the New York Times.

Coalition Urges No USPTO Fee Diversion or No Increase

A a November 17, 2004 article at GovExec.com, is reporting that "A broad coalition of intellectual property and business associations made a last-ditch attempt Wednesday to persuade appropriations negotiators to adopt language from a House bill concerning user fees for the Patent and Trademark Office (PTO). If the lawmakers cannot agree to the language that would allow the PTO to keep all of the fees generated by its work, the coalition said in a letter to the leaders of the House Appropriations Committee, they should drop language that would increase user fees for patent applications."

The IPO Daily News also reported that "It is unclear how Congress will deal with the patent fee issue during its lame duck session that began yesterday."

The Smell of I/P Activism?

The music activists at Downhill Battle have launched "two new websites in response to the attempts by lobbying groups for Hollywood and the software industry to force misleading and propagandistic curriculums about filesharing and online rights into public schools. The first page is called Kids Smell Bullshit (kidssmellbullshit.com) and, as you may have guessed, this one's for the kids. Complete with a letter / photo contest (win an ipod mini!), a wiki to transform the bogus curricula, and a ton of crazy crap that kids love."

"The second is a slightly more serious page called the Collaborative Copyright and Technology Law Curriculum (copyrightcurriculum.com). This one's for the grownups in the house who want to do some serious ass-whooping. It's a wiki (a collaborative editing/writing tool) for building a balanced, accurate copyright curriculum for teachers that want to address these issues in their classroom."

Chinese Counterfeiters Building "Great Wall of Patents"

According to an article in the November 15, 2004 International Herald Tribune, Chinese counterfeiters are now copying or slightly modifying foreign patents before filing their own utility model or design patent applications. Those applications are often granted quickly and easily. Chinese industry even has a name for the practice, building a "Great Wall of Patents."

Is Shading Still Necessary on Design Patents?

According to a transcript of the USPTO's on-line inventor chat held on Tuesday, October 19, 2004, "while surface shading is no longer required by 37 CFR 1.152, applicants are encouraged to include surface shading on the claimed design shown in the drawing so as to clearly understand its shape and contour. Multiple embodiments of a single design concept may be included in a single design patent application so long as the shape and appearance of the embodiments are not considered to be patentably distinct from each other."

USPTO Patent Drawings for Dummies

Click here for the USPTO's "Guide for the Preparation of Patent Drawings."

EU Software Directive May Be Derailed Again

According to a Novemebre 17, 2004 report by CNET News.com, the Polish government said Tuesday that it could not support the proposed Patentability of Computer-Implemented Inventions agreed on by the EU Council earlier this year, and that a recent change in voting rules has now given Poland enough influence to tip the balance.

Mark MacGann, director general of the European IT and communications industry association, reportedly told the IDG News Service that although Belgium and Poland had abstained on an earlier vote in May , "we have been extremely encouraged by meetings we have had with officials in Belgium and are cautiously optimistic that they may change their vote to yes." Should Belgium decide to approve the Council's version of the directive, Poland's apparant reversal would not keep the legislation from moving to a second reading in the European Parliament, MacGann was also reported as saying.

EPO Recognizes Same-Sex Marriage

On November 17, 2004, the European Patent Organisation announced that it will treat same-sex marriages that have been validly contracted in one of the member states in the same way as it does heterosexual marriages.

Getting to Yes with a Reluctant Client

Elaine McArdle offers this advice on helping reluctant clients see the benefits of settlement in an article from Lawyers Weekly USA reprinted by LexisOne:

• Start Early
• Give It Time
• Present the risks
• Let them know it's their decision
• Engender trust
• Present settlement as a victory
• Consider getting a second opinion

USPTO Updates Patent Power of Attorney Form

The USPTO recently updated its "Power of Attorney and Correspondence Address Indication Form" SB81 in fillable PDF format.

MPAA Sues and Gives Away Anti-File-Sharing Software

As part of its "news filter" aggregation covering yesterday's 200 copyright infringement suits filed by the Motion Picture Association of America against movie downloaders, the Washington Post is reorting that the "MPAA is offering a free software tool that people can use to identify and delete all file-sharing programs and illegally copied movie and music files on their computers. The software will not report evidence of illegal content back to the studios, the association said. The tool will be made available at www.respectcopyrights.org, a site run by the MPAA."

Publishing Against "Patent Terrorism"

Referring to Commerce One's "web services" patent portfolio auction scheduled for December 6, 2004 at the federal bankruptcy court in San Francisco, an intellectual property attorney in Palo Alto, California reportedly told the New York Times that "The big issue is what people call 'patent terrorism.'" Robert Glushko, one of the inventors, is also quoted in the article as saying "We filed these patents to describe a standard method for using documents to connect services into business networks. At Commerce One, our business model depended on an open infrastructure for doing that. It is completely antithetical to our intent to use the patents to prevent it."

Well then Mr. Glushko, a simple publication would have sufficed quite nicely.

TTABlog Urges Caution on Madrid Trademark Oppositions

According to John Welch at The TTABlog, "TTAB practitioners should note that the rules for opposing Section 66(a) differ in some important respects from those applicable to "non-Madrid" oppositions. Those differences are discussed in a paper that [he] co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes", published early this year in Intellectual Property Today. For example, once a Notice of Opposition to a Section 66(a) application has been filed, the Notice may not be amended to add grounds for opposition or new goods after the opposition period ends."

Other differences from typical, "non-Madrid" oppositions include electronic filing of notice of opposition and extension requests, and fees due on filing.

T&T on Effective Patent Mining

This article from Thomson Scientific presents their tools for "patent data mining techniques that can answer key questions involved in developing an effective patent portfolio management strategy."

Development in the Information Age: Issues in the Regulation of Intellectual Property Rights

This paper from the UNCTAD-ICTSD Project on IPRs and Sustainable Development highlights the particular importance for developing countries of information communication technologies (ICT) as a tool for economic growth. ICT pose challenges to developing countries, but at the same time offer opportunities. The main challenges arise from international rules on copyright and database protection, which are increasingly restricting free access to protected works that developing countries need in the context of public policies such as education and research. On top of low Internet use and penetration prevailing in most developing countries, these legal tools may represent additional access barriers. In order to mitigate such effects, developing countries should seek to balance effective protection of intellectual property rights (IPRs) against robust limitations of exclusive rights to encourage competition and socially beneficial uses of ICT. In this respect, the international IPRs system provides important flexibilities in the implementation of IPRs obligations. Making use of these flexibilities is a way for developing countries to reap the benefits offered to them by ICT, in particular with respect to the promotion of the local music industry and on-line based education and research. To which extent ICT may actually be used as an effective tool for economic growth largely depends on the domestic regulatory framework, taking account of the particular situation in each country.

European View of Software Patentability in the U.S.

According to a November 9, 2004 article from the European IPR HelpDesk, "It is much easier to gain patent protection for computer software in the United States than it appears to be the case in the European Union. Although the European Commission has proposed a new directive concerning the patentability of computer software, this proposal only deals with computer implemented inventions. The effect would be that computer software will only be patentable subject matter provided it has a technical effect or, under a different interpretation, is of a technical character. In the USA, the more fundamental approach to patenting - the general "everything under the sun" - enables courts to widely grant protection without any restriction even to the technical character of the subject matter at hand. The gravest consequence lies in a possible overprotection and thus monopolisation of informational items since the claim may well encompass not only the series of information embedded but also the concept which it carries out."

Inter Partes Reexam Requests Remain Steady

According to a report in today's IPO Daily Newsâ„¢, twenty-three requests for inter partes U.S. patent reexamination of patents were filed in the fiscal year ending September 30, 2004, just slightly up from the 21 during previous year.

Plagiarizing Malcolm Gladwell

In a November 15 article for The New Yorker, Malcolm Gladwell describes the plagiarism of his own work, and how fighting piracy has become an obsession with Hollywood and the recording industry. "In the worlds of academia and publishing, plagiarism has gone from being bad literary manners to something much closer to a crime," he writes. "We have somehow decided that copying is never acceptable and the ethics of plagiarism have turned into the narcissism of small differences: because journalism cannot own up to its heavily derivative nature, it must enforce originality on the level of the sentence."

Against Intellectual Property

Against Intellectual Property is a page critical of copyrights, trademarks, and intellectual property where, as Proudhon said long ago "property is theft" and current intellectual property fights on the Internet bolster his claim. Intellectual property is for those with power, who can use the force of the state to enforce their claims. But intellectual property simply gets in the way of communication and the sharing of ideas, be it in the arts or in biology.

Public Domain a Wasteland of Works?

According to Tom Giovanetti, President of the Institute for Policy Innovation, "The free culture movement asserts that strong intellectual property protection inhibits incremental innovation, and that ownership tempts owners to horde intellectual property and to keep it away from the public. But these assertions are obviously false. It is precisely ownership of intellectual property that makes it widely available."

"The much-vaunted public domain is better viewed as a vast wasteland of works unknown and practically unavailable, because no one has an incentive to make them available. Policymakers should [therefore] resist the call of the free culture movement to give favorable treatment to free culture products under the assumption they are somehow economically or morally superior. Let free culture proponents try to compete. But in the meantime, it would be foolish to weaken or undermine the property-rights model of innovation - the model that continues delivering incredible benefits to society."

Britons on British Inventions

"It's true to say that throughout the 18th and 19th centuries Britain was the most inventive nation," Lindsay Sharp, director of the U.K National Museum of Science & Industry, told The Times as is sets out to find Britain's greatest invention. "Or at least the best at getting inventions to work on a large scale. After that, unfortunately, things started to unravel." At which point, it seems, Britain lost the plot. "The First World War was a disaster, and not just because we lost a generation. The European economy was shot to pieces. The Americans steamed ahead."

Trademark Use Requirements in China

According to a November 14, 2004 article in Managing Intellectual Property, a recent decision of the Chinese Trademark Office suggests that they are taking a stricter approach to the evidence required for showing actual use in China:

On October 25, CTMO ruled that Tetra Pak's A+ and device mark should be cancelled: "Tetra Pak China Limited submitted some materials, such as invoices and newspapers, with regards to advertising and promotion of its 'A+ & Device' mark. Upon examination, all of these advertising invoices and newspapers are not able verify its actual use of the trade mark 'A+ & Device' under Reg No 1486706 in respect of the goods designated. Thus, the evidence submitted is invalid."

European Collecting Societies Update

According to an artcle from the IPR HelpDesk, "collecting societies" are voluntary associations of authors, interpreters and other right-holders for the purpose of protecting their conceptual and financial interests in an intellectual property or in their services at home and abroad.

European institutions have initiated the first steps in adopting a community legal framework for collecting societies. The European Parliament presented a report in December 2003 and the European Commission published a communication in April 2004.

Korean Patent Donation System Proposed

According to a November 14, 200 article in The Korea Times, a report by the Federation of Korean Industries (FKI) proposes a patent donation system in which large companies receive a certain amount of tax breaks in return for donation of patents to nonprofit organizations.

As many as 30.6 percent of Korea's patents are "idly kept in a corner." 50.7 percent of companies surveyed in the report cited new trends for technology and products as why they have not employed idle patents. Lack of marketability received 30.4 percent, while 13 percent said business restructuring has put some patents in storage. Only 9.7 percent of unused patents were transferred to other companies, while 59.7 percent of them were assessed and disposed, the survey said.

Intellectual Ventures in the Currency of Inventions

While most venture capital firms invest in the business of technology (including start-ups that design and manufacture products), Intellectual Ventures says that it invests in pure invention: creating, funding and commercializing innovative new ideas. According to a November 22, 2004 article from Newsweek, Nathan Myhrvold, the multimillionaire former chief technologist at Microsoft, and his partner, former Microsoft chief software architect Edward Jung, "have created the quintessential company for the 21st century. It doesn't actually make anything; it has no factories, machine shops or marketing teams. Only patent attorneys populate the quiet hallways. The five-year-old firm's plan is to create or buy new ideas, accumulate patents - exclusive rights to use the inventions - and rent those ideas to companies that need them to do the gritty work of producing real products."

Referring to Intellectual Ventures' portfolio of patents as his own, Myhrvold reportedly told Newsweek, "If giant corporations are making billions of dollars off my ideas, I want something for it, and I don't think there is anything wrong with that."

Georgetown University DNA/RNA Database

According to the website, this database enables studies of DNA-based patents issued by the United States Patent and Trademark Office (USPTO), making full-text patents available at no cost, and defining a searchable set of patents of interest to those studying genomics, genetics, biotechnology, and other fields.

Patents included in the DPD were identified by searching the claims of US patents for terms specific to nucleic acids. The claims of patents in relevant categories of the U.S. classification system are searched for terms specific to nucleic acids, genes, genetics, and genomics, such as "DNA," "RNA," "nucleotide," "polynucleotide," etc. The current algorithm was developed by the Kennedy Institute of Ethics, modified from an initial algorithm devised by USPTO senior examiner James Martinell. A newer algorithm based on the original, but used with the Delpion search engine is available here: [SearchAlgorithm-Delphion-20030512]. This algorithm is currently being validated by various methods and will be used to update the database.

A subset of the patents was read and coded by hand, according to a coding sheet [Patcode.htm]. Coding sheets are small text files that contain unique codes to assist the staff in further classifying the DNA patents in this database. These patents were selected from an initial collection that the USPTO gave to the congressional Office of Technology Assessment (OTA) for a study of DNA patenting. When OTA ceased operations in 1995, those patents were transferred to the Kennedy Institute of Ethics. In this subset of 1068 patents, each patent was categorized according to biological classification, function, or application (e.g. human origin, full-length gene, transgenic animal, promoter sequence, or vaccine). That subset was also coded according to the affiliations of the inventors and assignees, country of origin of inventors and assignee institutions, and whether the United States Government funded the underlying research. The patents matching criteria on the coding sheet can be searched in the DPD using the unique 7-letter codes to find patents matching those criteria.

Basic IP Due Diligence Steps

According to Patent Issues Relating to Acquisitions: Conducting Intellectual Property Due Diligence, while every IP due diligence must be tailored to meet the particular business situation at hand, certain basic steps should at least be considered:

• Identify Products and Services
• Identify Corresponding Intellectual Property
• Prioritize Analysis (if necessary)
• Analyze State of Relevant Industry
• Determine Scope of Protection Provided by IP Assets
• Verify "Exploitability" of IP Assets
• Conduct Non-Infringement Investigation
• Review Warranties and Indemnities
• Review Any Other Considerations
• Establish a Value

TGIF for the New Meaning of "Brand"

In "The Persuaders," FRONTLINE explores how the cultures of marketing and advertising have come to influence not only what Americans buy, but also how they view themselves and the world around them. This 90-minute television documentary (viewable online starting November 12 at 5:00 pm) draws on a range of experts and observers of the advertising/marketing world, to examine how, in the words of one on-camera commentator, "the principal of democracy yields to the practice of demography," as highly customized messages are delivered to a smaller segment of the market.

The show's website also includes excerpts from extended interviews on "The New Meaning of Brand" with Kevin Roberts, CEO, Saatchi & Saatchi Worldwide; Douglas Atkin, chief strategy officer for Merkley+Partners; Bob Garfield, columnist for Advertising Age; and Naomi Klein, author of No Logo.

Thank Goodness It's Friday,

--Bill

POPA Proposes IFW Improvements

According to the November 2004 Issue os the Patent Office Professional Association, USPTO Deputy Director Steve Pinkos welcomed POPA representatives on October 21 to discuss the following reccomendations for the Image File Wrapper system:

• Improve Contractor Scanning Services: Examiners' greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
• Cached Hot-Docket Images and a Hard-Drive Version of the "eDAN" electronic Desktop Application Navigator: The USPTO could avoid significant losses of examining time if it invested in programming eDAN to enable examiners to continue working from their hard drives when the main IFW system is not functioning properly.
• Improve Handling of Non-Patent Literature (NPL) and Foreign Patents: The USPTO can improve examiner access to NPL and foreign patents, thereby improving production and quality, by: 1) identifying each NPL by first author; 2) entering each NPL into IFW in the order that the NPL is entered on the applicant's NPL list (USPTO Form 1449), which is part of the application record; 3) identifying each foreign patent by its country/serial number; and 4) increasing the eDAN annotation field to allow more notes.
• Allow Display of Multiple Documents in a Readable Size: This means providing each examiner with a second desktop monitor.
• Improve IFW Printing Features: Relatively simple programming solutions would reduce the number of mouse clicks and functions now necessary to print each document.
• Program eDAN to Refresh all Dockets as Necessary: Currently examiners manually refresh each docket, which wastes time when the computer can be programmed to do this work.
• Provide File Storage Furniture: The USPTO offered to provide examiners with printed "working folders," which contain a bare-bones number of documents that examiners can add to. But many examiners have not been supplied any file furniture in which to store them.
• Improve Optical Character Recognition (OCR) or Supply a Searchable Text File: These would allow examiners to readily search the specifications and other documents for relevant terms, and "cut and paste" relevant information from applications into office actions. In addition, examiners overwhelmingly express a desire to be able to search text by using keywords, something not readily available with image files.
• Better Document Tracking: By adding a data field to show the date that the contractors actually scanned and entered a document, eDAN would enable the USPTO to actually measure the contractor's performance. Now eDAN only tracks the filing date of the paper document.
• Establish a Pilot Program for Voice-Activated Software: With eDAN's capability to support voice-activated software the agency can now offer that ability to other examiners who prefer it to test its benefits with eDAN and OACS.
  

Courts on the Brink of a Fiscal Abyss

According to a November 12, 2004 article in The National Law Journal, appeals filed in the federal courts increased 6 percent, to 60,847 last year. In the district courts, civil filings dropped 8 percent, largely because of a reduction in asbestos-related cases, but criminal filings rose 5 percent and immigration cases increased 22 percent. Bankruptcy filings increased 7 percent to a record 1.6 million. Aside from these generally anticipated increases in filings, the courts have also had to deal with an influx of immigration cases and sentencing guidleine reviews under the Supreme Court's decision in Blakely v. Washington, 124 S. Ct. 2531 (2004).

Until about four years ago, the judiciary was receiving annual budget increases from Congress of about 10 percent. But in the last two budget years, the judiciary received increases of 4.8 percent and 4.7 percent. "We need an increase of about 6.1 percent each year in order to simply maintain current services. That will not cover increases in our workload, but it will cover a comparable amount of workload to that of the prior year,"said Chief Judge Carolyn Dineen King of the 5th U.S. Circuit Court of Appeals, who chairs the executive committee of the Judicial Conference of the United States.

EU Adopts Strategy for Enforcement of IPRs in Third Countries

On November 10, 2004 the European Commission announced that it has adopted the following strategy for the enforcement of intellectual property rights in third countries.

1. Identifying priority countries: EU action will focus on the most problematic countries in terms of IPR violations. These countries will be identified according to a regular survey to be conducted by the Commission among all stakeholders.
2. Awareness raising: promote initiatives to raise public awareness about the impact of counterfeiting (loss of foreign investment and technology transfer, risks to health, link with organised crime, etc.) and make available to the public and to the authorities of third countries concerned a ?Guidebook on Enforcement of Intellectual Property Rights?.
3. Political dialogue, incentives and technical co-operation: ensuring that technical assistance provided to third countries focuses on IPR enforcement, especially in priority countries; exchanging ideas and information with other key providers of technical co-operation, like the World Intellectual Property Organisation (WIPO), the US or Japan, with the aim of avoiding duplication of efforts and sharing of best-practices.
4. IPR mechanisms in multilateral (including TRIPs), bi-regional and bilateral agreements: raising enforcement concerns in the framework of these agreements more systematically; consulting trading partners with the aim of launching an initiative in the WTO TRIPs Council, sounding the alert on the growing dimension of the problem, identifying the causes and proposing solutions and strengthening IPR enforcement clauses in bilateral agreements.
5. Dispute settlement - sanctions: recall the possibility that right-holders have to make use of the Trade Barriers Regulation or of bilateral agreements, in cases of evidence of violations of TRIPs; in addition to the WTO dispute settlement, recall the possibility to use dispute settlement mechanisms included in bilateral agreements in case of non-compliance with the required standards of IPR protection.
6. Creation of public-private partnerships: supporting/participating in local IP networks established in relevant third countries; using mechanisms already put in place by Commission services (IPR Help Desk and Innovation Relay Centres) to exchange information with right-holders and associations; build on the co-operation with companies and associations that are very active in the fight against piracy/counterfeiting.

EU Trade Commissioner Pascal Lamy said "Piracy and counterfeiting continue to grow every year and have become industries, increasingly run by criminal organisations. This is a serious problem for us but also for third countries whose companies are also suffering the consequences of violation of their own intellectual property rights. Some of these fakes, like pharmaceuticals and foodstuffs constitute an outright danger to the public, while others undermine the survival of EU?s most innovative sectors, confronted with the misappropriation of their creations. Adopting new legislation on intellectual property is one thing. But devising the right tools to enforce it is another. This is now our priority."

Eight Ways to Reduce Litigation Fees

According to an article by Brenda M. Cotter in the November 11, 2004 issue of Law Firm Partnership, the keys to controlling costs in major litigation are as follows:

1. Be clear on your goals and the possible outcomes of the litigation
2. Obtain a written budget
3. Perform as much work as possible in-house
4. Use technology
5. Ask to be informed of every step
6. Understand how the case is staffed
7. Regularly communicate about the status of the case
8. Maintain good relations

Telephone Numbers as (Intellectual) Property?

On October 28, 2004, a number of companies announced the formation of a new organization, the Country Code 1 ENUM Limited Liability Company (CC1 ENUM LLC), to build the public infrastructure that will promote the development of ENUM technology within the countries of the North American Numbering Plan (NANP).

According to the International Telecommunications Union, "ENUM is a protocol that is the result of work of the Internet Engineering Task Force's (IETF's) Telephone Number Mapping working group. The charter of this working group was to define a Domain Name System (DNS)-based architecture and protocols for mapping a telephone number to a Uniform Resource Identifier (URI) which can be used to contact a resource associated with that number. The protocol itself is defined in the standards track document "E.164 number and DNS" (RFC 2916) that provides facilities to resolve E.164 telephone numbers into other resources or services on the Internet. ITU-T Recommendation E.164 is the international public telecommunication telephony numbering plan. The syntax of Uniform Resource Identifiers (URIs) is defined in RFC 2396 (1998). ENUM makes extensive use of Naming Authority Pointer records defined in RFC 2915 in order to identify available ways or services for contacting a specific node identified through the E.164 number."

Have You Locked Your Domain Name Registrations?

According to Domain Food, "Starting November 12th, .COM .NET and .CC can now be instantly transfered out of your account, by any person without warning, if you do not have them registrar-locked. TLDs with EPP keys like .ORG .INFO and .US are not affected and therefore safe."

The reason? An ICANN policy change "which was initially meant to force badly behaving registrars to allow transfers out of their systems for domain name owners who were being forced to stay and pay high renewal fees, etc. However the system now has the worse effect that anyone can transfer the names out a bit too easily."

USPTO Halfway to Alexandria and Spring 2005

As of the beginning of November, there are more USPTO employees - over 4,000 - working in Alexandria than in Crystal City. Among those now working at the new Alexandria headquarters are the trademark examining operation and the the patent examining operation's Technology Center 2100 - Computer Architecture, Software and Information Security. On average over 300 employees a week move into the new facility. When the move is completed in the spring of 2005 over 7,000 USPTO employees and contractors will be housed in the five buildings of the Alexandria campus.

Free Telephone Roundtable Today on Opinions of Counsel

Date: November 11, 2004
Time: 12:30 PM Eastern
Duration: 1 Hour
Phone in #: Please RSVP to info@aplf.org; No charge to participate
Topics:

• the waiver issue/scope of waiver when an attorney opinion is relied upon to negate a charge of willfulness; and
• whether litigation counsel can/should serve as "opinion" counsel.
  
  Click here for the slides.
  
  

Presenters:

Richard Carden [Carden@mbhb.com] - McDonnell Boehnen Hulbert & Berghoff LLP, Chicago

Bradford Lyerla [blyerla@marshallip.com] - Marshall Gerstein & Borun, Chicago

Andrew Crain [andrew.crain@tkhr.com]- Thomas, Kayden, Horstemeyer & Risely LLP, Atlanta

PCT Newsletter Highlights for November 2004

The November 2004 issue of the PCT Newsletter is now available here.

This issue contains a table showing the PCT Contracting States for which a regional patent can be obtained, broken down as follows:

• States for which only a regional patent can be obtained;
• States for which a regional patent can be obtained in addition to, or instead of, a national patent;
• States which are not included in the EP designation, but to which a European patent can be extended.

This table, which will hopefully be a convenient resource for applicants to find out which States are designated for a regional patent, will be published on the PCT website under "PCT legal texts" and updated when necessary.

USPTO Publishes "Principles of [Chemical] Restriction Practice

As part of its action plan to improve the quality and consistency of restriction practices, the USPTO's Technology Center 1600 (Biotechnology and Organic Chemistry) has published Examiner training materials entitled "Principles in Restriction Practice" and dated August 2004. The materials are part of the Center's ?5-point? plan to (1) publish examples of claim sets, (2) emphasize rejoinder practice, (3) deliver and publish updated examiner training on restriction practice, (4) enhance the quality review of restriction requirements, and (5) assess the progress of the action plan.

The plan is being implemented at the same time that the Agency is conducting a study of long-term restriction practice reforms. However, TC 1600 will begin implementation of this action plan immediately and contemplates that it will be fully implemented in six to nine months from August 2004.

UK Aims to Avoid Width of Patentability in the US

According to the UK's answers to FAQs on the Directive on the Patentability of Computer-Implemented Inventions available here:

Won?t Europe end up with the system that now exists in the United States?

The Government believes that we should aim to avoid the width of patentability now allowed in the United States: this is why it pressed the European Commission for a Directive following its consultation.

An information booklet (pdf file 269Kb) on the proposed Directive is also available.

PCT Application Filing Trend

Source: WIPO September 2004

JPO Publishes Case Studies of the Procedures under the New Employee Invention System

Japanese law provides the right to demand payment of "adequate remuneration" to the employees who have actually created the invention, in return for allowing the employers to succeed to the right to obtain a patent or the right to a patent granted or the establishment of an exclusive license for the employers. This right is granted in order to encourage inventions by ensuring that employees receive remuneration for the assigning of patent rights.

According to the introduction, "These case studies [in English] have been compiled by the Japanese Patent Office in a form of questions and answers referring to the procedural cases collected from industrial/labor world or universities and hearing from the opinions of the intellectuals of the Patent System Subcommittee. They were compiled by the Patent Office to clarify the legal purport of the new employee invention system and offer the cases to which parties concerned can refer in taking the procedure so that the procedure according to the new system can be smoothly taken."

Customer Number Associations Information

from the USPTO's FAQ:

How do I view or change the correspondence address and list of individuals associated with my customer number?

From the Private PAIR search screen, select your customer number from the drop-down list below View Customer Number Details, and click the Search button.

To submit a paper change request, click the "Request for Customer Number Data Change" link below the Customer Number Details screen to display and print PTO/SB/124A in PDF format. Use this paper form to mail or fax changes in the correspondence address or list of individuals associated with a Customer Number.

Submit the completed form via fax to (703) 308-2840 or mail to:

USPTO Mail Stop EBC
P.O. Box 1450
Alexandria, VA 22313

To submit an online change request, click the "Request Data Changes" button below the Customer Number Details screen. This returns the Request Data Changes for Customer Number online form for changes to Customer Number Address, addition of individuals, or deletion of individuals from the Customer Number.

Want to learn more about Public PAIR? Check out the USPTO's Public PAIR Computer Based Training available for download.

Fed. Cir. Strictly Construes Govt. Contract Invention Disclosure Requirements

In Campbell Plastics v. Brownlee (Fed. Cir., November 10, 2004), Campbell Plastics had entered into a contract with the Army to develop certain components of an aircrew protective mask. Campbell Plastics failed to comply with the disclosure provisions of the contract which allowed the government to obtain title to the invention.

Section I of the contract incorporated numerous clauses from the Federal Acquisition Regulations ("FARs"), including a "Patent Rights-Retention by the Contractor" clause from 48 C.F.R. § 52.227-11 (1991) ("FAR 52.227-11") that requires a contractor to disclose any subject invention developed pursuant to a government contract and sets forth certain substantive requirements for doing so. The clause further provides that the government may obtain title if the contractor fails to disclose the invention within two months from the date upon which the inventor discloses it in writing to contractor personnel responsible for patent matters.

Section I also incorporated from 48 C.F.R. § 252.227-7039 (1991) ("FAR 252.227-7039") a "Patents-Reporting of Subject Inventions" clause which requires the contractor to disclose subject inventions in interim reports furnished every twelve months and final reports furnished within three months after completion of the contracted work. Subsection H.11 of the contract, titled "Patent Rights Reports," requires the contractor to submit all "interim and final invention reports required by patent clause in Section I" on a "DD Form 882, Report of Inventions and Subcontracts."

Campbell Plastics contended that it continually disclosed all features of the invention throughout the contractual period. They also argued that the government's possession of an enabling disclosure of the subject invention, and its review of the patent application for secrecy determination purposes, satisfied Campbell Plastics's obligations under the contract. However, the Federal Circuit concluded that whatever information the government had regarding the invention, it did not get it from Campbell Plastics in the form of a proper invention disclosure:

While it is at least debatable whether the various progress reports and drawings Campbell Plastics submitted to the Army together convey a clear understanding of the nature, purpose and operation of the invention as well as the invention's physical, chemical, biological or electrical characteristics, we think the contract requirement of a single, easily identified form on which to disclose inventions is sound and needs to be strictly enforced. If we were to find Campbell Plastics's style of disclosure sufficient, methods of disclosure could vary widely from case to case. The government never would be sure of which piece of paper, or which oral statement, might be part of an overall invention disclosure. But we do not so find. The contract instead demands a single form for disclosure, which enables the contracting officials to direct the inventive aspects of the contract performance to the correct personnel in the agency for a determination of whether the government has an interest in the disclosed invention, and for the government to determine how best to protect its interest. Sound policy is promoted by the rule of strict compliance with the method of disclosure demanded by the contract.

ECJ Decides Scope of Database Directive

According to a (non-binding) press release by the European Court of Justice on November 9, 2004, "Neither the obtaining, verification nor presentation of the contents of a football fixture list or a schedule of horse races constitute substantial investment giving rise to protection against the use of the data by third parties. The definition of ?substantial investment? which gives rise to protection for the maker of a database against unauthorised acts of copying and distribution to the public covers only the work involved in seeking, collecting, verifying and presenting existing materials and not the resources used to create the materials which make up the database." The announcement follows four judgments concerning the Directive on the legal protection of sporting databases: C-338/02, C-444/02, C-46/02, C-203/02.

Secondment for Client Development

According to a November 2004 article in Corporate Counsel, "Many large firms routinely loan associates, and sometimes partners, to their clients. The practice -- dubbed "secondment," after a British military term for temporarily transferring someone from one regiment to another -- has been going on at many large firms for years. But it's attracted little public attention since firms don't publicize the practice."

USPTO Ends Postal Emergency as of November 3

The US Postal Service has resumed postal services in the affected areas of Florida, Alabama, Mississippi, Louisiana, Georgia, Puerto Rico, U.S. Virgin Islands, West Virginia, Ohio, Pennsylvania, Maryland, and Virginia. Therefore, as of November 3, 2004, the USPTO has terminated the designation of this interruption in the service of the USPS as a postal service interruption and an emergency within the meaning of 35 U.S.C. § 21(a) and 37 CFR 1.10(i).

WIPO Concludes TK/TCE Meeting with Request for Comments

Member states of the World Intellectual Property Organization (WIPO) intensified their work on the protection of traditional knowledge (TK) and traditional cultural expressions (TCEs)/folklore last week at a meeting of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). The meeting, which took place in Geneva from November 1 to 5, 2004, reviewed, for the first time, a set of draft provisions outlining policy objectives and core principles for the protection of TK and TCEs against misappropriation and misuse. The meeting was attended by delegates for 104 member states, 20 intergovernmental organizations and 45 non-governmental organizations.

According to WIPO's press release, the Committee agreed on a process to move forward with its substantive work by inviting written comments on the existing draft proposals to supplement the already extensive commentary and proposed amendments made during the Committee's meeting. The deadline for submission of these comments is 25 February 2005. The updated proposals will then be circulated for further consultation in advance of the next session of the IGC in June 2005. Texts of the initial proposals are available as Annex I of documents WIPO/GRTKF/IC/7/3 and WIPO/GRTKF/IC/7/5, available at http://www.wipo.int/tk/en/.

WIPO's current work on TK "seeks to respect the manner in which TK, TCEs and associated genetic resources are considered an indivisible whole within the traditional or customary context, while developing specific legal tools that reflect the broader legal environment and policy context for each element of this traditional heritage, and protect this important community heritage from misuse and misappropriation. This program also entails close consultations with and respect for the mandate and activities of other United Nations agencies and international processes."

Click here for WIPO's free "Booklet on Intellectual Property and Traditional Cultural Expressions/Folklore."

The Role of Registers and Databases in the Protection of Traditional Knowledge

This report from the United Nations University Institute of Advanced Studies provides an analysis of a number of case studies of existing databases and registers that have been developed to document traditional knowledge, identifying their effectiveness, possibilities and limitations for securing the protection of traditional knowledge.

More on Alternative Billing

Alternative Resources for Alternative Billing

"Wild Card" Patent Extensions to Spur Antibiotic Development?

Tax credits and patent extensions are among the financial lures that the government is considering as ways to get large drug companies to develop desperately-needed new antibiotics. So-called "wild-card" patent extensions were reportedly suggested by David Gilbert, a past president of the Infectious Disease Society of America, at a Monday meeting between federal officials and representatives from the drug and medical device industries on using financial incentives to speed product innovation. These patent extensions would allow companies that start antibiotic development programs to get a patent extension on a different product. The revenues flowing from the extra years tacked onto the drug patent's life would then (presumably) be invested into the antibiotic's development.

Examination Guidelines for Trademarks in Japan

The Examination Guidelines for Trademarks in Japan are available in English here.

European Companies Squandering their I/P?

An October 2004 survey of 300 companies across Europe, commissioned by UK law firm DLA, concluded that European businesses are "squandering the competitive advantage that IP can give and are potentially losing out on £billions of revenue."

They found that less than 40 per cent know the value of their IP, only half (52 per cent) have a documented IP strategy, and only 57 per cent have a formal system in place for identifying infringements of their IP. The survey also found that only 53 per cent have board-level representation for matters relating to brand, intellectual property or research and development, only 38 per cent of businesses questioned have ever done a valuation of their IP, with only 19 per cent conducting one in the last year.

Commenting on the findings, Jeremy Dickerson, Head of Intellectual Property at DLA, said, "The old adage 'use it or lose it 'could not be truer when it comes to IP management: by not using it, organisations risk losing their competitive advantage." Ian Harvey, Chairman of the UK Government's Intellectual Property Advisory Committee (IPAC), who has given his support to the survey reportedly commented, "This IP survey by DLA shows that many of our larger European companies do not take the management of their IP seriously, despite it being a huge source of competitive advantage for them. In my experience, companies that do it well are usually the global leaders in their fields. However, this will not be achieved unless IP becomes part of corporate strategy and there is board commitment. I urge business leaders to take the findings of this survey seriously and consider it a matter of survival ? they must realise that intellectual property is a competitive advantage to die for."

GE Seeking Cross-Functional I/P Management

"Intellectual property is seen as a legal area, but it should be viewed and managed cross-functionally," Todd Dickinson, head of GE's intellectual property portfolio, reportedly told Managing IP magazine in November 2004. "We need to have the financial and business people more engaged in IP, not just aware of it."

What can the IPR-Helpdesk do for you?

Find out here, from the EPIDOS Annual Conference 2004.

The New and Improved CTM-ONLINE

The new and improved CTM-ONLINE now includes more information on the Community trade mark registration process:

• Updated daily
• 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

Basic search criteria enhancements:

• Search by type of mark - word, figurative, 3D, colour, sound, olfactory, hologram, others
• Search by trade mark name now possible using stemming, e.g. film?, ?films?, ?filming?, ?filmed?, etc.
• Search by Vienna Classification for figurative trade marks

Advanced search criteria enhancements:

• The use of advanced operators (Boolean) 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

Improvements to the results:

• Possibility of sorting results by number, filing date or name, in ascending or descending order
• Up to 1,000 results may be displayed
• Refine search (search within a search) now possible based on the previous (unlimited) results
• More precise status information & visual representation
• Historical log of statuses
• Detailed information on opposition, cancellation, appeal and recordals

Check their help page for more detailed information

OHIM Publishes Registered Design Invalidity Decisions

Decisions on invalidity concerning Community designs and cases pending are now available in the five languages of the OHIM here. Pending cases are listed here.

On April 1, 2003 OHIM began registering and publishing Community designs. Registration proceedings for Community designs are restricted to an examination of the formalities of the application. Prior to registration there is no substantive examination, i.e. the novelty and individual character of the designs are not examined.

However, after registration, third parties may object to a registration by filing an invalidity request with OHIM based on prior art or other earlier rights. OHIM will cancel the registration where the facts and evidence presented by the third party prove that the contested Community design does not fulfil the requirements for protection.

Should I File Under the Madrid Protocol?

According to an article by Lisa Peller London, updated in October 2004, the advantages of the Protocol include:

1. No need to engage local counsel to file applications, thus saving attorneys fees at the initial filing stage
2. No need to translate filings into local languages, as English is
   accepted for all filings
3. No need to provide such supporting documents as Powers of
   Attorney, application forms, prints of the mark, or Certificates of
   Incorporation
4. Centralized recordation of assignments, change of name, change of
   address, and renewals, such that one filing through WIPO is effective
   in each country for which registration was sought, thus saving
   considerable expense and paperwork

The disadvantages of the Madrid Protocol include:

1. Restricted Goods and Services: Because the USPTO requires
   narrowly drafted, highly specific lists of goods and services, those
   restrictions carry over to the related Madrid application.
2. Dependency: The International Registration is dependent on the
   home-country or ?basic? application or registration, allowing for a
   central attack. However, the Madrid Protocol allows applicants to ?transform? their individual extensions of a cancelled International Registration into national applications for an additional fee within three months of the cancellation
3. Supplemental Registrations can not serve as the the basis
   for an International Registration.
4. A mark cannot be amended in an International Registration, but may be amended in some countries.
5. Not all countries of interest belong to the Madrid Protocol. Significant absences include Canada and all of the countries of Latin America and South America.

.MP for Mobile Phones?

.MP is the country-code top level domain for the Commonwealth of the Northern Mariana Islands (CNMI). According to the press release "The previously unavailable .mp extension is the only existing TLD dedicated solely as the address for mobile Internet sites and all .mp domain names include a hosted dotMP(TM) Commercial or Personal mobile Internet site. Sunrise registration opened July 26 and is scheduled to run through November 14, 2004. During Sunrise registration, .mp domain names and dotMP CS (Commercial Site) are available to trademark and service mark owners only (http://www.sunrise.mp). Open registration for dotMP CS and dotMP PS (Personal Site) is scheduled to begin November 15, 2004."

Patent & Software: Fact & Fiction

The UK Patent Office is already under fire over its publication of "Patent & Software: Fact & Fiction" in November 2004.

OHIM Launches "Alicante News"

On November 5, 2004, the Office for Harmonization in the Internal Market -Trade Marks and Designs launched the first issue of "Alicante News," a new (and free) electronic newsletter on European trade marks and designs. To subscribe, send an email to subscribe@oami.eu.int.

Fed. Cir. to Get Tough on Court Rule Violations

In a per curium order published on November 5, 2004 as In re Violation of Rule 28(c), the Federal Circuit noted that even inadvertent violations of court rules may result in sanctions:

We accept counsel's representation that the violation of Rule 28(c) in this case was inadvertent. So far as we have been able to determine, this court has not in the past exercised its authority to impose sanctions for "inadvertent" violations of applicable court rules. Under these circumstances, we conclude that the imposition of sanctions in this case is not appropriate. However, we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not "inadvertent," will potentially subject counsel to sanctions.

Rule 28(c) of the Federal Rules of Appellate Procedure provides, in pertinent part: "An appellee who has cross-appealed may file a brief in reply to the appellant?s response to the issues presented by the cross-appeal." Rule 28(c) limits the content of Cross-Appellant?s Reply Brief to "issues presented by the cross-appeal," and the Practice Notes explicitly warn cross-appellants against exceeding the scope of Rule 28: "[C]ounsel are cautioned, in cases involving a proper cross-appeal, to limit the fourth brief to the issues presented by the cross-appeal. In all cases, counsel should be prepared to defend the filing of a cross-appeal and the propriety of arguments presented in the fourth brief at oral argument."

The Demise of Trademarks?

The U.S. Patent and Trademark Office registered over 140,000 trademarks last year. But, according to an article in the November 2004 issue (12.11) of Wired, "Even as companies have spent enormous amounts of time and energy introducing new brands and defending established ones, Americans have become less loyal. . . . A study by retail-industry tracking firm NPD Group found that nearly half of those who described themselves as highly loyal to a brand were no longer loyal a year later. . . .Another remarkable study found that just 4 percent of consumers would be willing to stick with a brand if its competitors offered better value for the same price . . . .'Brands have run out of juice. They're dead," says Kevin Roberts, CEO of advertising giant Saatchi & Saatchi and author of the new book Lovemarks. "Now the consumer is boss. There's nowhere for brands to hide.'"

The Global Distribution of Trademarks

According to "The Global Distribution of Trademarks: Some Stylized Facts" (April 8, 2004) World Bank Policy Research Working Paper No. 3270, the majority of trademarks in the world, including those in developing countries, have been registered by firms from industrial countries. At the same time, the global distribution of trademarks is not as uneven as the global distribution of invention patents. This pattern may indicate that firms in developing countries are more likely to differentiate themselves by investing in brands rather than new technologies. It also suggests that a larger number of firms in developing countries may benefit from stronger enforcement of trademarks rather than from stronger enforcement of patents.

Economists have traditionally associated asymmetric patent ownership with rent transfers from the developing to the developed world. However, it is less clear to what extent asymmetric trademark ownership may be the source of similar rent transfers. Trademarks, unlike patents, do not necessarily confer market power to the intellectual property-holding firm and can, in principle, co-exist with a competitive market structure. However, when consumers are imperfectly informed or attach a status value to products, competition may be imperfect and trademark owners may generate rents. More research is needed to assess the extent of crossborder rent transfers associated with trademarks.

Nutrition and Technology Transfer Policies

According to the forward, this report reviews the transfer of nutritional technologies to developing nations, seeking to identify the most important contemporary policy issues at both the national and international levels. The paper considers both the traditional public sector programs to transfer agricultural technologies efforts and the more recent private sector efforts. The technology transfer issues are substantially different for farmers in the market sector and for those in the subsistence/small-holder sector, so
the analysis proceeds in a matrix pattern, looking at the policy issues in each of the four quadrants of the matrix (private/market; public/market; private/small-holder; and public/small-holder). The paper recognizes that nutrition is shaped not only by agriculture but also by food distribution systems and technologies and attempts to take into account the rapid changes in the developing world food distribution process. In this respect, the study concentrates on plant agriculture and food-procession; it does not consider fisheries, but does give some coverage to animal agriculture. The paper considers the variety of policies affecting the transfer of technology in the nutritional area, including intellectual property, competition law, biosafety, international trade, and public sector research issues. In some areas, it poses specific policy issues; in others it calls for further policy-focused research.

I/P Reform Increases International Tech Transfer

World Bank Policy Research Working Paper No. 3305 entitled "A paper "Do Stronger Intellectual Property Rights Increase International Technology Transfer? Empirical Evidence from U.S. Firm-Level Panel Data" (May 11, 2004) empirically tests the hypothesis that IPR reforms increase technology transfers between countries by analyzing how measures of U.S. affiliate activity and levels of foreign patenting change in a set of 12 countries that undergo reforms. According to the authors, "The results provide strong evidence that U.S. multinationals respond to changes in IPR regimes abroad by increasing technology transfers to reforming countries. Affiliates also increase their R&D expenditures at the time of reforms and these increases are concentrated among affiliates of parents that use U.S. patents intensively.

"These results are not, of course, sufficient to demonstrate that IPR reform is welfare enhancing for the reforming countries. The analysis does not consider the impact of reforms on locally-owned firms that may be displaced after reforms nor does it examine the effects of the reforms on the pace of innovation in non-reforming countries. However, given the lack of evidence that IPR reform spurs domestic innovation, increases in technology transfer are likely to be a necessary condition for IPR reform to increase welfare in reforming countries. Our results suggest that this condition is met."

Encouraging International Technology Transfer

According to the forward, this report from the UNCTAD-ICTSD Project on IPRs and Sustainable Development reviews comprehensively the basic theory and evidence regarding how intellectual property protection affects incentives for international technology transfer (ITT). Analysis is provided of market-mediated ITT through trade, foreign direct investment, licensing, and personnel movements, along with informal means through imitation, reverse engineering, and spillovers. The report points out that there are inherent shortcomings in markets for technology that justify public intervention. One form of intervention is IPRs, which can support ITT but also
create market power. Empirical evidence suggests that enforceable patents can increase inward flows of ITT in middle-income and large developing countries but probably have little impact in the least-developed countries. Thus, the TRIPS Agreement at the WTO by itself will have little impact on technology acquisition for poor countries. Negotiators recognized this and introduced Article 66.2, which obligates the developed countries to provide positive incentives for ITT to the leastdeveloped countries. This study makes numerous suggestions for improving these incentives by policy changes in recipient countries, source countries, and the global trading system.

Movie Piracy Lawsuits to Start November 16

According to a November 4, 2004 report from Wired, "Dan Glickman, president and CEO of the Motion Picture Association of America, said that its member studios will file lawsuits beginning Nov. 16 and will seek damages and injunctive relief. Knowingly distributing copyright films carries penalties of up to $150,000 per film." Wired also reported that Eric Garland, CEO of BigChampagne "said the movie industry has a better chance to quash the P2P problem before it gets out of control by offering better digital entertainment services than P2P does. 'Hollywood should win this. They know how to sell us what we want. They need to focus on that.'"

According to a November 5, 2004 report from Asociated Press, "In October, slightly more than 44 million digital files that made up full-length feature films were being shared on peer-to-peer networks, according to BigChampagne LLC, which tracks activity on file-sharing networks. More than 1.3 billion audio files were being shared at any given time last month, according to BigChampagne."

TGIF for the Patent "Nerd"

According to Lord Justice Jacob in Rockwater Ltd v Technip France SA & Anor [2004] EWCA Civ 381 (01 April 2004), "the 'man skilled in the art' is invoked at many critical points of patent law. It is settled that this man, if real, would be very boring - a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355

. . . the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may
be, scores of specifications but to be incapable of scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.

"The man can, in appropriate cases, be a team - an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned. None of the above is controversial. However, sometimes the requirement that the skilled man be uninventive is used by counsel for a patentee in an attempt to downgrade or dismiss the evidence of an expert called to say that a patent is obvious - 'my witness is more nerdlike than his' is the general theme."

However, according to Lord Justice Pill in the same decision, such patent nerds should not be labelled as simply boring robots.

As to the "man skilled in the art", he is described by Jacob LJ as a 'nerd' (paragraphs 7 and 11) and as "not a complete android" (paragraph 10), which suggests that he is part of the way to being an android. A 'nerd' is defined in the Concise Oxford Dictionary (10th Edition 1999) as "a person who lacks social skills or is boringly studious" and an 'android', in the same work, as "(in science fiction) a robot with a human appearance". I hope that those working in this field will not regard "men skilled in the art" as figures from science fiction who lack social skills. Jacob LJ, will think me less than supportive of the development of the language of the law but I do respectfully prefer, for its clarity, Lord Reid's terminology cited at paragraph 7 of the judgment.

In fact, nerds often dispute among themselves the relationship of the "nerd" to the "geek." Some view the geek as a less technically skilled nerd, although some factions maintain that "nerds" are both technically skilled and socially competent, whereas "geeks" are only technically skilled, and socially incompetent. Still other nerds call themselves "geeks" with pride, in much the same way as is done with "nerd."

There may also be some regional differences in the use of the words "nerd" and "geek". Some claim that on the North American East coast the word "nerd" is preferred to "geek", and the meanings of the words are switched. Others on the east coast dispute this, claiming that they have always found "nerd" used disparagingly (and "geek" used in a positive light). In Britain, the same tends to apply - 'nerd' is more offensive than 'geek', which is often affectionate.

Can you pass "The Nerdity Test?"

Thank Goodness It's Friday,

--Bill

U.S.-E.U. Cooperation on "Principled I/P Reform"

According to an October 27, 2004 article by Marta Delgado and Bevin M.B. Newman, "Over the past year, the U.S. and E.U. have coordinated through an Intellectual Property Working Group focusing on patent pooling and other intersections of intellectual property law and competition law. The European Commission consulted with its U.S. counterparts prior to adopting new Technology Transfer Regulation and Guidelines, which embrace an effects-based model and move the E.U. significantly toward further convergence with the U.S. in the antitrust analysis of intellectual property licensing arrangements. During 2003 antitrust officials held discussions on multilateral licensing and standard setting organizations. Nonetheless, the area of intellectual property law has continued potential for divergence between the U.S. and the E.U. Significant gaps remain in the areas of compulsory licensing and the general understanding of the underlying economic theories of competitive harm applied to licensing restrictions."

Avoiding Product Liability for Trademark Owners

According to an October 26, 2004 article by Kevin T. Kramer and Patrick J. Jennings, many states, including Arizona, California, Connecticut, Kentucky, Ohio and Texas, impose liability for defective products on trademark licensors who play a significant or substantial role in the manufacturing, marketing or distribution of a defective product. In these jurisdictions, a trademark licensor?s liability generally depends on a number of factors, including: 1) the licensor?s control over the product design; 2) the fees received for use of the mark; 3) the prominence of the mark; 4) the supply of components; 5) the participation in advertisement; and 6) the degree of economic benefit derived from the licensing agreement. See Burkert v. Petrol Plus of Naugatuck, Inc., 579 A.2d 26, 34-35 (Conn. 1990) (summarizing cases dealing with trademark licensor liability in a number of different jurisdictions).

IE Privacy Keeper Freeware

According to PC World Magazine, freeware IE Privacy Keeper lets you schedule cookie and URL cleanup for Windows shutdown, Windows startup, or when the last open IE window is closed. It's secure wiping option lets you make sure that deleted files are deleted for good. If there are some Internet items that you'd rather keep, you can specify that IE Privacy Keeper keep the cookies, typed URLs, and form fields you need.

Click here for more "Annoyance Busters" from PC World Magazine.

How to Stop Cyber-Gripers

According to a November 2, 2004 article in PatentCafe, "Trademark owners have three ways to attempt to stop cybergripers: 1) file a federal law suit under the Federal Trademark Dilution Act ("FTDA"); 2) file a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"); or 3) bring a proceeding under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP")."

Law.com I/P Blog Roundup

Click here for the "I/P Blog Roundup" from www.Law.com on November 1, 2004.

Free Web Seminar Today on I/P Taxation

Thursday, November 04, 2004
1:00 PM EST to 2:00 PM EST

A free, web teleconference on select tax issues and opportunities relevant throughout the lifecycle of the IP, including

1. An overview of federal and state tax credits and deductions related to development and protection of IP;
2. A discussion of the current status of domestic and international holding company structures designed to apply low federal, state and international tax rates to third-party and affiliated royalty income;
3. A brief analysis of tax efficient disposition of IP.

Click here to register, courtesy of Kilpatrick Stockton

Licensees Make Better Licensors

According to McKinsey & Company management consultants, "Too often, executives focus only on the IP of their own companies instead of licensing ideas from the outside. Companies that license intellectual property from other organizations not only improve their own product development but also gain a better understanding of IP markets, an understanding that in turn boosts their IP-licensing revenues."

.ORG Domain Registrations Need Phone Numbers

According to Domain Food on November 2, 2004, "The Public Interest Registry (www.PIR.org), is mandating that the WHOIS for all .ORG registrations contain a valid phone number. Please log into your account and ensure that all contacts (Registrant, Billing, Technical, Administrative, & Aux Billing) have a valid phone number associated with them. Any names that do not have a valid phone number by Sunday, November 3rd will be taken out of the zone by PIR and will not resolve until the phone numbers are updated."

Madrid Protocol Forms On-Line

On November 1, 2004, the United States Patent and Trademark Office deployed electronic forms for the filing of an application for international trademark registration, subsequent designation, and response to a notice of irregularity at TEASi.

Free Teleconference - "Patent Licensing: Lessons Learned & Mistakes to Avoid"

Ropes & Gray Intellectual Property Master Class
"Patent Licensing - Lessons Learned & Mistakes to Avoid"
November 9, 2004
1:00 PM-2:00 PM

The revenues from patent licensing increased from $3 billion in 1980 to $15 billion in 1990 and to $120 billion in 2001. More and more entities are looking to patent licensing to enhance cash flows. Likewise, companies are receiving offers to license patents (both ?carrot? and ?stick?) that entail very large sums. While patent licensing programs take years to unfold, early decisions can profoundly impact the success or failure of a patent licensing program. This presentation goes beyond the fundamentals to assess the practical lessons learned and the mistakes to avoid. Jim DeGraw and Jim Myers, both Ropes & Gray partners with substantial patent licensing and patent litigation experience, will discuss the opportunities and pitfalls associated with patent licensing.

Participating Attorneys: James S. DeGraw, James R. Myers

Click here to register by 11/8/2004 12:00:00 AM

ABA Teleseminar on Restricting Reimportation, November 16

What restraints can firms place on the reimportation of products?

Tuesday, November 16, 2004
12:00-1:45 p.m. EST
Washington DC and satellite sites

A panel of experts will discuss the rationale for and legality of import restraints that are imposed by US manufacturers on their foreign customers that prevent these customers from reselling product that they purchased in foreign countries in the US. Restraints involving products that contain substantial intellectual property rights, such as pharmaceuticals, will receive particular attention, as well as ongoing cases. The discussion will cover both US and EU law.

Panel
George Cary of Cleary, Gottlieb, Steen & Hamilton
John Hilke of Federal Trade Commission, Bureau of Economics
Nigel Parr of Ashurst
Joseph Tabacco of Berman DeValerio Pease Tabacco Burt & Pucillo

Washington DC: Cleary Gottlieb, Steen & Hamilton 2000 Pennsylvania Ave. NW
Brussels: Cleary, Gottlieb, Steen & Hamilton, Rue de la Loi/Wetstraat 57
Chicago: Bell, Boyd & Lloyd, 70 West Madison St., Suite 3100.
Indianapolis: Baker & Daniels, 300 Meridian St., Suite 2700
Los Angeles: Paul, Hastings, Janofsky & Walker; 515 South Flower St., 25th Floor
London: Ashurst, Broadwalk House, 5 Appold Street
New York: Skadden, Arps, Slate, Meagher & Flom, Four Times Square
Minneapolis: Patterson, Thuente, Skaar & Christensen, 4800 IDS Center, 80 S. 8th St.
Philadelphia: Drinker, Biddle & Reath, One Logan Square, 18th & Cherry Streets
Paris: OECD, Annexe Ingres, 37bis Boulevard Suchet
San Francisco: Berman DeValerio Pease Tabacco Burt & Pucillo,
Seattle: Simburg, Ketter, Sheppard & Purdy; 999 Third Ave., Suite 2525

RSVP to info@ei.com with name and site location (including main site) you wish to attend.

To participate by telephone, please select this program on the Antitrust Section?s website at: www.abanet.org/antitrust. Select "Other-$15" for non-members and a dial in number will be e-mailed to you three days before the program.

Benefit Sharing from the Use of Biological Resources and Associated Traditional Knowledge

On November 1, 2004, the World Intellectual Property Organization (WIPO) and the United Nations Environment Programme (UNEP) released a study that "identifies and explores the role of intellectual property rights in the sharing of benefits arising from the use of biological resources and associated traditional knowledge."

According to WIPO's press relase, "the study highlights the need, when genetic resources are first accessed, for a clear understanding of intellectual property issues. Agreement on how intellectual property derived from access is used and how the benefits are shared is an important part of the exercise of prior informed consent, and an important, practical way of ensuring that access and benefit-sharing is fruitful, equitable and mutually agreeable, and becomes a true partnership between custodian and user of the genetic resource. The study investigates the potential for achieving this, but underscores the practical and legal obstacles that traditional communities have encountered in the three cases discussed in the study."