TGIF for Prisoners' Inventions

"When first approached with the idea of illustrating examples of inmate inventiveness, I was skeptical, thinking that there would be little of real interest to depict. When I set my mind to the task, though, I recognized the surprising range of inventions and innovations that I had witnessed. I had just become so used to it all that the uniqueness no longer registered." -- Angelo, an incarcated artist, discussing his book entitled "Prisoners' Inventions"

Thank Goodness It's Friday,

--Bill

One-Third of Drug Trademarks Rejected

According to a December 20, 2004 report in the Boston Globe, about a third of the trademarks chosen for new drugs are rejected by regulators, most often because of fears they will be confused with existing drug names. That could lead a doctor or a pharmacist to accidentally administer the wrong medication, with potentially catastrophic effects.

Biogen Idec officials won't say exactly when they learned that the name Antegren was a problem. Amy Brockelman, a Biogen Idec spokeswoman, said the name created potential conflicts with Integrilin, a drug marketed by Millennium Pharmaceuticals Inc. of Cambridge for heart attacks and other cardiac woes; Ativan, an anti-anxiety medication; and Edecrin, a diuretic. But they said they had a list of backup names, and the one they chose was Tysabri. ''Abri is the French word for shelter, and that conveys the notion of protection and that Tysabri offers a new level of of efficacy and new hope for people living with multiple sclerosis," said Brockelman.

UK Patent Act Amendments Effective January 1, 2005

The Patents Act 2004 makes significant changes to the UK's main statute on patents – the Patents Act 1977. The 2004 Act received Royal Assent on 22 July 2004, although none of its provisions came into force on that date.
Instead, the provisions are brought into force by commencement orders, of which there have now been two. Click here for the summary and here for the details.

Commencement Order No.1 brought some minor provisions into force on 22 September 2004. Commencement Order No.2 brings some of the major provisions of the 2004 Act into force on 1 January 2005. Further details on commencement are now available.

The Drug Trafficking Analogy

"We approach the drug problem in many different ways. We target suppliers, we target users, we target education so that we help people make the right choices. I think the same approach is going to be needed in IP theft." ---David Israelite, deputy chief of staff to Attorney General John Ashcroft, comparing file-sharing to illicit drug trafficking.

New Trademark Filing Fees Start January 31, 2005

According to the USPTO website, effective January 31, 2005, trademark fees will change as follows:

Initial Applications:

1. $325 per international class if using the Trademark Electronic Application System (TEAS)
2. $375 per international class if submitting paper

Amendments or Responses to Office Actions:

1. $325 per additional international class when the fee is paid as part of a TEAS amendment or response
2. $375 per additional international class when the fee is paid as part of a paper amendment or response

The new fee requirements will apply to any fees filed on or after January 31, 2005.

Texas I/P Rocket Docket at Its Zenith?

U.S. District Court Judge T. John Ward joined the court in Marshall, Texas in 1999 and helped create what is known in legal circles as a rocket docket for patent cases. He did this by adopting rules that encourage the setting of quick trial dates and firm discovery deadlines. And where there have been discovery disputes, he has made himself available. But more than all that, he actually likes patent cases. However, "There is a limit to what three of us can do," he reportedly said to the National Law Journal, "I think [the wait] will become longer as this load continues."

What Happens at the Patent Office?

"IP eModules" from the IPR HelpDesk, are aimed at providing researchers and other persons who need basic IP knowledge at worko with with a small web module to enhance their knowledge. This module provides a concise example of what the patent office does once your patent application is filed.

India Amends Patent Law to Cover Products

The Economic Times reported on December 27, 2004 that an amendment to the Indian patent law was made through a presidential decree issued on Sunday currently in order to allow for patents on drugs, and other products, in addition to existing protection of processes. Under the Indian Constitution, the ordinance will lapse after six months if it is not ratified by Parliament within that period. However, Commerce and Industry Minister Kamal Nath reportedly said that he was confident of securing parliament's approval for the patent amendments in the budget session of parliament in February.

According to an analysis from the Associated Press, India is the world's fourth-largest drug market in volume, and drugs often cost 7 percent to 10 percent of what they do in the West. That's been a boon to the country's poor some 400 million Indians live on less than $1 a day but it has kept many foreign companies from investing in new medicines here.

Adobe Reader SpeedUp

For all those maddeningly slow patent images, Adobe Reader SpeedUp is a free, simple application that was created to help make the loading time of Adobe's Acrobat Reader software bearable for everyday use. It only needs to be used once (a process taking only a few seconds) and then your Reader will be transformed forever.

Abandonment Petitions Due Within Two Months of Notice or Twelve Months of Last Submission

On May 27, 2004, the USPTO clarified its position concerning the treatment of petitions to withdraw a holding of abandonment that are not timely filed because the applicant failed to exercise reasonable diligence in monitoring the status of the application. "Untimely Filing of Petitions under 37 CFR 1.181(a) to Withdraw Holdings of Abandonment" is available here and is intended prevent inappropriate patent term adjustments and extensions with the following provisions.

For Utility and Plant Applications Filed on or after May 29, 2000, a petition to withdraw a holding of abandonment must be filed within two months from the mailing date of the notice of abandonment in order to avoid reductions in patent term adjustments under the provisions of 37 CFR 1.704(c)(4). If the applicant does not receive a notice of abandonment, the any period of adjustment will be reduced by the number of days between twelve months from the date of applicant’s filing and the filing date of a grantable petition to withdraw the holding of abandonment.

For Utility and Plant Applications Filed on or after June 8, 1995 but before May 29, 2000, the URAA provides for patent term extension only if issuance of the patent was delayed due to: (1) an interference proceeding; (2) imposition of a secrecy order; or (3) successful appellate review under 35 U.S.C. § 154(b). Unless an application is held abandoned during one of these three periods, the filing of a petition to withdraw a holding of abandonment will not operate to extend the term of the patent because the USPTO has no authority to grant patent term extensions for other administrative delays. Furthermore, if a petition to withdraw a holding of abandonment is not filed within two months from the mailing date of the notice of abandonment during a period of appellate review, any patent term extension accrued under 37 CFR 1.701(a)(3) may be reduced under the "due diligence" provisions of 37 CFR 1.701(d)(2).

For Utility and Plant Applications Filed before June 8, 1995, and All Design Applications, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The disclaimed period must include the number of days between twelve months from the date of applicant’s filing and the filing date of a grantable petition to withdraw the holding of abandonment as set forth in MPEP 711.03(c). If the applicant does not receive a notice of abandonment, then the disclaimer period starts twelve months from the date of applicant’s filing or submission of correspondence with the USPTO, for which further action by the USPTO can reasonably be expected.

Petitions to revive an abandoned application for unavoidable or unintentional delay under 37 CFR 1.137(a) or (b) are also subject to a terminal disclaimer requirement of 37 CFR 1.137(d).

According to the USPTO, "Since practitioners and pro se applicants can monitor the status of their applications using the USPTO’s PAIR and IFW systems, the failure to receive a notice of abandonment (or any other USPTO notification) will not excuse an unreasonable delay in filing a petition to withdraw the holding of abandonment. A status inquiry is in order once six months have elapsed with no response from the USPTO."

I/P Task-Based Billing Codes

The Conference Board of Canada has published a "Task-Based Billing Intellectual Property Code Set" which, although it uses some Canadian terminology, provides task and activity identifiers that are better-suited for intellectual property matters than the "Uniform Task-Based Management System" used by many large clients.

Task-based billing is a system of using commonly-accepted codes to describe tasks that are performed as professional services. during legal services. For legal services, the system grew out of the need for better analysis and cost control over conventional systems that merely break charges down by date of service. By requiring bills to be categorized by according to a standard set of tasks and activities, rather than by matter and day of month, clients can sometimes get a better handle on where their legal dollars are going.

This new approach led to a confusing proliferation different task and activity descriptions, until, in 1995, a consortium of legal service providers and consumers created the Uniform Task-Based Management System ("UTBMS") with standard code sets for litigation, counseling, bankruptcy, and projects. For example, the litigation code set is grouped into five "phases" -- Case Assessment, Development and Administration, Pre-Trial Pleadings and Motions, Discovery, Trial Preparation and Trial, and Appeal -- which each consists of a number of standardized tasks, such as Written Discovery and Document Production. However, according to an article in the February 2, 2004 issue of "Legal Times," a joint study by the Association of Corporate Counsel and Serengeti Law found that a mere 4.4 percent of the 266 companies that were surveyed required the use of uniform task-based codes in 2002. And, perhaps more troubling, about one-fourth of those companies admitted that they don't use the coded data at all.

So, what's stopping task-based billing for legal services? The April 2004 issue of "Corporate Counsel," describes the UTBMS code sets are so unwieldy that the resulting mass of information becomes overwhelming. General counsel wind up with drawers full of CD-ROMs containing useless data, and outside counsel don't care much for the system, either. "Lawyers look at the codification of legal services, and they're appalled by it," said David Briscoe, of Altman Weil. "They say, 'There's no way I'm going to take the time to learn this, and, besides, what I do does not fit into the list of codes.'"

But now, if you do intellectual property law, the "Task-Based Billing Intellectual Property Code Set" leaves one less reason to complain about implementing a task-based billing system.

For more information on managing your intellectual property resources, including a copy of the I/P task-based billing codes, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA, and sign-up for the "APLF Updates" at http://www.aplf.org/signup/alert.shtml.

Is Innovation Getting Harder?

According to a paper by Benjamin Jones, entitled "The Burden of Knowledge and the 'Death of the Renaissance Man': Is Innovation Getting Harder?," the age at first innovation, which can serve as a proxy measure for educational attainment, is trending upwards at 0.6 years per decade. U.S. team size is also increasing at 17% per decade, and specialization is increasing by 6% per decade. There has also been a 50% drop in patents per U.S. R&D worker since 1975, which is roughly consistent in magnitude with the rise in team size over that period.

Based upon an alaysis of this and other evidence, the author concludes that

"the evidence suggests specifically that the burden of knowledge is increasing. The model delivers this inference directly through increasing specialization and teamwork, but note further that a combination of greater specialization and greater educational attainment is especially difficult to reconcile without
appealing to a greater knowledge burden. If innovators are becoming more specialized but the distance to the frontier is not increasing, then innovators should have required less education over time. . . . If a rising burden of knowledge is an inevitable by-product of technological progress, then the model
indicates pessimistic predictions for long-run growth."

So that's a yes, Mr. Jones?

Happy Holidays from I/P Updates

U.S. Patent No. 5,379,202"Partially overlapping display elements have light string sets mounted thereon and sequentially illuminated to simulate animation of a
decorative part of an outdoor light display."

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A&B Patent Office Practice Update

According to this month's "Patent Offiice Practice Update" from Alston & Bird

1. Claims for priority can be considered an incorporation by reference.
2. Concurrently filed preliminary amendments are now part of the original disclosure.
3. References to prior applications may be in multiple sentences.
4. Information disclosure statements now must list U.S. patents and application publications separately.

To get your copy, send an e-mail to patents@alston.com.

Gene "Comprising" Nucleotide Sequence Anticipated by Starting Material Plasmid

In In re Crish, No. 04-1075 (Fed Cir. December 21, 2004), the claimed invention related to purified DNA molecules having promoter activity
for the human involucrin gene (hINV):

A purified oligonucleotide comprising at least a portion of
the nucleotide sequence of SEQ ID NO:1, wherein said portion consists of the nucleotide sequence from 521 to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity.

As the name indicates, hINV contains the DNA sequence that codes for involucrin, a protein that interacts with keratin and other intracellular proteins on the skin to strengthen the plasma membrane of the cells.

Although the promoter region of hINV used in a prior art Crish publication was not sequenced, that publication "disclosed the complete structure of hINV including the approximate size (2.5 kb) of the promoter region, and referenced an earlier publication disclosing how a plasmid was obtained for use in isolating hINV." Crish asserted that a person of ordinary skill in the art starting with the plasmid disclosed in the publication would not necessarily obtain "SEQ ID NO:1" because different DNA sequencing techniques (for example, using different restriction enzymes), may result in workers obtaining different DNA sequences.

Nonetheless, the court rejected Crish’s argument that the claims were not anticipated because the prior Crish publication did not sequence the promoter region of hINV.

While the PTO’s position that the discovery of new properties of a known material does not make claims reciting those properties novel is correct, and we agree with the PTO as to its conclusion, we differ with its characterization of the nucleotide sequence of the gene as a property of that gene. The sequence
is the identity of the structure of the gene, not merely one of its properties. The gene may have functional, biological properties, and it may have physical properties, but its structure is its identity, not merely one of its properties.

The only arguable contribution to the art that Crish’s application makes is the identification of the nucleotide sequence of the promoter region of hINV. However, just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art
material also does not make it novel.

Moreover, Crish’s characterization that the pending claims cover a novel DNA sequence having promoter activity, whereas the references disclose only the starting material plasmid, is unsound. The starting material plasmid necessarily contains the gene of interest, including the promoter region, and once we have affirmed the PTO’s construction of the claims as commprising" more than the recited numbered nucleotides, the claims necessarily encompass the gene incorporated in the starting material plasmid. Accordingly, Crish’s pending claims encompassing the gene plus other nucleotides are anticipated by the starting material plasmid, which consists of the gene plus other nucleotides.

Crish’s argument that the claims contain the closed ended transition term “consists,� and that that term narrows the entire claim, was unpersuasive.

The reasonable interpretation of the claims containing both of the terms “comprising� and “consists� is that the term “consists� limits the “said portion� language to the subsequently recited numbered nucleotides, but the earlier term “comprising� means that the claim can include that portion plus other nucleotides. Read in context, the claims thus do not preclude a DNA sequence having additional nucleotides.

The court also noted that Crish did not argue that the portions of the plasmid not consisting of the involucrin gene are not nucleotides, nor did he argue that the preamble term “purified� has any operative meaning in this appeal. Watch for these issues to be raised in the next appeal.

Both Sides Claim Vindication on Geographic Indications, Where's the Beef?

According to a December 21 press release from the Office of the U.S. Trade Representative (USTR), a WTO dispute-settlement panel in Geneva has ruled that the EU GI registry violates the WTO intellectual property rights agreement (TRIPs) because it discriminates against non-EU products:

"The WTO panel agreed with the United States that Europe's regulation discriminates against U.S. products and producers and is therefore contrary to WTO rules. The panel also agreed with the United States that Europe could not, consistent with WTO rules, deny U.S. trademark owners their rights. The panel emphasized that any exceptions to trademark rights for the use of registered GIs were narrow and limited to the actual GI name as registered.

The United States challenged the EU GI Regulation on two primary grounds: (1) discrimination against U.S. GIs (national treatment) and (2) failure to protect U.S. trademarks. The panel agreed with the United States that this would present concerns under the TRIPS Agreement, and found that the GI Regulation could only protect GI names as registered, and not linguistic variations of the GIs."

According to a December 21, report from Associated Press, EU officials took issue with that claim, saying they had not impeded geographic registrations from producers outside of Europe. "We did not impede the registration of third countries' GI's. We even welcome it," Claude Veron-Reville, an EU spokeswoman on trade issues, reportedly said in Brussels. "The panel has vindicated our GI system."

The U.S. and European officials were commenting on a WTO report that was provided Tuesday to the parties in the dispute but has not yet been made public. Why not? If government officials are going to make hearsay public statements, then the least that they can do is also release the information that forms the basis for those statements. Where's the beef?

WTO GI Consultations Under Way

On December 16, 2004, World Trade Organization members considered how to proceed in discussions on whether to extend to other products the current protection for geographical indications (GI) currently accorded to wines and spirits under the Agreement on Trade-related IntellectualProperty Rights (TRIPS). According to BRIDGES Trade BioRes on December 20, 2004, most of the discussions centered on traditional arguments over whether or not to extend GI protection (see BRIDGES Trade BioRes, December 6, 2001). Members also differed over whether future discussions should focus only on GI extensions (as advocated by Switzerland, the EU and Bulgaria) or should be broadened to also include other GI-related issues (as advocated by Australia), such as the Multilateral Register for GIs currently being negotiated in the TRIPS Council, and the the EU's "clawback" proposal to reclaim terms used in other countries which has been submitted as a market access issue in the agriculture negotiations.

The Chair of the meeting, WTO DeputyDirector-General Mr Thompson-Flôres, will prepare a list of topics to be covered by the next meetings in February and March 2005.

The Socio-Economics of Geographical Indications

With a view to providing developing country policy makers with some concrete insight into the welfare potential of geographical indications (GIs), this study reviews the empirical evidence from European countries with respect to the socio-economic implications of the protection of GIs. The paper first provides for an overview of the economic rationale behind the protection of trademarks, which in certain respects are similar to GIs. It then turns to GIs, explaining the economic principles of their protection and their key functions of promoting rural development and protecting provenance and indigenous knowledge. In the main part of the paper, concrete examples of GIs are given to illustrate European experiences, in particular with respect to the organisation and governance of supply chains as well as the definition, promotion and marketing of GI products. In a final assessment of the economic opportunities offered by GIs, the paper concludes in a rather positive tone, highlighting however the multitude of factors that need to be mobilized to realize the potential of GIs. In this respect, "intellectual property rights (IPRs) are an important, but not the only element in economically successful GIs operation."

Michel to Lead Federal Circuit

Legal Media Group is reporting that Judge Paul Michel will succeed Haldane Robert Mayer as Chief Judge at the U.S. Court of Appeals for the Federal Circuit on December 26, 2004.

According to his bio, Michel was born February 3, 1941, in Philadelphia, PA; son of Lincoln M. Michel and Dorothy Kelley; educated in public schools in Wayne and Radnor, PA; B.A., Williams College, 1963, J.D., University of Virginia Law School, 1966; married Brooke England, 2004; adult children, Sarah Elizabeth and Margaret Kelley; Second Lieutenant, U.S. Army Reserve (1966-72); admitted to practice: Pennsylvania (1967), U.S. district court (1968), U.S. circuit court (1969), and U.S. Supreme Court (1969); assistant district attorney, Philadelphia, PA (1967-71); Deputy District Attorney for Investigations (1972-74); Assistant Watergate Special Prosecutor (1974-75); assistant counsel, Senate Intelligence Committee (1975-76); deputy chief, Public Integrity Section, Criminal Division, U.S. Department of Justice (1976-78); "Koreagate" prosecutor (1976-78); Associate Deputy Attorney General (1978-81); Acting Deputy Attorney General (Dec. 1979-Feb. 1980); counsel and administrative assistant to Senator Arlen Specter (1981-88); nominated December 19, 1987 by President Ronald Reagan to be circuit judge, U.S. Court of Appeals for the Federal Circuit, confirmed by Senate on February 29, 1988, and assumed duties of the office on March 8, 1988.

CAFC Proposes Rule Change on Jurisdictional Statement

The United States Court of Appeals for the Federal Circuit is seeking public comments on its proposal to amend its Federal Circuit Rule 28(a)(5). The new subparagraph in Rule 28(a)(5), new words italicized, reads as follows:

Rule 28. Briefs

(a) Contents of Brief; Organization of Contents; Addendum; Binding.

Briefs must be bound as prescribed in Rule 32 of the Federal Rules of
Appellate Procedure and must contain the following in the order
listed:

(5) the jurisdictional statement including a representation that the judgment or order appealed from is final or, if not final, the basis for appealability (e.g., preliminary injunction, Fed. R. Civ. P. 54(b) certification of final judgment as to fewer than all of the claims or parties, etc.);

Comments must be received by the close of business on January 14, 2005.

CAFC Limits Briefing Extensions to 60 Days

Federal Circuit Rule 27(h)(4) has been revised effective December 17, 2004, to authorize the clerk to act on consented to or unopposed motions to extend for not more than 60 days the time for filing a principal brief. This is in addition to the clerk's delegated authority to extend for not more than 30 days the time for taking any other action permitted by the rules or an order of the court. A sentence has also been added to the Practice Note following the rule stating no further extensions should be anticipated.

The Cost of Simplicity at the Federal Circuit

In Simplicity at the Cost of Clarity, William H. Burgess revisits the Federal Circuit's decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) holding that claim construction is a matter of law with no underlying factual inquiries, and therefore subject to de novo review on appeal. He concludes that "Cybor has been a failure in practice because it is so inconsistent with the settled law on so many issues relating to claim construction that it is impossible to apply the holding in practice without sending contradictory messages. By labelling claim construction as a pure issue of law and then trying to force the underlying issues to behave as purely legal issues, the Federal Circuit drew an ill-advised bright line that threatens to undermine the progress that it has made toward increasing uniformity and clarity in patent law."

The ProxiLaw ($329) Provisional Patent Application

ProxiLaw will prepare and file a provisional patent application for just $329 (or $529 if they also do they drawings), including

• Preparation of provisional patent application
• Electronic filing of the application with the U.S. Patent Office
• Digitalization, color adjustment and compilation of technical drawings
• Review of the answers you provide for consistency and completeness
• The $80 filing fee is paid directly to the United States Patent Office
• Professional Illustration

Here is their "detailed description of the process of for obtaining a provisional patent":

1. Complete their online questionnaire including: What is the name of your invention?, What are the objectives of your invention?, How does your invention work?, Are there any different ways your invention may be structured? Are there any different ways your invention may be used?Describe the main components of your invention -- this description should include the name of each component and how each works, How do these components work together? Provide name and address information about each individual who made a significant contribution to the invention, Would you like Proxilaw to provide these required technical illustrations?, Was this invention created under contract to an agency of the U.S. government?, Have you filed an application for this patent in a foreign country?
2. Their experienced legal document specialists will review the information that you provided for errors and completeness and then prepare your provisional patent application.
3. Send one copy of an illustration describing the invention to us. If you'd like, a professional patent illustrator can prepare your drawing for an additional fee.
4. Once they receive your illustration, they will file your application electronically with the United States Patent Office.
5. Since a provisional patent filing date is effective upon filing of the application, they will send you a proof of delivery confirmation number.
   The U.S. Patent Office will issue an official approval to you directly by mail, typically within 4 to 24 weeks.

While I can't disparage a service that I have never tried, letting a machine blindly draft your patent application, or any other legal document, seems to be a bit risky. The key to the whole process appears to be the "experienced legal document specialists" who "review the informtation that you provide."

Nonetheless, this type of technology might be an excellent way to get more-detailed invention disclosure documents from inventors so that their attorneys can do better work. And, as every patent attorney knows, when the client is in a pickle, filing a thorough invention disclosure document is often better than not filing at all.

Please leave a comment if you have had any experience with these folks, or their competitiors.

EU Council to Approve Software Patentability Directive

EWeek is reporting that "The EU's controversial proposal on patenting "computer-implemented inventions" has unexpectedly cleared a major hurdle, with the Council of the European Union set to give its approval early [this] week, officials have confirmed. At a Council meeting early [this] week, the text will be adopted as the Common Position," said Dr. Jeremy Philpott, a spokesperson for the U.K. Patent Office. "It will be adopted or it will fall off the agenda. There is no opportunity to debate it—the substantive debate happened back in May."

For more information, see the IP::Jur Blog with, among other things, links to Document 14574/04 of the General Secretariat asking COREPER to recommend that the EU Council adopt the common position in 11979/04 with the statement of reasons in 11979/04 ADD 1.

Up to 90% of Russian Media Sales are Pirated Goods

According to a December 16, 2004 report from MosNews, Russian Minister of Culture and Mass Communications Alexander Sokolov, said last week that "Up to 80-90 percent of audio and video sales in Russia are of pirated goods."

Japan Publishes Trilateral Trademark Goods ID in PDF Format

On December 15, 2004, the Japanese Patent Office released an English-language "Trilateral List of Identification Manual," in PDF format, with subclass and alphabetical listings. Search or browse the U.S. Patent and trademark Office version here. Leran more about the trilateral Goods ID manual here.

How to Disparage Your Own Trademark

Just ask your members to “continue calling Kirkland & Ellis and voice your opposition to their pursuing this appeal of their [trademark] harassment lawsuit against us,� provide the names and phone numbers of the lead attorneys, and then remind recipients that “these scoundrels have brought this suit to consume our time and resources. Perhaps their time and resources will be consumed as well.� What happened next in Te-Te-Ta-Ma Truth Foundation v. World Church of the Creator (7th Cir. December 13, 2004) is enough to make an I/P attorney want an unlisted telephone number.

USPTO Report on Inter Partes Reexamination Seeks Broader Post-Grant Review Power

The American Inventors Protection Act (AIPA) of 1999 required the United States Patent and Trademark Office (USPTO) to "submit to the Congress a report evaluating whether the inter partes reexamination proceedings established under the amendments made by this subtitle are inequitable to any of the parties in interest and, if so, the report shall contain recommendations for changes to the amendments made by this subtitle to remove such inequity." The USPTO issued its report on December 17, 2004 recommending that the Patent Act be amended in three areas to improve inter partes reexamination by:

• Clarifying the inter partes reexamination estoppel provisions.
• Permitting the requester of an inter partes reexamination additional opportunities to provide input as to Office actions.
• Extending the requester’s statutory 30-day period for comment after the patent owner responds to an Office action, or to permit the USPTO Director to set the period for comment by rule.

Although the USPTO’s post-grant review role in the patent system has grown, according to the report "none of these post-grant review procedures alone, or collectively, has proven sufficient to optimize the USPTO’s post-grant review capability." The introduction of inter partes reexamination practice had a negligible effect on the number of ex parte reexaminations filed:

Internal reviews and customer roundtables led the USPTO to identify the following seven areas of "systematic unfairness":

1. The most-frequently identified inequity was the high risk of estoppel attaching to a third-party requester with regard to all issues which were raised or “could have been raised� during the inter partes reexamination proceeding, except for “newly discovered prior art unavailable to the third-party requester.� The statute thus leaves open whether prior art that was not discovered in a search performed by the third party will be deemed prior art that was “unavailable� or “not known,� or if the “unavailable� standard only applies to prior art that was not published at the time the inter partes reexamination request was filed.
2. It may be desirable to permit the requester to present input on Office actions even if the patent owner fails to respond so as not to precluded from presenting input on the Office actions until the appeal stage of the inter partes reexamination proceeding.
3. The requirement that a third-party requester submit comments within 30 days after the date of service of the patent owner's response may pose an undue burden because, in its haste to prepare comments within that period, the requester may inadvertently not adequately raise an issue and would then be estopped from later raising the issue that was not adequately raised.
4. A reexamination requester’s challenge to a patent is limited to prior art patents and printed publications. "To address this shortcoming of inter partes reexamination, a proposed post-grant review process for validity-related issues which include, in addition to prior art issues, those of enablement, written description, and prior use or sale. With an effective post-grant review process in place, all validity-related issues could be addressed during a time period at the beginning of a patent's term where third parties may request a Post-Grant Review of the patent. If this comes about, inter partes reexamination would become a more effective vehicle for addressing the fact that new relevant prior art patents and printed publications can very well surface at any time during a patent's life. Accordingly, the USPTO does not support expanding the grounds of challenging the validity of a patent in the reexamination process beyond prior art patents and printed publications, since such issues should be resolvable at the front end of the patent's term via the proposed Post-Grant Review process."
5. A small entity fee for inter partes reexaminationcould encourage more small entities to file inter partes reexaminations. The internal cost associated with processing and acting on inter partes reexaminations is already greater than the fee charged for handling the processing and examination of a reexamination proceeding.
6. The legislation was not made retroactive to applications filed before November 29, 1999; therefore, inter partes reexamination cannot be used to challenge most patents that are currently in effect.
7. Prior to May of 2004, a third party could achieve an alternative to inter partes reexamination not having any attachment of estoppel (which exists for inter partes reexamination, but not for ex parte reexamination) by filing multiple, sequential reexamination requests based on the same substantial new question of patentability as the original request. To address this inequity, the Office amended § 2240 of the Manual of Patent Examining Procedure in May 2004 whereby the same prior art may be used to start a second reexamination during the pendency of the first reexamination "only if the prior art cited raises a substantial new question of patentability which is different than that raised in the pending reexamination proceeding." In addition, a proposed rule package currently under development would implement, by regulation, this policy change. It is too soon to evaluate the effects of this change made by the USPTO.

In response to these inequities, the USPTO made three recommendations:

"[First t]he USPTO recommends retaining, in some form, an estoppel provision for inter partes reexamination. With an effective Post-Grant Review process in place, inter partes reexamination requests would only be appropriate for parties in limited circumstances; for example, that have discovered prior art outside the time period for requesting reconsideration under the Post-Grant Review process. It is therefore essential to place an estoppel provision with a high burden on third parties requesting inter partes reexamination in order to avoid requests intended to stall or hinder the development of a patentee’s invention late in a patent's life.

However, the current estoppel provisions do require further clarification of the requirement for third parties to raise all issues that “could have been raised� except for new prior art that was “unavailable.� Accordingly, the USPTO recommends that Congress further define the extent and nature of the estoppel risks imposed upon third parties requesting inter partes reexamination of a patent.

"The USPTO [also] recommends that Congress amend current inter partes reexamination practice to permit the third-party requester to present input on Office actions even if the patent owner fails to respond. This amendment would provide an independent right to the requester to comment once for each Office action generated by the USPTO.

[Finally] the USPTO recommends that Congress extend the third-party requester’s comment period to be more than 30 days, or alternatively, to authorize the Director of the USPTO to set the period for response by rule.

Even More I/P Legislation on the Horizon?

According to a September 16, 2004 report by David McGuire in the Washington Post, "term limits require that U.S. Senator Orin Hatch (R-Utah) hand over his chairman's gavel for the Seanate Judiciary Committee to Sen. Arlen Specter (R-Pa.) -- an otherwise routine power shift that could have far-reaching implications for high-tech firms, movie studios, record companies and the future of downloading."

Former staffers for both senators said that if Hatch wanted to re-launch the intellectual property subcommittee that was disbanded during Hatch's chairmanship, then Specter would probably play along. Nobody in the committee or in the senators' offices would comment on whether such a move had been discussed, but lobbyists on the issue, former staffers and observers suspect it's already in the works.

"Were Hatch to chair a subcommittee, he would have an entire staff and a huge chunk of his time to devote to those issues," writes Mr. McGuire.

I'm Sorry, Please Don't Sue Me

The December 17, 2004 issue of the Chronicle of Higher Education examines academic plagiarism in detail -- not the kind that procrastinating, lazy students engage in late at night, but "the kind that professionals who know better attempt in order to further their careers."

"Defining just where influence ends and plagiarism begins can be a difficult question," writes Scott McLemee. "Ralph Waldo Emerson, who wanted the American scholar to live in a state of radical originality, ended up conceding that 'all my best ideas were stolen by the ancients.'" Musicians know that all great composers steal; documentarian's lament over dissappearing history; and artists are plagued by intellectual property issues. Even technological contributions can be viewed as more of process involving every element of society, than the singular obsessions of lonely geniuses. It's no wonder that we are now seriously considering protection for "traditional knowledge" and "cultural expression."

According to Stuart P. Green, a professor of law at Louisiana State University at Baton Rouge, copyright law "protects a primarily economic interest that a copyright holder has in her work ... whereas the rule against plagiarism protects a personal, or moral, interest." But just how far should we go to protect these non-economic interests? When Malcolm Gladwell described the plagiarism of his own work in a November 15 article for The New Yorker, he concluded that "In the worlds of academia and publishing, plagiarism has gone from being bad literary manners to something much closer to a crime. 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." Others have even gone so far as to suggest that if the phrase, "To promote the progress," in the U.S. Constitution means prioritizing people's access to writings and discoveries, then the rise of open source production and dissemination of content may now be demonstrating that the incentive justification for intellectual property just isn't true when the means of production and distribution are in the hands of individuals, without the need for significant capital contributions.

Of course, most of us would like to see our works receive recognition, if not outright acknowledgement. In the Talmud, notes Professor Green, "a person who reports something in the name of the one who said it brings redemption into the world." Rabbi, Joseph Telushkin explains the reasoning behind that text this way. "If a person presents as her own an intelligent observation that she learned from another, then it would seem that she did so only to impress everyone with how 'bright' she is. But if she cites the source from whom she learned this information, then it would seem that her motive was to deepen everyone's understanding. And a world in which people share information and insights to advance understanding, and not just to advance themselves, is one well on its way to redemption."

And if that world includes a few blog posts, well then, I'm sorry, just please don't sue me.

TGIF for the Seven Deadly Sins (of invention, that is)

From the European Patent Office, via the PHOSITA Blog:

1. The invention is more complex than the problem merits.

2. The invention is not kept secret until the date of filing.

3. The invention isn't new.

4. The inventor hasn't fully considered the problem.

5. No-one wants it.

6. An invention is safer if it's kept secret.


7. The inventor has an unrealistic idea of the value of his invention.

Thank Goodness It's Friday,

--Bill

Proving Trademark Use on the Internet

According to an article in the December 15, 2004 INTA Bulletin:

While it may be more difficult for a producer of goods to prove use through the Internet, it is not impossible. Printed advertisements for the goods, including Internet websites
that merely advertise the goods, are not acceptable to show use [before the U.S. Patent and Trademark Office]. The website printout must contain photographs of the mark on the goods or their packaging for the website to qualify as a type of electronic catalog, as cited in Lands End v. Manbeck.

This case held that a printed paper catalog could qualify as proof of use of the mark on goods if

1. the catalog contains a picture of the relevant goods;
2. it shows the mark sufficiently near the picture of the goods to associate the mark with the goods, e.g., above, beside or below the picture; and
3. there is information necessary to order the goods, e.g., a phone number, mailing address or email address. In the context of a website, it is quite probable that a “buy it now� or “add to shopping cart� button would also suffice for this third requirement.

Offering services via the Internet also constitutes use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. For downloadable computer software, the applicant may also submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if it indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.

TGIF for What Patent Geeks Really Talk About

From the Patent Law Practice Listserv:

--- In PatentLawPractice@yahoogroups.com, "Stephan"
wrote:

stupid question time--since the list is quiet. I have never known
whether you put the little plastic divider piece that comes w/ 3 ring binders in the front, or back, of the papers you file in there.

To: PatentLawPractice@yahoogroups.com
From: "Chris"
Date: Thu, 16 Dec 2004 15:22:37 -0000
Subject: [PatentLawPractice] Re: 3 ring binder query

Stephen,

According to: https://binders.securesites.com/sitehtml/faq.html

13. WHAT ARE SHEET LIFTERS?

They are pieces of rigid plastic that prevent pages from curling around the ring mechanism in a binder. As the binder is being closed,they help lift the sheets of paper up and over the rings. In round ring binders curved sheet lifters are placed between the front and back covers and the text. In D-ring binders, one flat sheet lifter is placed between the front cover and text.

--Chris

Online Dispute Resolution Resources

According to a November 17, 2004 article by Robert J. Ambrogi in Law Technology News, "A superb resource for keeping track of developments in this field is at ODR.info, http://www.odr.info/, the newest home of the Center for Information Technology and Dispute Resolution at the University of Massachusetts, Amherst. It exists to explore the use of technology and the Internet in dispute resolution."

The article goes on to compare three ODR providers:

• Cybersettle.com, www.cybersettle.com
• iCourthouse.com, www.i-courthouse.com
• SquareTrade.com, www.squaretrade.com

More ODR providers are listed here.

NDGa Bar Must Register for Electronic Filing

In anticipation of the requirement that members of the bar of the United States District Court for the Northern District of Georgia file their pleadings electronically beginning July 15, 2005, the Court has established January 1, 2005, as the date by which all members of its bar must register for electronic filing logins and passwords. Members of the bar may register electronically using the interactive application form on this website, or by mailing the application or presenting it in person to the Administrative Section of the Clerk's Office.

UK Innovation Minister Addresses Software Directive Critics

The U.K. Minister for Science & Innovation outlined his government's position on the EU Software Directive on Tuesday. "The current draft Directive will ensure that Europe continues to strikes the right balance and provides clarity as to what can and cannot be patented with regard to computer-implemented inventions, Lord Sainsbury said at a meeting with critics of the proposed directive. "It does not change anything, but maintains the status quo."

"The intention is to maintain high criteria for those seeking patent protection, and to prevent any drift in patent standards towards the current US position," added Peter Hayward of the U.K. Patent Office.

However, according to a report from ZDNet UK on December 14, 2004, "The laughs from the audience of experienced software developers in the DTI Conference Centre on Tuesday, as representatives of the UK Patent Office tried to in vain to [define the "technical effect" requirement for software patentability], appeared to convince Lord Sainsbury that more work needs to be done here."

Up to 20% of U.K. patent applications are for inventions which use software. Mere computer program listings, like lines of code, are protected by copyright but excluded from patent protection in the UK and Europe. However inventions in which software makes a technical contribution, like a mobile telephone or car engine management systems, have always been and will continue to be patentable.

The Directive is expected to return to the European Parliament for a second reading early next year.The U.K. Patent Office maintains a comprehensive information resource on the Directive.

A Look at the Problems Facing Artists Over I/P

The Duke Law School Center for the Study of the Public Domain has announced the finalists in in its "Framed" arts project moving image contest. The contest asked entrants to create short films demonstrating some of the tensions between art and intellectual property law, and the intellectual property issues artists face, focusing on either music or documentary film.

Watch here!

Pick your favorite entry here!

The Digital PhishNet is Cast

The folks at Digital PhishNet wants you to know that "Phishing is about to become a very dangerous sport."

According to their introductory press release, representatives from a number of industries and international law enforcement agencies have established Digital PhishNet, a collaborative enforcement operation that unites industry leaders in technology, banking, financial services and online auctioneering with law enforcement to tackle "phishing" online identity theft. Developing supporters of Digital PhishNet include America Online Inc., Digital River Inc., EarthLink Inc., Lycos Inc., Microsoft Corp., NetworkSolutions, VeriSign Inc., the Federal Bureau of Investigation (FBI), the Federal Trade Commission, the U.S. Secret Service and the U.S. Postal Inspection Service. Digital PhishNet establishes a single, unified line of communication between industry and law enforcement, so critical data to fight phishing can be compiled and provided to law enforcement in real time. While other industry groups have focused on identifying phishing Web sites and sharing best practices and case information, DigitalPhishNet claims to be the first group of its kind to focus on aiding criminal law enforcement and assisting in apprehending and prosecuting those responsible for committing crimes against consumers through phishing.

Apply for a free membership here.

Retail Domain Name Price Wars?

The Internet has added more than 10.9 million hostnames in 2004, and, according to NetCraft, domain name registration prices are dropping fast. They report that the current one-year .com price currently ranges from $4.98 (Yahoo) to $35.00 (Register.com).

Free Webcast Today: "E-Discovery 101"

E-Discovery 101
Discovery and the Use of Electronic Data in Litigation
December 15, 2004 10am Pacific/1pm Eastern (Webcast Length: 1 hour)
Presenter: Daniel Pelc of Fios electronic discovery services
Register for the Webcast

In this webcast, you will learn:

• The true definition of electronic discovery and how it differs from discovery of paper documents
• Steps in electronic discovery: collection, processing, review and production
• Applicable case law where electronic data determined the outcome
• How to capture the complete universe of evidence and the importance of metadata and attachments
• Cost effective strategies for electronic data discovery, including culling and analyzing data

Structure, Function, and the Importance of Claim-Type Differentiation

Click here anytime to listen to a rebroadcast of this November 2003 APLF Roundtable Event. The PowerPoint materials are available here. You'll also need RealPlayer installed on your computer.

You won't want to miss this one, especially after yesterday's Versa Corporation v. AG-BAG International Limited decision discussed below.

And feel free to contact me for an in-person presentation of these materials to your patent organization.

Obviousness Presumed Within Range of Multiple Refernces

In Iron Grip Barbell Company, Inc., et al. v. USA Sports, Inc. (Fed. Cir. December 14, 2004), the obviousness of Iron Grip’s three-grip weight plate (above) did not arise from any combination of elements from the prior art.

Rather, the issue of the '015 patent’s obviousness arises because the prior art showed one, two and four elongated handles on weight plates. A single elongated handle on a weight plate was disclosed by the ’140 patent. Two elongated handles on a weight plate was disclosed by the ’502 patent. Four elongated handles on a weight plate was disclosed by U.S. Design Patent No. 406,183 (“the ’183 patent�).

However, the court also noted that simply because an invention falls within a range disclosed by the prior art does not necessarily make it per se obvious. Both the genus and species may be patentable.

Nonetheless, where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention; or (2) that there are new and unexpected results relative to the prior art.

Alternative Language and Claim Differentiation Leads to Broad Means Plus Function Interpretation

In Versa Corporation v. AG-BAG International Limited (Fed. Cir. December 14, 1004), the court (rather selectively) looked at the specification, other language in the same claim, and structure a dependent claim to broadly construe "means associated with the bagging machine for creating air channels in the compost material in said bag to enhance the composting of the compost material" so as not to require the flutes that were illustrated in the drawings. The courts citations are ommitted in the excerpt below.

In most places the specification describes the invention as including both flutes and perforated pipe, and the drawings show both flutes and perforated pipe. Specifically, the abstract states that "[t]he presence of air in the channels created by the flutes and the air present in the perforated pipe ensures that sufficient air will be present in the mass to achieve complete decomposition of the material." The specification further states that "[t]he air present in the grooves in the material [i.e., the flutes] and the air present in the perforated pipe causes the material to properly decompose." However, the specification also points out that both structures are not required, stating: "[I]t is believed that sufficient air will be present to achieve decomposition with either the channels 48 or the perforated pipe 50 although it is preferred that both the flutes 46 and the pipe 50 be utilized." We conclude that, in light of this disclosure, flutes are not essential.

Moreover, here the language of the claim itself also suggests that the means for creating air channels does not have to include flutes. After setting forth the "means . . . for creating air channels" limitation, that limitation is further defined by the next clause of the claim, which reads: "said means for creating air channels comprising positioning means which positions at least one elongated, perforated pipe . . . ." Although "comprising" language is not limiting and may include features not recited in the claim, such language cannot be read to require other structure. Thus the claim language itself shows that flutes are not required structure for the "means . . . for creating air channels."

Furthermore, the doctrine of claim differentiation supports the conclusion that flutes are not necessary structure. The doctrine of claim differentiation "create[s] a presumption that each claim in a patent has a different scope." The difference in meaning and scope between claims is presumed to be significant "[t]o the extent that the absence of such difference in meaning and scope would make a claim superfluous." Here, claim 2 of the ’910 patent depends from claim 1 and adds that flutes are "also" present:

2. The machine of claim 1 wherein said tunnel means has inner and outer surfaces and wherein said means for creating air channels also comprises spaced-apart inwardly projecting flutes positioned on the inner surface of said tunnel means.

However, as noted in the dissent by Judge Newman, other parts of the specification describe the flutes working in conjunction the perforated pipe to ensure that sufficient air will be present in the material to achieve complete decomposition. In her view, the applicant's "belief" statement in the specification did not require the air channels and was not the invention that was patented.

The specification, drawings, and prosecution history all teach that a material aspect of the device is the air channels or grooves created by the plurality of flutes. The patentee may have "believed" that some other structure could achieve decomposition, but that is not what was presented for examination.

So what's a patent practioner to do, you ask? I say, use as much "claim-type differentiation" as possible and hope like hell that you never have to bet your career on a means-plus-function claim.

Click here anytime to listen to a rebroadcast of the November 2003 APLF Roundtable Event on "Structure, Function, and the Importance of Claim-Type Differentiation." The PowerPoint materials are available here. You'll also need RealPlayer installed on your computer.

And, of course, feel free to contact me for an in-person presentation of these materials to your patent organization.

System with Foreign Component Infringes U.S. Patent

In NTP, Inc. v. Research in Motion, LTD. (Fed. Cir. December 14, 2004), the court held that the foreign location of a component of an otherwise infringing system does NOT prevent the application of 35 USC 271(a) when that component facilitates operation of the accused system in the United States.

Under Section 271(a), the "use" of "any patented invention within the United States . . .during the term of the patent therefor, infringes the patent." The territorial reach of a patent right is limited, so that
section 271(a) is only actionable against patent infringement that occurs within the United States. According to the court, however, this "plain language of section 271(a) does not preclude infringement where a system such as RIM’s, alleged to infringe a system or method claim, is used within the United States even though a component of that system is physically located outside the United States."

NTP's claims were directed to systems and methods for sending email messages between two subscribers where the transmission is made between an originating processor and destination processor. Although RIM’s Relay, located in Canada, was the only component that satisfied the "interface" of the "interface switch" limitation in the asserted claims, because all of the other components of RIM’s accused system are located in the United States, and the control and beneficial use of RIM’s system occur in the United States, the court concluded that the situs of the "use" of RIM’s system for purposes of section 271(a) is the United States.

Like the court in Decca, we conclude that the location of
RIM’s customers and their purchase of the BlackBerry devices establishing control and beneficial use of the BlackBerry system within the United States satisfactorily establish territoriality under section 271(a). We thus affirm the judgment of the district court that section 271(a) applies to RIM’s
allegedly infringing conduct.

In Decca, the court addressed a claim of infringement by the government’s "Omega" navigation system for global positioning of ships and aircraft. The system included one "master" control station, located in the United States, and several planned transmitter stations, to be located around the world, including in Norway. The government relied on Deepsouth Packing Co.
v. Laitram Corp. (overturned with the enactment of 35 U.S.C. § 271(f) in 1984) to assert that the location of the stations outside the United States prevented infringement, as "a claim is infringed only when an operative assembly of the entire claimed combination is made or used within the territorial limits of the United States." The Court of Claims, soundly rejected that argument, finding that the "Omega" navigation system was an infringing "use" under section 271(a).

The case before us can be distinguished from Deepsouth in that the location of the infringement is within United States territory, not abroad as in Deepsouth. Even though one of the accused components in RIM’s BlackBerry system may not be
physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States.

.MOBI and .JOBS sTLDs Move Forward

On December 13, 2004, the Internet Corporation for Assigned Names and Numbers ("ICANN") announced that it has has entered into commercial and technical negotiations with two additional candidate sponsored top-level domain ("sTLD") registries, ".JOBS" and ".MOBI." The move adds to the other two candidate sTLD registries, ".POST" and ".TRAVEL," that were announced in October.

This can't be good for the folks at ".MP."

What it Takes to Be a Famous Mark

This October 2004 Report by the INTA Dilution Committee addresses what is required for a mark to be found famous in the context of a claim for trademark dilution. Other reports that were prepared under the auspices of the INTA as groundwork for the introduction of a dilution reform bill in early 2005 include

Defenses to a Dilution Claim Under the FTDA
Proof of Dilution in the United States
U.S. State Dilution Laws
Summary of State Dilution Cases
The Protection of Well-Known Marks in the European Union, Canada and the MiddleEast
Appendix A - Summaries of Key OHIM Decisions
Appendix B - Austria, Denmark, Finland, Sweden
Appendix C - Benelux, Ireland, United Kingdom
Appendix D - France, Germany, Italy, Spain
Appendix E - Hungary, Latvia, Slovakia, Slovenia
Appendix F - Norway, Switzerland, Czech Republic, Poland
Appendix G - Bahrain, Egypt, Gaza, Israel
The Protection of Well-Known Marks in Asia-Pacific, Latin America and Africa
Asia-Pacific and Africa
Latin America

False Whois Data to Create Presumption of Wilful Infringement

On December 9, 2004 Congress passed the Intellectual Property Protection and Courts Amendments Act of 2004 (H.R. 3632). The International Trademark Association is reporting that President Bush is expected to sign the legislation into law.

If enacted, the bill will rewrite federal criminal code provisions regarding trafficking in counterfeit labels and also create a new Subsection 35(e)of the Lanham Act (15 USC 1117) with regard to willful infringement. On the latter point, it will create a rebuttable presumption that the infringement in connection with an online location was committed willfully for purposes of determining relief where the violator knowingly provided or caused to be provided materially false "Whois" contact information.

UDRP Decision Database and Statistics

According to the Uniform Domain Named Dispute Resolution Database, ("UDRP-DB") statistics page, their decisions break down according to the following "criteria involving bad faith:"

• 39.3% The respondent has registered the domain, attracted users by creating confusion with the complainant's mark
• 30% The domain name was registered with the purpose of transferring it to complainant or a competitor for a profit
• 14.1% The purpose of registration was to prevent the owner of the trademark from using the domain name, and the respondent has a pattern of such conduct.
• 13.9% No bad faith: the domain name either not registered, or not used in bad faith
• 9.1% The purpose of registration was to disrupt the business of a competitor
• 15.1% Some other evidence of bad-faith registration exists

Germans Register Community Designs While Americans Register Community Trademarks

According to the first newsletter of the European Office for the Harmonization of the Internal Market, or OHIM, about 71,000 Registered Community Designs have been processed during the first two years of operation with less than 1% being rejected.

The ownership of these "RCDs" is concentrated in the hands of applicants from western countries. Applicants from EU Member States own 77% of Community designs and five countries (Germany, Italy, United Kingdom, France and Spain) represent 65% of the designs filed. It is also interesting to note that, at the top of the ranking, there is a clear difference between the profile of Community Trademark owners (25% are of US origin) and the profile of RCD owners (25% are of German origin).

The ownership of RCDs is also concentrated into a relatively small number of industries. Nearly 80% of designs are concentrated in 13 Locarno classes and the five industries which use the system most represent 40% of design applications: namely furnishing (6), packaging (09), clothing (02), fluid distribution equipment (23) and household goods (7). These reflect the national or international levels of design registration.

Click here for more RCD statistics.

Click here for general information about design registrations in the European Community.

Confusion Over Tradenames in China

In a December 5, 2004 report by China Daily, Zhang Ming, an official with the Corporation Registration Office under the State Administration for Industry and Commerce ("SAIC") is reported as saying that "Technical problems and system differences between the trademark and corporation registration procedures have created an obstacle in trademark protection." Apparently, the databases of the 4,000 corporation registration stations across the country are not linked nationwide, which "makes it hard for registration officials to spot trademark infringements" when dealing with an application for corporation registration. "This loophole has sparked a conflict between trademarks and the names of corporations, yielding a group of companies which lean on well-known trademarks as cash cows," said Liu Min, an official with the Fair Trade Bureau under the State Administration of Industry and Commerce. "To prevent companies from registering and using the similar names of famous trademarks, a well-known corporation and trademark database needs to be established as soon as possible," said Lu Pushun, secretary-general of China branch of the International Association of Intellectual Property Rights Protection.

Corporate name and trademark registration databases are similarly unlinked in the U.S. without creating any such "obstacles." This is because, under U.S. law, a corporate name, or "tradename," is merely the moniker under which the owner(s) of an entity have identified themselves, such as for the payment of taxes and debts. A "trademark," on the other hand distinguishes a specific product or service of that entity from others in the marketplace. Although they can sometimes overlap, tradenames are typically used to link a business entity with the names of its owners in the eyes of the lenders and taxing authorities, while a trademarks are used to link a business with the products or services that it provides to the public. In fact, the U.S. Trademark Office does not consider tradenames during the registration process.

Rights in famous marks are handled under yet another legal doctrine. So-called trademark "dilution" is the unauthorized use of a highly distinctive mark that tends to blur its distinctiveness or tarnish its image. Unlike the standard for trademark infringement, dilution does not specifically require likelihood of confusion, deception or mistake. The U.S. does not have any state-sanctioned list of famous marks. Rather, the distinctiveness of a mark and/or its dilution are considered on a case-by-case basis.