Hoping to prevent wealthy corporations from staking patent claims to traditional remedies, some nongovernmental organizations and even a few governments are cataloging indigenous medicines and plant species in online databases. The American Association for the Advancement of Science maintains a database at shr.aaas.org/tek that is open to traditional knowledge holders who want to preempt patenting by others. Links to similar databases can be found on the Web site of the World Intellectual Property Organization (http://www.wipo.int/tk/en/).
However, Devinder Sharma, chair of the New Delhi-based Forum for Biotechnology & Food Security, a collective of scientists, farmers, and environmentalists, argues that instead of relying on databases of traditional knowledge, developing countries should follow the example of China's government, which has secured around 12,000 patents on its own traditional medicines.
updates for Tuesday, August 31, 2004
Click here for more information on "Unfair Import Investigations Before the U.S. International Trade Commission."
Click here for the IPO's "Fee Structure under H.R. 1561."
From: Dana R. Colarulli
Sent: Monday, August 30, 2004 7:50 PM
To: Heinze, William
Subject: FW: Your
Bloglet Update from "I/P Updates"
I saw the copy of the fee structure comparison in today's Bloglet and I
question at least a few of the numbers. Attached is a much simpler version of a comparison that IPO developed (this version provides much less detail but is a helpful very general comparison). I've highlighted additional claim fees below.
S.1760 listed on the cited chart is no longer a viable bill and H.R.1561,
passed by the House on March 3, 2004, is now the active legislation pending in front of the Senate.
Thanks for your Bloglet. Let me know if I can answer any questions about status of other legislation.
Mr. Dana Robert Colarulli
Government Relations and Legislative Counsel
Intellectual Property Owners Association (IPO)
1255 23rd Street, NW, Washington, DC 20037
From: firstname.lastname@example.org [mailto:email@example.com]
Sent: Sunday, August 29, 2004 7:27 AM
To: Dana Colarulli
Subject: Your Bloglet Update from "I/P Updates"
Here are your daily Bloglet subscriptions:
I/P Updates . . .
updates for Monday, August 30, 2004
According to their website, RoyaltyStatÂ® is a subscription database of royalty rates and license agreements compiled from the U.S. Securities and Exchange Commission (SEC) Edgar Archive. In RoyaltyStat you can find comparable royalty rates for valuing (or licensing) intangible assets. Every license agreement in RoyaltyStat contains at least one numerical (non-redacted) royalty rate, and the database is updated every business day. Click here for a preview.
Nick Godici is Commissioner for Patents. Esther Kepplinger is Deputy Director for Patent Operations. Lois Boland is Director of International Relations.
"You are going to see GE being more proactive in the way that it uses its intellectual property. One of the things I have to look at is whether we are extracting the value from our IP that justifies the investments we have made in creating it," he says. However, he also stresses this is not just about the straightforward monetisation of portfolios. "There are also ways to manage IP strategically for value, such as tax issues, donations and joint venturing, that all have to be looked at . . . We have several licensing organisations, including a central one, and they all have a direct reporting line into me, as well as to other people. We have to decide how to manage the relationships involved and to work out whether it can be done in a more coordinated fashion. The answer is probably yes it can but we also have to come up with a system that continues to respect the individuality of the separate operations."
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updates for Saturday, August 28, 2004
"We hold that reliance by the Patent Office upon arguments made by the patentee during prosecution is not necessary to find argument-based estoppel.... Because we reverse some of the district court's claim construction, we vacate the court's judgment of noninfringement and remand."
updates for Friday, August 27, 2004
In this Angel Investor News article, Behfar Bastani, Evelyn Mintarno, Dennis Fernandez present an overview of university tech transfer and approaches for finding and accessing university technology. They point out potential pitfalls for a technology company looking to bring the power of university research to fruition in its products, and illustrate typical licensing terms and different types of licenses.
In addition, certain rules on fees associated with practices of the Board of Patent Appeals and Interferences are being consolidated in a new part 41 of 37 CFR. These changes were made in accordance with applicable provisions of the recent notice on Rules of Practice Before the Board of Patent Appeals and Interferences which become effective September 13, 2004.
1. Consider trade secrets.
2. Consider doing it yourself.
3. Understand patent basics.
4. Consider hiring a patent agent.
5. Quiz your patent professional.
6. Ask good questions.
7. Do a patent search.
8. Consider filing a provisional patent application.
9. File at the right time.
10. Get insurance.
According to the abstract of WIPO Patent Publication No. WO9219458,
Using two new punctuation marks, the question comma and the exclamation comma: and respectively, inquisitiveness and exclamation may be expressed within a written sentence structure, so that thoughts may be more easily and clearly conveyed to readers. The new punctuation marks are for use within a written sentence between words as a comma, but with more feeling or inquisitiveness. This affords an author greater choice of method of punctuating, e.g., to reflect spoken language more closely. Moreover, the new punctuation fits rather neatly into the scheme of things, simply filling a gap, with a little or no explanation needed. Also, the interabang comma if the interabang is available. An example of usage follows. Readers encountering their first question comma in print may silently remark: "Clever (! + ? + , =) funny I never saw one of those before".
But don't laugh too hard; you may already be infringing.
Thank Goodness It's Friday especially in New Zealand
updates for Thursday, August 26, 2004
According to the August 2004 "Radio Free PTO" newsletter of the Patent Office Professional Association,
"The USPTO is instructing its supervisors in ways to trick their employees into admitting unauthorized absence and phone use without informing employees of their rights under the law and their labor contract. . . . The moment that a management representative or supervisor asks if a phone call was for business or personal reasons, even if it sounds like a friendly exchange, that is the moment when you are involved in an investigatory interview and you are entitled to union representation. It's unwise to continue the interview without requesting representation first and then immediately calling the union."The Patent Office Professional Association is the legally recognized voice of approximately 2700 examiners, classifiers, computer scientists, and other patent professionals.
According to an August 4, 2004 article in IP Law & Business, Robert Goldscheider arrived at this now-famous calculation in 1959 when one of his clients, Philco Corporation, had about 18 European licensees for its radio and phonograph patents. Goldscheider calculated that Philco's licensees assumed the major risk of commercializing their products, about 75 percent. That left 25 percent of the risk to licensor Philco, reflected in a 25/75 percent split of pretax profits. Probably the best-known economic damages expert in the nation, the 75-year-old has testified in more than 100 IP cases. "I have three homes, am worth several million dollars," he says. "I don't have to work unless I want to."
Chinese workers destroy counterfeit products in Guangzhou, southern China, on August 25, 2004, via Reuters.
updates for Wednesday, August 25, 2004
In this case, both the examiner and the Board found that toothbrush art is analogous to Bigio's hair brush invention. In support of that finding, the Board referred to the structure and function of the claimed invention in the application. The Board further assessed the field that one of skill in this art would consider within the same endeavor as the claimed invention. In other words, the Board applied the test for analogous art in keeping with the counsel of this court's predecessor: "The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush." In re Wolfe, 251 F.2d 854, 856 (CCPA 1958) (emphasis added).
In this case, the term "hair brush" alone does not specify the kind of hair to be groomed by the claimed invention. Thus, the term may reasonably encompass not only scalp hair brushes but also facial hair brushes. The Board correctly declined to accept Bigio's invitation to narrow the interpretation only to scalp hair by importing a limitation from the specification. Moreover, the Board's interpretation does not strain the bounds of the "broadest reasonable interpretation" of the term "hair brush." Indeed that term may reasonably encompass more than a grooming device for scalp hair. This court therefore affirms the Board's interpretation of "hair brush."
Because there is no dispute that the combination of the three toothbrush references renders Bigio's invention obvious, this court's affirmance of the Board's finding that toothbrush art is analogous to Bigio's invention disposes of all remaining issues in this appeal.
Easier Sequence Skipping - A checkbox has been added to the sequence window to indicate whether a sequence should be skipped. The sequence will be skipped if the box is checked and all data related to the skipped sequence can remain in the PatentIn 3.3 project during the sequence listing generation.
Sequence Type Conversion - PatentIn 3.3 allows sequence type conversion between non-protein type sequences by clicking on the new AlterSeqType button on the sequence window.
Direct Access - From the main window to the database window instead of the journal window is provided in PatentIn 3.3. The system also provides direct access from any publication window to any other publication windows.
More Date Validations - For example: all dates entered into the sequence listing must be earlier than the current date; the Current Filing Date must be more recent than the Prior Application Filing Date; and, the Publication Date must be more recent than the Filing Date.
updates for Tuesday, August 24, 2004
In fact, Koito did not even mention the JP '082 reference after introducing it into evidence. Koito's expert merely offered a conclusion of invalidity relating to a quintet of prior art patents which included JP '082, stating that
All these prior art patents provide for products and ways of making products with thick and thin sections. The gate locations are shown, and they all have inherently crossing flows in sections of the product, sometimes substantial sections of these products, such that they all would have a cross-laminated section as Turn Key is applying that term to the accused lenses.The Federal Circuit concluded that the district court erred in finding Koitoâ€™s evidence to be sufficient to meet Koito's burden of showing anticipation by "clear and convincing evidence."
We have consistently explained what is necessary to show anticipation by a given reference:Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory.General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity. This is so even when the reference has been submitted into evidence before the jury. Because Koito failed to articulate how the reference anticipates or makes obvious the '268 patent, it has not presented sufficient evidence for the jury with respect to the reference.
We cannot, however, so easily dismiss Koito's other evidence of anticipation and obviousness. At trial, Dr. Kazmer analyzed a TDK two-color cassette and discussed in detail the prior art Japanese patent 1-113886. In addition, Turn-Keyâ€™s expert Dr. Paul Brown admitted at trial that certain limitations of the '268 patent were present in the prior art. On remand, the district court should review the trial testimony and evidence, especially that regarding the plastic cassette technology, to determine whether Koito provided clear and convincing evidence to the jury on the issue of anticipation and obviousness to render the '268 patent invalid.
updates for Monday, August 23, 2004
"The very essence of a trademark is its ability to distinguish the goods and services of one trader from those of another. Traditionally, trademarks consist of words, letters, numerals or designs. However, innovative marketing technologies and electronic commerce are precipitating an evolution in the symbolic representation of trademarks. Any new and distinctive sign that can be graphically represented can be the object of a non-conventional trademark."The artcile discusses several forms of distinctive signs including color, sound, fragrance and holograms.
updates for Friday, August 20, 2004
Like the IPKat, I too am part appalled, and part entranced. "This ploy would appear to set new standards for brazen chutzpah," the 'Kat purred while directing fellow fanciers on the prowl for Internet scams to ScamBusters.org. MeeOuch!
* overdue book charges from the Los Angeles County Law LibraryJohn McGuckin, executive vice president, general counsel and secretary of Union Bank of California offers this advice -- "When in doubt, don't bill it, especially if the final bill for legal services has already been sent."
* computer service desk and secretarial time
* expert fees, for work done after a case was settled
* a bonus to the bill for good results after a lost trial
* three lawyers travelling first class when only one was needed
* a 30% "success fee" bonus for an uncontested takeover of a public company
* .3 or .5 hours for notifying a partner at another of the firm's offices that someone would be calling to seek assistance
Better yet, click here for information on electronic billing of intellectual property legal services.
updates for Thursday, August 19, 2004
Taiwan Semiconductor Requests Unfair Import Investigation of Semiconductor Devices
The complaint requests that an unfair import investigation be instituted involving "Certain Semiconductor Devices and Products Containing Same." The proposed respondents are: Semiconductor Manufacturing International Corporation (Cayman Islands), CHINA; Semiconductor Manufacturing International (Shanghai) Corporation, CHINA; SMIC Beijing, CHINA; and SMIC Americas, Fremont, California. The complaint has been designated as confidential and assigned Docket No. 337-2393 for indexing in the Commission's database.
The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.
Click here for more information on the importance of monitoring these ITC investigations, such as by subscribing to the free "I/P Updates" news service at http://www.ip-updates.com/. And click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.
not be held contributorily or vicariously liable for copyright infringements by users. According to the opinion,
As to the question at hand, the district court's grant of partial summary judgment to the Software Distributors is clearly dictated by applicable precedent. The Copyright Owners urge a re-examination of the law in the light of what they believe to be proper public policy, expanding exponentially the reach of the doctrines of contributory and vicarious copyright infringement. Not only would such a renovation conflict with binding precedent, it would be unwise. Doubtless, taking that step would satisfy the Copyright Owners' immediate economic aims. However, it would also alter general copyright law in profound ways with unknown ultimate consequences outside the present context.
Further, as we have observed, we live in a quicksilver technological environment with courts ill-suited to fix the flow of internet innovation. AT&T Corp. v. City of Portland, 216 F.3d 871, 876 (9th Cir. 1999). The introduction of new technology is always disruptive to old markets, and particularly to those copyright owners whose works are sold through wellestablished distribution mechanisms. Yet, history has shown that time and market forces often provide equilibrium in balancing interests, whether the new technology be a player piano, a copier, a tape recorder, a video recorder, a personal computer, a karaoke machine, or an MP3 player. Thus, it is prudent for courts to exercise caution before restructuring liability theories for the purpose of addressing specific market abuses, despite their apparent present magnitude. Indeed, the Supreme Court has admonished us to leave such matters to Congress. In Sony-Betamax, the Court spoke quite clearly about the role of Congress in applying copyright law to new technologies. As the Supreme Court stated in that case, "The direction of Art. I is that Congress shall have the power to promote the progress of science and the useful arts. When, as here, the Constitution is permissive, the sign of how far Congress has chosen to go can come only from Congress." 464 U.S. at 456 (quoting Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 530 (1972)).
Appellants presented a printed slide presentation (or "the Liu reference") entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting. The reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention behind the '950 patent application. Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information. For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a "printed publication" under Sec. 102(b).
[A]lthough we agree with the PTO that foreign sales may enable an otherwise non-enabling publication, we find that factual issues remain with respect to the accessibility of the foreign sales of the claimed plants and the reproducibility of the plants. The Board did not specifically address how readily one skilled in the art could have learned of the foreign sales from the printed PBR applications. In the present appeals, the examiners discovered the PBR applications through a search of the relevant PBR database. They subsequently asked Appellants to provide copies of the applications, as well as any additional information regarding the claimed plant varieties. Both appellants responded that the claimed plants had been on sale in foreign countries. It is unclear, however, whether a skilled artisan would have known of the foreign sales. The foreign sale must not be an obscure, solitary occurrence that would go unnoticed by those skilled in the art. Its availability must have been known in the art, just as a printed publication must be publicly available. See In re Bayer, 568 F.2d 1357, 1361 (CCPA 1978) (â€œ[A] printed document may qualify as a â€˜publicationâ€™ under 35 U.S.C. Â§ 102(b) . . . so long as accessibility is sufficient to raise a presumption that the public concerned with the art would know of the invention.â€� (quotation omitted)). We have stated before with respect to prior art references that â€œ[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.â€� Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).
Moreover, the Board did not find that, even if the interested public would readily know of the foreign sales, those sales enabled one of ordinary skill in the art to reproduce the claimed plants without undue experimentation. Such a determination is critical to the question whether the foreign sales would enable the printed publications.
We therefore remand both cases for further factual findings relating to the accessibility of the foreign sales of the claimed plants and the reproducibility of the claimed plants from the plants that were sold.
updates for Wednesday, August 18, 2004
New Software for the USPTO's Patent Electronic Filing System (EFS) Starting August 22
Date: Wed, 18 Aug 2004 10:47:35 -0400
Sender: "Smith, Michelle"
Improvements to the Patent Electronic Filing System (EFS)
The United States Patent and Trademark Office (USPTO) is pleased to announce improvements to the Patent Electronic Filing System (EFS). Beginning Sunday, August 22, 2004 the Office will make available EFS-ABX version 1.1 and ePAVE version 5.1d.
The New Authoring Tool - EFS-ABX
EFS-ABX is the new authoring tool used to create patent application specifications. EFS-ABX allows users to develop a patent application completely in MicrosoftÂ® Word which greatly improves the workflow of creating a patent specification over current authoring tools. Additional features and benefits of EFS-ABX include:
EFS-ABX converts all images contained in the MicrosoftÂ® Word file to TIFF files. Users no longer need to scan and save every image in their specification as a TIFF file and are now able to create and edit graphics using any tool and format that is integrated with MicrosoftÂ® Word.
EFX-ABX validates the application specification against USPTO business rules and format requirements.
EFS-ABX allows users to import a Microsoft Word document and an XML file created using the previous authoring tool, PASAT.
ePAVE Version 5.1d
The new ePAVE software still includes all of the familiar functions of the previous version, and has been updated to accept only specifications created using EFS-ABX to ensure that the legal record at the USPTO matches what the customer created and intended. ePAVE 5.1d also includes an enhanced Address Book Feature available on all data entry screens.
To accommodate changes to the EFS Server related to the release of the new versions of the EFS software, EFS will be unavailable from 11:00 PM Saturday, August 21, 2004 until 4 PM Sunday, August 22, 2004.
During this time the USPTO EFS server will NOT accept electronic filings of Patent Applications and related documents. External customers are strongly encouraged to submit â€˜in processâ€™ Patent Application Specifications
using ePAVE 5.1a, prior to the scheduled outage. Submissions after 4 PM Sunday, August 22, 2004 will require that the user install and use both EFS-ABX v1.1 and ePAVE 5.1d.
Customer Software Requirements
The new version of EFS requires MicrosoftÂ® Windows2000 with Service Pack 2 or later or Windows XP with Service Pack 1, and MicrosoftÂ® Word as provided in MicrosoftÂ® Office 2000 or Office XP. For questions and additional
information on the system requirements, please contact the Patent Electronic Business Center (see the Getting Started Section below for contact information).
The USPTO is mailing a diskette with the upgraded EFS software to all of our e-filing customers. Software downloads and information regarding enhancements, upgrades, frequently asked questions, and support are also available on our website. Please visit the Electronic Filing Software page at http://www.uspto.gov/ebc/efs/index.html. You can also request free copies of our software on CD by contacting the Patent Electronic Business Center. The Patent EBC is a complete customer service center that supports all Patent e-business products and service applications. EBC representatives can be reached at 703-305-3028 or toll free at 866-217-9197 between the hours of 6 a.m. and midnight Monday through Friday EST, or by e-mail at firstname.lastname@example.org.
Additional information is available on the Patent EBC Web site at http://www.uspto.gov/ebc/index.html.
updates for Tuesday, August 17, 2004
Click here for the Merriam Webster On-Line Dictionary and Thesaurus and herw for the Merriam Webster On-Line Toolbar.
Thanks again to the "Patently Obvious: MBHB Patent Law Blog."
updates for Monday, August 16, 2004
updates for Sunday, August 15, 2004
updates for Friday, August 13, 2004
updates for Thursday, August 12, 2004
U.K. Minister for Science and Innovation Lord Sainsbury says "Intellectual assets provide you with the key to growing your business. Through this campaign we want to ensure that more SMEs understand the financial opportunities of exploiting their creativity and ideas." This new site is managed by the U.K Patent Office as part of a campaign with the Chartered Institute of Patent Agents and the Institute of Trademark Attorneys to make businesses more aware of the benefits of protecting their intellectual assets and to prevent them incurring unnecessary costs.
The order directs the U.S. Customs Service to exclude these articles from entry into the United States. In contrast to the typical "limited" exclusion order that excludes infringing articles that originate from a respondent named in a Section 337 complaint, a "general" exclusion order directs the U.S. Customs Service to exclude all infringing articles, without regard to source. The President who may now, within 60 days, disapprove the order for policy reasons. However, such disapproving are rare and during this "Presidential review period," infringing articles may enter the United States only if the importer posts a bond with the Customs Service equal to 80% of the entered value of the goods. If the President does not disapprove the order, then infringing imports may no longer be imported and the complainant may seek to have previously posted bonds forfeited to it.
Click here for information on enforcement of Section 337 remedial orders.
The key to the development of a successful technology licensing team is to develop an understanding of, and empathy for, the priorities of other players in the relationship. Look at the players in the relationship as though they were components in a clock. A clockâ€™s gears, by design, move and operate independently from one another. This very precise interrelationship is integral to the clock functioning properly. Requiring otherwise would not only cause the clock to cease keeping proper time, it would in fact destroy the clockâ€™s individual components. This also applies to teams and players in a technology
Courtesy of Anthony Cerminaro's Bizz Bang Buzz, "covering news and information relevant to entrepreneurs, executives and others interested in business and technology."
"Until Appellants obtained the complete amino acid sequence of TBP-II, they had no more than a wish to know the identity of the DNA encoding it.
As Appellants point out, we have recognized that the written description requirement can in some cases be satisfied by functional description. See, e.g., Enzo, 296 F.3d at 1324 ("It is not correct, however, that all functional descriptions of genetic material fail to meet the written description requirement."). Nonetheless, such functional description can be sufficient only if there is also a structure-function relationship known to those of ordinary skill in the art."
"As we explained above, such a well-known relationship exists between a nucleic acid molecule's structure and its function in encoding a particular amino acid sequence: Given the amino acid sequence, one can determine the chemical structure of all nucleic acid molecules that can serve the function of encoding that sequence. Without that sequence, however, or with only a partial sequence, those structures cannot be determined and the written description requirement is consequently not met. As we explained in Enzo, the Guidelines for Examination of Patent Applications under the 35 U.S.C. Â§ 112, 1, "Written Description" Requirement, 66 Fed. Reg. 1099 (Jan. 5, 2001) ("Guidelines"), state that the written description requirement can be met by "show[ing] that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics . . . i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics."
"Appellants have provided no evidence that there is any known or disclosed correlation between the combination of a partial structure of a protein, the protein's biological activity, and the protein's molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other.The Board therefore correctly affirmed the examiner's determination that the specification of the '129 application does not provide an adequate written description of the pending claims."
Click here for more on "Structure, Function, and the Spectrum of Claim-Type Differentiation"
In Innova/Pure Water v. Safari Water Filtration Sys. (Fed. Cir. 2004), Innova's appeal turned on the correct interpretation of the disputed claim term, "operatively connected."
According to the district court, the ordinary meaning of "said tube operatively connected to said cap" requires that the two components be "affix[ed] . . . by some tenacious means of physical engagement that results in a unitary structure." Innova challenges this construction as improperly importing a tenacious physical engagement limitation into claim language that does not require any such thing. Safari concurs with the district court. The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure. Neither party asserts that the term "operatively connected" is a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components. Generally speaking, and as used in the '759 patent, it means the claimed components must be connected in a way to perform a designated function. In the absence of modifiers, general descriptive terms are typically construed as having their full meaning. . . .For the same reasons, the district court erred in granting summary judgment of no infringement under the doctrine of equivalents based on its factual conclusion that "merely adjoining or abutting . . . is not the equivalent of affixing the tube to the cap."
updates for Wednesday, August 11, 2004
Ministry of Economic Affairs Intellectual Property Office General Director Tsai Lien-sheng, Ministry of Justice Department of Prosecutorial Affairs Director Tsai Pi-yu, BSA Taiwan Committee Co-chair Sung Hong-ti, and Information Service Industry Association Secretary General David Chang launch a 45-day offensive against business software piratesin Taipei on August 10, 2004.
- The burden of proving priority in an interference is lower than the burden of proving invalidity in a patent infringement action.
- Patentability issues can be raised in addition to priority in an interference.
- The Board is more likely to understand the issues than a judge or jury.
- An interference affords flexibility not provided in the district courts.
- There is limited discovery in an interference.
- There is no live testimony or trial in an interference.
- An interference is usually less expensive.
- There remain opportunities for trial litigation after an interference.
- Provoking an interference may afford a party a stronger settlement position.
- A successful interference outcome can result in a patent term extension.
updates for Tuesday, August 10, 2004
However, since all of those remaining States are covered by a regional designation (AP or EP), applicants can always enter the regional phase in those States within the time limit under PCT Article 22(3) of 31 months. A list of time limits applicable for each designated/elected Office for entering the national phase under Chapters I and II of the PCT is available here.
TZ United Republic
An updated table of the "Types of Protection Available via the PCT" has been published in the newsletter.
Also, don't forget that you can file "dummy" applications in the "demo" mode of the PCT-SAFE software. By doing this, you will be able to try the software out and thus be familiar with it once your receiving Office announces that it has started accepting international applications filed electronically using PCT-SAFE. This will reduce the risk of making any mistakes when you start filing real PCT applications electronically.
Free Teleconference Today: Economics and Patent Damages
Intellectual Property Master Class
Economics & Patent Damages
Tuesday, August 10, 2004
1:00 pm-2:00 pm
Click Here To Register
Matt Lynde, Ph.D., Vice President, Cornerstone Research will present the economic fundamentals that underlie certain theories of patent damages theories within the constraints of U.S. patent law, such as lost sales, lost profits, price erosion, non-infringing alternatives and convoyed sales.
updates for Monday, August 09, 2004
The answer: 1,000 shoes within 10 days, at $4 a pair.
"This is the most profitable criminal venture, as far as I know, on Earth . . . Counterfeiting," said attorney Harley Lewin. â€œAnd your partners donâ€™t kill you.â€�
"We don't want to ignore counterfeiting, but for those foreign companies, when they enter the Chinese market, I'm afraid they should also pay some cost due to the realities of China," Gao Feng, the head of China's anti-counterfeiting police unit, reportedly told the American television show.
The Agreement will only enter into force when 8 signatories including France, Germany and the UK have ratified it. To date, Denmark, Slovenia, Monaco have ratified, and Germany has adopted amendments to patent law in line with the London Agreement which will come into force three months after the Agreement has been ratified.
Responses are welcome from anyone in the UK or abroad who is interested in the operation of the intellectual property system in the UK or in Europe or those with an interest in translations, but especially from those who have been, are, or expect to be users of the system. Responses are due by November 30, 2004.
More information can be found on WIPO's Traditional Knowledge site.
The "march-in" provisions of the Bayh-Dole Act, 35 U.S.C. Â§ 203, authorize the federal Government to require federal funding recipients to license their inventions to a responsible applicant. Section 203(a) of the Act provides, in part, that march-in rights may be exercised by the funding Federal agency based on any of four conditions:
1) when "practical application" of the invention is not expected to
be achieved in a reasonable time,
(2) when the action is necessary to alleviate health or safety needs,
(3) when action is necessary to meet requirements for public use
specified by Federal regulation that the contractor has failed to meet or
(4) when the U.S. industry preference of Section 204 of the Act has not
According to the determination, NorvirÂ® has been available for use by patients with HIV/AIDS since 1996 and is being actively marketed by Abbott and prescribed by physicians as standalone protease inhibitor and a booster to increase the effectiveness of other drugs. Accordingly, this drug has reached practical application and met health or safety needs as required by the Bayh-Dole Act. The NIH believes that the issue of drug pricing is one that would be more appropriately addressed by Congress, as it considers these matters in a larger context. The NIH also maintains that the FTC is the appropriate agency to address the question of whether Abbott has engaged in anti-competitive behavior.
updates for Sunday, August 08, 2004
updates for Friday, August 06, 2004
The largest library in the world, the Library of Congress comprises more than 127 million items acquired by purchase, gift, exchange, and copies of works submitted to the Copyright Office for registration or mandatory deposit. Late in deliberations on the bill that became the 1976 Copyright Act, concern arose about whether mandatory deposit of only published works would be sufficient for the Library's collections, given that owners of publicly disseminated broadcasts were not obligated to deposit their works in the Library of Congress. This issues was addressed by giving the Library authority to record unpublished transmission programs in all cases where the copyright owner had made or authorized a fixation of the program. The Copyright Office was also given demand authority to obtain fixations of these programs by transfer, loan, or sale at cost.
Click here for more Chinese Patent Statistics.
According to U.S. Patent No. 6,293,874 entitled "User-Operated Amusement Apparatus for Kicking," it is an object of this invention "to provide an amusement apparatus which is user-operated and controlled, and is designed to inflict repetitive blows on the user without resetting of the apparatus and/or repositioning of the user between blows. It is another object of the present invention to provide an amusement apparatus having a user controlled crank regulating the frequency and force of the blows inflicted upon the user's buttocks. It is another object of the present invention to provide an amusement apparatus for self-inflicting repetitive blows to a user and which is foldable into a self-containing package for storage or shipping."
For more, see "Linux Companies Address IP Concerns"
Applicants must print the certified copies to paper if required by the intellectual property office to which it is submitted. Should another intellectual property office not accept such a paper or electronic certified copy of a patent application, upon presentation of a notice of non-acceptance by the that office, the USPTO will provide a substitute paper copy. The substitute paper copy will include a letter addressed to the foreign office, and signed by an official of the USPTO, indicating that the certified copy of the application as filed is to be accepted under Article 4 of the Paris Convention. Since the USPTO will no longer bind or rivet paper certified copies of patent applications as filed or file wrappers and contents, copies produced by the Office will be identical to copies printed by an applicant from the electronic certified copy.
updates for Thursday, August 05, 2004
They also provide expert witness services and, according to their jobs website, are "especially interested in [hiring] attorneys, commissioners or former judges who have had previous experience on state Attorney Disciplinary Commissions who are expert in dealing with attorney disciplinary issues in order to file Attorney Disciplinary Complaints against opposing counsel that may violate the state Professional Code of Responsibility while attempting to prosecute a fraudulent trademark application, Opposition, Petition to Cancel and/or District Court Proceeding."
For more about how "Rentamark is engaged in a full blown legal warfare to protect its famous trademarks from infringers," see footnotes 15-16 in Central Mfg. Co.. V. Medtronic Sofamor Danek, Inc., Opp. No. 91154585.
Although his remarks were apparently directed at Arlene McCarthy, the rapporteur for various other intellectual property directives before the European Union, the word "McCarthyism" also carries connotations of false, even hysterical, accusation.
updates for Wednesday, August 04, 2004
Post-WTO Technology Transfer in China
1) The transferor is required to warrant that he is the lawful owner of the technology provided, or that it has the right to assign or license such technology.There advice : "Exercise due diligence in negotiating technology import
(2) The transferor is required to warrant that the supplied
technology is complete, accurate and effective, capable of reaching the technical goals agreed upon between the parties
(3) The transferor is prohibited from unreasonably restricting
the export channels for products produced by transferee's using the technology imported.
contracts, so that existing and new regulatory and contractual risks are taken into account and properly addressed in the contracts."
EPO Virtual espace@net Classroom August 5-6
updates for Tuesday, August 03, 2004
Free I/P Seminars
According to Sheryl Willert in "Practical Considerations To Protect Trade Secrets," several basic requirements for protecting trade secrets can be gleaned from the cases discussed in her article:
- Reasonable precautions against industrial espionage
- Marking plans and documents 'confidential'
- Use of 'confidentiality' legends, warnings and agreements
- Restricting visitors and similar types of plant security
- Locking up or otherwise securing sensitive information
- Taking technical precautions, such as dividing the system into steps handled by different individuals or departments
- Copy protection and embedded codes to trace copies
- Employee exit interviews.