updates for Monday, November 22, 2004
For those who just can't wait for the President to return from South America, here are links to the revised (non-fillable) PDF forms:
PTO/SB/17i Processing Fee Under 37 CFR 17(i) Transmittal
PTO/SB/17p Petition Fee Under 37 CFR 17(f), (g) & (h) Transmittal
PTO/SB/23 Petition for Extension of Time under 37 CFR 1.136(b)
USPTO Fee Increases Effective on Presidential Signature
AIPLA members click here for a summary of the relevant provisions.
(Don't tell my wife where you saw this. She won't like that I'm working during our vacation.)
updates for Friday, November 19, 2004
In his view, the social, cultural and economic costs of past statutes that expand the boundaries of intellectual property are substantial, while the social benefits are often very small. Courts should therefore take the social effects of intellectual property statutes into account when interpreting these statutes. He goes on to suggest an array of interpretive possibilities for giving the Progress Clause a meaning that dovetails with his view of the Clause's text, history, and precedent.
In Judge Scheindlin's view, it is not sufficient for counsel to simply notify employees that there is a litigation hold and expect that the party will then retain and produce all relevant information. Counsel must take reasonable affirmative steps to accomplish the following:
- "identify sources of discoverable information";
- "put in place a litigation hold and make that known to all relevant employees by communicating with them directly";
- reiterate the litigation hold instructions "regularly" and "monitor compliance so that all sources of discoverable information are identified and retained on a continuing basis"; and
- "call for employees to produce copies of relevant electronic evidence, and . . . arrange for the segregation and safeguarding of any archival media (e.g., back-up tapes) that the [client] has a duty to preserve."
Deleting files doesn't actually destroy all the data--it just makes it harder to find. To make sure those files are gone, you need to overwrite them with a tool like Eraser.
The overwriting methods implemented by this free software are based on Peter Gutmann's paper entitled "Secure Deletion of Data from Magnetic and Solid-State Memory," the National Industrial Security Program Operating Manual of the US Department of Defense, and a fast cryptographic random number generator. You can also define your own overwriting methods.
Click here for awards and reviews.
updates for Thursday, November 18, 2004
According to their website, "Google Scholar enables you to search specifically for scholarly literature, including peer-reviewed papers, theses, books, preprints, abstracts and technical reports from all broad areas of research. Use Google Scholar to find articles from a wide variety of academic publishers, professional societies, preprint repositories and universities, as well as scholarly articles available across the web. Google Scholar also automatically analyzes and extracts citations and presents them as separate results, even if the documents they refer to are not online. This means your search results may include citations of older works and seminal articles that appear only in books or other offline publications."
Click here for more about Google Scholar from the New York Times.
The IPO Daily News also reported that "It is unclear how Congress will deal with the patent fee issue during its lame duck session that began yesterday."
The music activists at Downhill Battle have launched "two new websites in response to the attempts by lobbying groups for Hollywood and the software industry to force misleading and propagandistic curriculums about filesharing and online rights into public schools. The first page is called Kids Smell Bullshit (kidssmellbullshit.com) and, as you may have guessed, this one's for the kids. Complete with a letter / photo contest (win an ipod mini!), a wiki to transform the bogus curricula, and a ton of crazy crap that kids love."
"The second is a slightly more serious page called the Collaborative Copyright and Technology Law Curriculum (copyrightcurriculum.com). This one's for the grownups in the house who want to do some serious ass-whooping. It's a wiki (a collaborative editing/writing tool) for building a balanced, accurate copyright curriculum for teachers that want to address these issues in their classroom."
EU Software Directive May Be Derailed Again
Mark MacGann, director general of the European IT and communications industry association, reportedly told the IDG News Service that although Belgium and Poland had abstained on an earlier vote in May , "we have been extremely encouraged by meetings we have had with officials in Belgium and are cautiously optimistic that they may change their vote to yes." Should Belgium decide to approve the Council's version of the directive, Poland's apparant reversal would not keep the legislation from moving to a second reading in the European Parliament, MacGann was also reported as saying.
- Start Early
- Give It Time
- Present the risks
- Let them know it's their decision
- Engender trust
- Present settlement as a victory
- Consider getting a second opinion
updates for Wednesday, November 17, 2004
Referring to Commerce One's "web services" patent portfolio auction scheduled for December 6, 2004 at the federal bankruptcy court in San Francisco, an intellectual property attorney in Palo Alto, California reportedly told the New York Times that "The big issue is what people call 'patent terrorism.'" Robert Glushko, one of the inventors, is also quoted in the article as saying "We filed these patents to describe a standard method for using documents to connect services into business networks. At Commerce One, our business model depended on an open infrastructure for doing that. It is completely antithetical to our intent to use the patents to prevent it."
Well then Mr. Glushko, a simple publication would have sufficed quite nicely.
Other differences from typical, "non-Madrid" oppositions include electronic filing of notice of opposition and extension requests, and fees due on filing.
This article from Thomson Scientific presents their tools for "patent data mining techniques that can answer key questions involved in developing an effective patent portfolio management strategy."
This paper from the UNCTAD-ICTSD Project on IPRs and Sustainable Development highlights the particular importance for developing countries of information communication technologies (ICT) as a tool for economic growth. ICT pose challenges to developing countries, but at the same time offer opportunities. The main challenges arise from international rules on copyright and database protection, which are increasingly restricting free access to protected works that developing countries need in the context of public policies such as education and research. On top of low Internet use and penetration prevailing in most developing countries, these legal tools may represent additional access barriers. In order to mitigate such effects, developing countries should seek to balance effective protection of intellectual property rights (IPRs) against robust limitations of exclusive rights to encourage competition and socially beneficial uses of ICT. In this respect, the international IPRs system provides important flexibilities in the implementation of IPRs obligations. Making use of these flexibilities is a way for developing countries to reap the benefits offered to them by ICT, in particular with respect to the promotion of the local music industry and on-line based education and research. To which extent ICT may actually be used as an effective tool for economic growth largely depends on the domestic regulatory framework, taking account of the particular situation in each country.
updates for Tuesday, November 16, 2004
In a November 15 article for The New Yorker, Malcolm Gladwell describes the plagiarism of his own work, and how fighting piracy has become an obsession with Hollywood and the recording industry. "In the worlds of academia and publishing, plagiarism has gone from being bad literary manners to something much closer to a crime," he writes. "We have somehow decided that copying is never acceptable and the ethics of plagiarism have turned into the narcissism of small differences: because journalism cannot own up to its heavily derivative nature, it must enforce originality on the level of the sentence."
Against Intellectual Property is a page critical of copyrights, trademarks, and intellectual property where, as Proudhon said long ago "property is theft" and current intellectual property fights on the Internet bolster his claim. Intellectual property is for those with power, who can use the force of the state to enforce their claims. But intellectual property simply gets in the way of communication and the sharing of ideas, be it in the arts or in biology.
According to Tom Giovanetti, President of the Institute for Policy Innovation, "The free culture movement asserts that strong intellectual property protection inhibits incremental innovation, and that ownership tempts owners to horde intellectual property and to keep it away from the public. But these assertions are obviously false. It is precisely ownership of intellectual property that makes it widely available."
"The much-vaunted public domain is better viewed as a vast wasteland of works unknown and practically unavailable, because no one has an incentive to make them available. Policymakers should [therefore] resist the call of the free culture movement to give favorable treatment to free culture products under the assumption they are somehow economically or morally superior. Let free culture proponents try to compete. But in the meantime, it would be foolish to weaken or undermine the property-rights model of innovation - the model that continues delivering incredible benefits to society."
"It's true to say that throughout the 18th and 19th centuries Britain was the most inventive nation," Lindsay Sharp, director of the U.K National Museum of Science & Industry, told The Times as is sets out to find Britain's greatest invention. "Or at least the best at getting inventions to work on a large scale. After that, unfortunately, things started to unravel." At which point, it seems, Britain lost the plot. "The First World War was a disaster, and not just because we lost a generation. The European economy was shot to pieces. The Americans steamed ahead."
updates for Monday, November 15, 2004
According to a November 14, 2004 article in Managing Intellectual Property, a recent decision of the Chinese Trademark Office suggests that they are taking a stricter approach to the evidence required for showing actual use in China:
On October 25, CTMO ruled that Tetra Pak's A+ and device mark should be cancelled: "Tetra Pak China Limited submitted some materials, such as invoices and newspapers, with regards to advertising and promotion of its 'A+ & Device' mark. Upon examination, all of these advertising invoices and newspapers are not able verify its actual use of the trade mark 'A+ & Device' under Reg No 1486706 in respect of the goods designated. Thus, the evidence submitted is invalid."
According to an artcle from the IPR HelpDesk, "collecting societies" are voluntary associations of authors, interpreters and other right-holders for the purpose of protecting their conceptual and financial interests in an intellectual property or in their services at home and abroad.
European institutions have initiated the first steps in adopting a community legal framework for collecting societies. The European Parliament presented a report in December 2003 and the European Commission published a communication in April 2004.
According to a November 14, 200 article in The Korea Times, a report by the Federation of Korean Industries (FKI) proposes a patent donation system in which large companies receive a certain amount of tax breaks in return for donation of patents to nonprofit organizations.
As many as 30.6 percent of Korea's patents are "idly kept in a corner." 50.7 percent of companies surveyed in the report cited new trends for technology and products as why they have not employed idle patents. Lack of marketability received 30.4 percent, while 13 percent said business restructuring has put some patents in storage. Only 9.7 percent of unused patents were transferred to other companies, while 59.7 percent of them were assessed and disposed, the survey said.
Referring to Intellectual Ventures' portfolio of patents as his own, Myhrvold reportedly told Newsweek, "If giant corporations are making billions of dollars off my ideas, I want something for it, and I don't think there is anything wrong with that."
According to the website, this database enables studies of DNA-based patents issued by the United States Patent and Trademark Office (USPTO), making full-text patents available at no cost, and defining a searchable set of patents of interest to those studying genomics, genetics, biotechnology, and other fields.
Patents included in the DPD were identified by searching the claims of US patents for terms specific to nucleic acids. The claims of patents in relevant categories of the U.S. classification system are searched for terms specific to nucleic acids, genes, genetics, and genomics, such as "DNA," "RNA," "nucleotide," "polynucleotide," etc. The current algorithm was developed by the Kennedy Institute of Ethics, modified from an initial algorithm devised by USPTO senior examiner James Martinell. A newer algorithm based on the original, but used with the Delpion search engine is available here: [SearchAlgorithm-Delphion-20030512]. This algorithm is currently being validated by various methods and will be used to update the database.
A subset of the patents was read and coded by hand, according to a coding sheet [Patcode.htm]. Coding sheets are small text files that contain unique codes to assist the staff in further classifying the DNA patents in this database. These patents were selected from an initial collection that the USPTO gave to the congressional Office of Technology Assessment (OTA) for a study of DNA patenting. When OTA ceased operations in 1995, those patents were transferred to the Kennedy Institute of Ethics. In this subset of 1068 patents, each patent was categorized according to biological classification, function, or application (e.g. human origin, full-length gene, transgenic animal, promoter sequence, or vaccine). That subset was also coded according to the affiliations of the inventors and assignees, country of origin of inventors and assignee institutions, and whether the United States Government funded the underlying research. The patents matching criteria on the coding sheet can be searched in the DPD using the unique 7-letter codes to find patents matching those criteria.
- Identify Products and Services
- Identify Corresponding Intellectual Property
- Prioritize Analysis (if necessary)
- Analyze State of Relevant Industry
- Determine Scope of Protection Provided by IP Assets
- Verify "Exploitability" of IP Assets
- Conduct Non-Infringement Investigation
- Review Warranties and Indemnities
- Review Any Other Considerations
- Establish a Value
updates for Friday, November 12, 2004
The show's website also includes excerpts from extended interviews on "The New Meaning of Brand" with Kevin Roberts, CEO, Saatchi & Saatchi Worldwide; Douglas Atkin, chief strategy officer for Merkley+Partners; Bob Garfield, columnist for Advertising Age; and Naomi Klein, author of No Logo.
Thank Goodness It's Friday,
According to the November 2004 Issue os the Patent Office Professional Association, USPTO Deputy Director Steve Pinkos welcomed POPA representatives on October 21 to discuss the following reccomendations for the Image File Wrapper system:
- Improve Contractor Scanning Services: Examiners' greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
- Cached Hot-Docket Images and a Hard-Drive Version of the "eDAN" electronic Desktop Application Navigator: The USPTO could avoid significant losses of examining time if it invested in programming eDAN to enable examiners to continue working from their hard drives when the main IFW system is not functioning properly.
- Improve Handling of Non-Patent Literature (NPL) and Foreign Patents: The USPTO can improve examiner access to NPL and foreign patents, thereby improving production and quality, by: 1) identifying each NPL by first author; 2) entering each NPL into IFW in the order that the NPL is entered on the applicant's NPL list (USPTO Form 1449), which is part of the application record; 3) identifying each foreign patent by its country/serial number; and 4) increasing the eDAN annotation field to allow more notes.
- Allow Display of Multiple Documents in a Readable Size: This means providing each examiner with a second desktop monitor.
- Improve IFW Printing Features: Relatively simple programming solutions would reduce the number of mouse clicks and functions now necessary to print each document.
- Program eDAN to Refresh all Dockets as Necessary: Currently examiners manually refresh each docket, which wastes time when the computer can be programmed to do this work.
- Provide File Storage Furniture: The USPTO offered to provide examiners with printed "working folders," which contain a bare-bones number of documents that examiners can add to. But many examiners have not been supplied any file furniture in which to store them.
- Improve Optical Character Recognition (OCR) or Supply a Searchable Text File: These would allow examiners to readily search the specifications and other documents for relevant terms, and "cut and paste" relevant information from applications into office actions. In addition, examiners overwhelmingly express a desire to be able to search text by using keywords, something not readily available with image files.
- Better Document Tracking: By adding a data field to show the date that the contractors actually scanned and entered a document, eDAN would enable the USPTO to actually measure the contractor's performance. Now eDAN only tracks the filing date of the paper document.
- Establish a Pilot Program for Voice-Activated Software: With eDAN's capability to support voice-activated software the agency can now offer that ability to other examiners who prefer it to test its benefits with eDAN and OACS.
Until about four years ago, the judiciary was receiving annual budget increases from Congress of about 10 percent. But in the last two budget years, the judiciary received increases of 4.8 percent and 4.7 percent. "We need an increase of about 6.1 percent each year in order to simply maintain current services. That will not cover increases in our workload, but it will cover a comparable amount of workload to that of the prior year,"said Chief Judge Carolyn Dineen King of the 5th U.S. Circuit Court of Appeals, who chairs the executive committee of the Judicial Conference of the United States.
On November 10, 2004 the European Commission announced that it has adopted the following strategy for the enforcement of intellectual property rights in third countries.
- Identifying priority countries: EU action will focus on the most problematic countries in terms of IPR violations. These countries will be identified according to a regular survey to be conducted by the Commission among all stakeholders.
- Awareness raising: promote initiatives to raise public awareness about the impact of counterfeiting (loss of foreign investment and technology transfer, risks to health, link with organised crime, etc.) and make available to the public and to the authorities of third countries concerned a ?Guidebook on Enforcement of Intellectual Property Rights?.
- Political dialogue, incentives and technical co-operation: ensuring that technical assistance provided to third countries focuses on IPR enforcement, especially in priority countries; exchanging ideas and information with other key providers of technical co-operation, like the World Intellectual Property Organisation (WIPO), the US or Japan, with the aim of avoiding duplication of efforts and sharing of best-practices.
- IPR mechanisms in multilateral (including TRIPs), bi-regional and bilateral agreements: raising enforcement concerns in the framework of these agreements more systematically; consulting trading partners with the aim of launching an initiative in the WTO TRIPs Council, sounding the alert on the growing dimension of the problem, identifying the causes and proposing solutions and strengthening IPR enforcement clauses in bilateral agreements.
- Dispute settlement - sanctions: recall the possibility that right-holders have to make use of the Trade Barriers Regulation or of bilateral agreements, in cases of evidence of violations of TRIPs; in addition to the WTO dispute settlement, recall the possibility to use dispute settlement mechanisms included in bilateral agreements in case of non-compliance with the required standards of IPR protection.
- Creation of public-private partnerships: supporting/participating in local IP networks established in relevant third countries; using mechanisms already put in place by Commission services (IPR Help Desk and Innovation Relay Centres) to exchange information with right-holders and associations; build on the co-operation with companies and associations that are very active in the fight against piracy/counterfeiting.
EU Trade Commissioner Pascal Lamy said "Piracy and counterfeiting continue to grow every year and have become industries, increasingly run by criminal organisations. This is a serious problem for us but also for third countries whose companies are also suffering the consequences of violation of their own intellectual property rights. Some of these fakes, like pharmaceuticals and foodstuffs constitute an outright danger to the public, while others undermine the survival of EU?s most innovative sectors, confronted with the misappropriation of their creations. Adopting new legislation on intellectual property is one thing. But devising the right tools to enforce it is another. This is now our priority."
- Be clear on your goals and the possible outcomes of the litigation
- Obtain a written budget
- Perform as much work as possible in-house
- Use technology
- Ask to be informed of every step
- Understand how the case is staffed
- Regularly communicate about the status of the case
- Maintain good relations
According to the International Telecommunications Union, "ENUM is a protocol that is the result of work of the Internet Engineering Task Force's (IETF's) Telephone Number Mapping working group. The charter of this working group was to define a Domain Name System (DNS)-based architecture and protocols for mapping a telephone number to a Uniform Resource Identifier (URI) which can be used to contact a resource associated with that number. The protocol itself is defined in the standards track document "E.164 number and DNS" (RFC 2916) that provides facilities to resolve E.164 telephone numbers into other resources or services on the Internet. ITU-T Recommendation E.164 is the international public telecommunication telephony numbering plan. The syntax of Uniform Resource Identifiers (URIs) is defined in RFC 2396 (1998). ENUM makes extensive use of Naming Authority Pointer records defined in RFC 2915 in order to identify available ways or services for contacting a specific node identified through the E.164 number."
The reason? An ICANN policy change "which was initially meant to force badly behaving registrars to allow transfers out of their systems for domain name owners who were being forced to stay and pay high renewal fees, etc. However the system now has the worse effect that anyone can transfer the names out a bit too easily."
updates for Thursday, November 11, 2004
As of the beginning of November, there are more USPTO employees - over 4,000 - working in Alexandria than in Crystal City. Among those now working at the new Alexandria headquarters are the trademark examining operation and the the patent examining operation's Technology Center 2100 - Computer Architecture, Software and Information Security. On average over 300 employees a week move into the new facility. When the move is completed in the spring of 2005 over 7,000 USPTO employees and contractors will be housed in the five buildings of the Alexandria campus.
Time: 12:30 PM Eastern
Duration: 1 Hour
Phone in #: Please RSVP to firstname.lastname@example.org; No charge to participate
- the waiver issue/scope of waiver when an attorney opinion is relied upon to negate a charge of willfulness; and
- whether litigation counsel can/should serve as "opinion" counsel.
Click here for the slides.
The November 2004 issue of the PCT Newsletter is now available here.
This issue contains a table showing the PCT Contracting States for which a regional patent can be obtained, broken down as follows:
- States for which only a regional patent can be obtained;
- States for which a regional patent can be obtained in addition to, or instead of, a national patent;
- States which are not included in the EP designation, but to which a European patent can be extended.
This table, which will hopefully be a convenient resource for applicants to find out which States are designated for a regional patent, will be published on the PCT website under "PCT legal texts" and updated when necessary.
The plan is being implemented at the same time that the Agency is conducting a study of long-term restriction practice reforms. However, TC 1600 will begin implementation of this action plan immediately and contemplates that it will be fully implemented in six to nine months from August 2004.
Won?t Europe end up with the system that now exists in the United States?An information booklet (pdf file 269Kb) on the proposed Directive is also available.
The Government believes that we should aim to avoid the width of patentability now allowed in the United States: this is why it pressed the European Commission for a Directive following its consultation.
Source: WIPO September 2004
According to the introduction, "These case studies [in English] have been compiled by the Japanese Patent Office in a form of questions and answers referring to the procedural cases collected from industrial/labor world or universities and hearing from the opinions of the intellectuals of the Patent System Subcommittee. They were compiled by the Patent Office to clarify the legal purport of the new employee invention system and offer the cases to which parties concerned can refer in taking the procedure so that the procedure according to the new system can be smoothly taken."
How do I view or change the correspondence address and list of individuals associated with my customer number?Want to learn more about Public PAIR? Check out the USPTO's Public PAIR Computer Based Training available for download.
From the Private PAIR search screen, select your customer number from the drop-down list below View Customer Number Details, and click the Search button.
To submit a paper change request, click the "Request for Customer Number Data Change" link below the Customer Number Details screen to display and print PTO/SB/124A in PDF format. Use this paper form to mail or fax changes in the correspondence address or list of individuals associated with a Customer Number.
Submit the completed form via fax to (703) 308-2840 or mail to:
USPTO Mail Stop EBC
P.O. Box 1450
Alexandria, VA 22313
To submit an online change request, click the "Request Data Changes" button below the Customer Number Details screen. This returns the Request Data Changes for Customer Number online form for changes to Customer Number Address, addition of individuals, or deletion of individuals from the Customer Number.
updates for Wednesday, November 10, 2004
In Campbell Plastics v. Brownlee (Fed. Cir., November 10, 2004), Campbell Plastics had entered into a contract with the Army to develop certain components of an aircrew protective mask. Campbell Plastics failed to comply with the disclosure provisions of the contract which allowed the government to obtain title to the invention.
Section I of the contract incorporated numerous clauses from the Federal Acquisition Regulations ("FARs"), including a "Patent Rights-Retention by the Contractor" clause from 48 C.F.R. § 52.227-11 (1991) ("FAR 52.227-11") that requires a contractor to disclose any subject invention developed pursuant to a government contract and sets forth certain substantive requirements for doing so. The clause further provides that the government may obtain title if the contractor fails to disclose the invention within two months from the date upon which the inventor discloses it in writing to contractor personnel responsible for patent matters.
Section I also incorporated from 48 C.F.R. § 252.227-7039 (1991) ("FAR 252.227-7039") a "Patents-Reporting of Subject Inventions" clause which requires the contractor to disclose subject inventions in interim reports furnished every twelve months and final reports furnished within three months after completion of the contracted work. Subsection H.11 of the contract, titled "Patent Rights Reports," requires the contractor to submit all "interim and final invention reports required by patent clause in Section I" on a "DD Form 882, Report of Inventions and Subcontracts."
Campbell Plastics contended that it continually disclosed all features of the invention throughout the contractual period. They also argued that the government's possession of an enabling disclosure of the subject invention, and its review of the patent application for secrecy determination purposes, satisfied Campbell Plastics's obligations under the contract. However, the Federal Circuit concluded that whatever information the government had regarding the invention, it did not get it from Campbell Plastics in the form of a proper invention disclosure:
While it is at least debatable whether the various progress reports and drawings Campbell Plastics submitted to the Army together convey a clear understanding of the nature, purpose and operation of the invention as well as the invention's physical, chemical, biological or electrical characteristics, we think the contract requirement of a single, easily identified form on which to disclose inventions is sound and needs to be strictly enforced. If we were to find Campbell Plastics's style of disclosure sufficient, methods of disclosure could vary widely from case to case. The government never would be sure of which piece of paper, or which oral statement, might be part of an overall invention disclosure. But we do not so find. The contract instead demands a single form for disclosure, which enables the contracting officials to direct the inventive aspects of the contract performance to the correct personnel in the agency for a determination of whether the government has an interest in the disclosed invention, and for the government to determine how best to protect its interest. Sound policy is promoted by the rule of strict compliance with the method of disclosure demanded by the contract.
According to a (non-binding) press release by the European Court of Justice on November 9, 2004, "Neither the obtaining, verification nor presentation of the contents of a football fixture list or a schedule of horse races constitute substantial investment giving rise to protection against the use of the data by third parties. The definition of ?substantial investment? which gives rise to protection for the maker of a database against unauthorised acts of copying and distribution to the public covers only the work involved in seeking, collecting, verifying and presenting existing materials and not the resources used to create the materials which make up the database." The announcement follows four judgments concerning the Directive on the legal protection of sporting databases: C-338/02, C-444/02, C-46/02, C-203/02.
According to WIPO's press release, the Committee agreed on a process to move forward with its substantive work by inviting written comments on the existing draft proposals to supplement the already extensive commentary and proposed amendments made during the Committee's meeting. The deadline for submission of these comments is 25 February 2005. The updated proposals will then be circulated for further consultation in advance of the next session of the IGC in June 2005. Texts of the initial proposals are available as Annex I of documents WIPO/GRTKF/IC/7/3 and WIPO/GRTKF/IC/7/5, available at http://www.wipo.int/tk/en/.
WIPO's current work on TK "seeks to respect the manner in which TK, TCEs and associated genetic resources are considered an indivisible whole within the traditional or customary context, while developing specific legal tools that reflect the broader legal environment and policy context for each element of this traditional heritage, and protect this important community heritage from misuse and misappropriation. This program also entails close consultations with and respect for the mandate and activities of other United Nations agencies and international processes."
Click here for WIPO's free "Booklet on Intellectual Property and Traditional Cultural Expressions/Folklore."
This report from the United Nations University Institute of Advanced Studies provides an analysis of a number of case studies of existing databases and registers that have been developed to document traditional knowledge, identifying their effectiveness, possibilities and limitations for securing the protection of traditional knowledge.
updates for Tuesday, November 09, 2004
They found that less than 40 per cent know the value of their IP, only half (52 per cent) have a documented IP strategy, and only 57 per cent have a formal system in place for identifying infringements of their IP. The survey also found that only 53 per cent have board-level representation for matters relating to brand, intellectual property or research and development, only 38 per cent of businesses questioned have ever done a valuation of their IP, with only 19 per cent conducting one in the last year.
Commenting on the findings, Jeremy Dickerson, Head of Intellectual Property at DLA, said, "The old adage 'use it or lose it 'could not be truer when it comes to IP management: by not using it, organisations risk losing their competitive advantage." Ian Harvey, Chairman of the UK Government's Intellectual Property Advisory Committee (IPAC), who has given his support to the survey reportedly commented, "This IP survey by DLA shows that many of our larger European companies do not take the management of their IP seriously, despite it being a huge source of competitive advantage for them. In my experience, companies that do it well are usually the global leaders in their fields. However, this will not be achieved unless IP becomes part of corporate strategy and there is board commitment. I urge business leaders to take the findings of this survey seriously and consider it a matter of survival ? they must realise that intellectual property is a competitive advantage to die for."
The new and improved CTM-ONLINE now includes more information on the Community trade mark registration process:
- Updated daily
- Better supporting information via the help page, which now includes a glossary of statuses and information on Vienna codes
- Links to other databases, such as OHIM Case-Law (refusals, opposition, cancellation, appeals) and Curia, the European Court of Justice and Court of First Instance database
Basic search criteria enhancements:
- Search by type of mark - word, figurative, 3D, colour, sound, olfactory, hologram, others
- Search by trade mark name now possible using stemming, e.g. film?, ?films?, ?filming?, ?filmed?, etc.
- Search by Vienna Classification for figurative trade marks
Advanced search criteria enhancements:
- The use of advanced operators (Boolean) and wildcards for trade mark names
- Search by Nice class
- Search by filing or registration date
- Search by status
- Limit search to trade marks with or without acquired distinctiveness
Improvements to the results:
- Possibility of sorting results by number, filing date or name, in ascending or descending order
- Up to 1,000 results may be displayed
- Refine search (search within a search) now possible based on the previous (unlimited) results
- More precise status information & visual representation
- Historical log of statuses
- Detailed information on opposition, cancellation, appeal and recordals
Check their help page for more detailed information
On April 1, 2003 OHIM began registering and publishing Community designs. Registration proceedings for Community designs are restricted to an examination of the formalities of the application. Prior to registration there is no substantive examination, i.e. the novelty and individual character of the designs are not examined.
However, after registration, third parties may object to a registration by filing an invalidity request with OHIM based on prior art or other earlier rights. OHIM will cancel the registration where the facts and evidence presented by the third party prove that the contested Community design does not fulfil the requirements for protection.
According to an article by Lisa Peller London, updated in October 2004, the advantages of the Protocol include:
- No need to engage local counsel to file applications, thus saving attorneys fees at the initial filing stage
- No need to translate filings into local languages, as English is
accepted for all filings
- No need to provide such supporting documents as Powers of
Attorney, application forms, prints of the mark, or Certificates of
- Centralized recordation of assignments, change of name, change of
address, and renewals, such that one filing through WIPO is effective
in each country for which registration was sought, thus saving
considerable expense and paperwork
The disadvantages of the Madrid Protocol include:
- Restricted Goods and Services: Because the USPTO requires
narrowly drafted, highly specific lists of goods and services, those
restrictions carry over to the related Madrid application.
- Dependency: The International Registration is dependent on the
home-country or ?basic? application or registration, allowing for a
central attack. However, the Madrid Protocol allows applicants to ?transform? their individual extensions of a cancelled International Registration into national applications for an additional fee within three months of the cancellation
- Supplemental Registrations can not serve as the the basis
for an International Registration.
- A mark cannot be amended in an International Registration, but may be amended in some countries.
- Not all countries of interest belong to the Madrid Protocol. Significant absences include Canada and all of the countries of Latin America and South America.
updates for Monday, November 08, 2004
In a per curium order published on November 5, 2004 as In re Violation of Rule 28(c), the Federal Circuit noted that even inadvertent violations of court rules may result in sanctions:
We accept counsel's representation that the violation of Rule 28(c) in this case was inadvertent. So far as we have been able to determine, this court has not in the past exercised its authority to impose sanctions for "inadvertent" violations of applicable court rules. Under these circumstances, we conclude that the imposition of sanctions in this case is not appropriate. However, we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not "inadvertent," will potentially subject counsel to sanctions.
Rule 28(c) of the Federal Rules of Appellate Procedure provides, in pertinent part: "An appellee who has cross-appealed may file a brief in reply to the appellant?s response to the issues presented by the cross-appeal." Rule 28(c) limits the content of Cross-Appellant?s Reply Brief to "issues presented by the cross-appeal," and the Practice Notes explicitly warn cross-appellants against exceeding the scope of Rule 28: "[C]ounsel are cautioned, in cases involving a proper cross-appeal, to limit the fourth brief to the issues presented by the cross-appeal. In all cases, counsel should be prepared to defend the filing of a cross-appeal and the propriety of arguments presented in the fourth brief at oral argument."
The U.S. Patent and Trademark Office registered over 140,000 trademarks last year. But, according to an article in the November 2004 issue (12.11) of Wired, "Even as companies have spent enormous amounts of time and energy introducing new brands and defending established ones, Americans have become less loyal. . . . A study by retail-industry tracking firm NPD Group found that nearly half of those who described themselves as highly loyal to a brand were no longer loyal a year later. . . .Another remarkable study found that just 4 percent of consumers would be willing to stick with a brand if its competitors offered better value for the same price . . . .'Brands have run out of juice. They're dead," says Kevin Roberts, CEO of advertising giant Saatchi & Saatchi and author of the new book Lovemarks. "Now the consumer is boss. There's nowhere for brands to hide.'"
Economists have traditionally associated asymmetric patent ownership with rent transfers from the developing to the developed world. However, it is less clear to what extent asymmetric trademark ownership may be the source of similar rent transfers. Trademarks, unlike patents, do not necessarily confer market power to the intellectual property-holding firm and can, in principle, co-exist with a competitive market structure. However, when consumers are imperfectly informed or attach a status value to products, competition may be imperfect and trademark owners may generate rents. More research is needed to assess the extent of crossborder rent transfers associated with trademarks.
According to the forward, this report reviews the transfer of nutritional technologies to developing nations, seeking to identify the most important contemporary policy issues at both the national and international levels. The paper considers both the traditional public sector programs to transfer agricultural technologies efforts and the more recent private sector efforts. The technology transfer issues are substantially different for farmers in the market sector and for those in the subsistence/small-holder sector, so
the analysis proceeds in a matrix pattern, looking at the policy issues in each of the four quadrants of the matrix (private/market; public/market; private/small-holder; and public/small-holder). The paper recognizes that nutrition is shaped not only by agriculture but also by food distribution systems and technologies and attempts to take into account the rapid changes in the developing world food distribution process. In this respect, the study concentrates on plant agriculture and food-procession; it does not consider fisheries, but does give some coverage to animal agriculture. The paper considers the variety of policies affecting the transfer of technology in the nutritional area, including intellectual property, competition law, biosafety, international trade, and public sector research issues. In some areas, it poses specific policy issues; in others it calls for further policy-focused research.
"These results are not, of course, sufficient to demonstrate that IPR reform is welfare enhancing for the reforming countries. The analysis does not consider the impact of reforms on locally-owned firms that may be displaced after reforms nor does it examine the effects of the reforms on the pace of innovation in non-reforming countries. However, given the lack of evidence that IPR reform spurs domestic innovation, increases in technology transfer are likely to be a necessary condition for IPR reform to increase welfare in reforming countries. Our results suggest that this condition is met."
According to the forward, this report from the UNCTAD-ICTSD Project on IPRs and Sustainable Development reviews comprehensively the basic theory and evidence regarding how intellectual property protection affects incentives for international technology transfer (ITT). Analysis is provided of market-mediated ITT through trade, foreign direct investment, licensing, and personnel movements, along with informal means through imitation, reverse engineering, and spillovers. The report points out that there are inherent shortcomings in markets for technology that justify public intervention. One form of intervention is IPRs, which can support ITT but also
create market power. Empirical evidence suggests that enforceable patents can increase inward flows of ITT in middle-income and large developing countries but probably have little impact in the least-developed countries. Thus, the TRIPS Agreement at the WTO by itself will have little impact on technology acquisition for poor countries. Negotiators recognized this and introduced Article 66.2, which obligates the developed countries to provide positive incentives for ITT to the leastdeveloped countries. This study makes numerous suggestions for improving these incentives by policy changes in recipient countries, source countries, and the global trading system.
According to a November 4, 2004 report from Wired, "Dan Glickman, president and CEO of the Motion Picture Association of America, said that its member studios will file lawsuits beginning Nov. 16 and will seek damages and injunctive relief. Knowingly distributing copyright films carries penalties of up to $150,000 per film." Wired also reported that Eric Garland, CEO of BigChampagne "said the movie industry has a better chance to quash the P2P problem before it gets out of control by offering better digital entertainment services than P2P does. 'Hollywood should win this. They know how to sell us what we want. They need to focus on that.'"
According to a November 5, 2004 report from Asociated Press, "In October, slightly more than 44 million digital files that made up full-length feature films were being shared on peer-to-peer networks, according to BigChampagne LLC, which tracks activity on file-sharing networks. More than 1.3 billion audio files were being shared at any given time last month, according to BigChampagne."
updates for Friday, November 05, 2004
. . . the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may"The man can, in appropriate cases, be a team - an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned. None of the above is controversial. However, sometimes the requirement that the skilled man be uninventive is used by counsel for a patentee in an attempt to downgrade or dismiss the evidence of an expert called to say that a patent is obvious - 'my witness is more nerdlike than his' is the general theme."
be, scores of specifications but to be incapable of scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.
However, according to Lord Justice Pill in the same decision, such patent nerds should not be labelled as simply boring robots.
As to the "man skilled in the art", he is described by Jacob LJ as a 'nerd' (paragraphs 7 and 11) and as "not a complete android" (paragraph 10), which suggests that he is part of the way to being an android. A 'nerd' is defined in the Concise Oxford Dictionary (10th Edition 1999) as "a person who lacks social skills or is boringly studious" and an 'android', in the same work, as "(in science fiction) a robot with a human appearance". I hope that those working in this field will not regard "men skilled in the art" as figures from science fiction who lack social skills. Jacob LJ, will think me less than supportive of the development of the language of the law but I do respectfully prefer, for its clarity, Lord Reid's terminology cited at paragraph 7 of the judgment.In fact, nerds often dispute among themselves the relationship of the "nerd" to the "geek." Some view the geek as a less technically skilled nerd, although some factions maintain that "nerds" are both technically skilled and socially competent, whereas "geeks" are only technically skilled, and socially incompetent. Still other nerds call themselves "geeks" with pride, in much the same way as is done with "nerd."
There may also be some regional differences in the use of the words "nerd" and "geek". Some claim that on the North American East coast the word "nerd" is preferred to "geek", and the meanings of the words are switched. Others on the east coast dispute this, claiming that they have always found "nerd" used disparagingly (and "geek" used in a positive light). In Britain, the same tends to apply - 'nerd' is more offensive than 'geek', which is often affectionate.
Can you pass "The Nerdity Test?"
Thank Goodness It's Friday,
According to PC World Magazine, freeware IE Privacy Keeper lets you schedule cookie and URL cleanup for Windows shutdown, Windows startup, or when the last open IE window is closed. It's secure wiping option lets you make sure that deleted files are deleted for good. If there are some Internet items that you'd rather keep, you can specify that IE Privacy Keeper keep the cookies, typed URLs, and form fields you need.
Click here for more "Annoyance Busters" from PC World Magazine.
updates for Thursday, November 04, 2004
1:00 PM EST to 2:00 PM EST
A free, web teleconference on select tax issues and opportunities relevant throughout the lifecycle of the IP, including
- An overview of federal and state tax credits and deductions related to development and protection of IP;
- A discussion of the current status of domestic and international holding company structures designed to apply low federal, state and international tax rates to third-party and affiliated royalty income;
- A brief analysis of tax efficient disposition of IP.
updates for Wednesday, November 03, 2004
On November 1, 2004, the United States Patent and Trademark Office deployed electronic forms for the filing of an application for international trademark registration, subsequent designation, and response to a notice of irregularity at TEASi.
"Patent Licensing - Lessons Learned & Mistakes to Avoid"
November 9, 2004
1:00 PM-2:00 PM
The revenues from patent licensing increased from $3 billion in 1980 to $15 billion in 1990 and to $120 billion in 2001. More and more entities are looking to patent licensing to enhance cash flows. Likewise, companies are receiving offers to license patents (both ?carrot? and ?stick?) that entail very large sums. While patent licensing programs take years to unfold, early decisions can profoundly impact the success or failure of a patent licensing program. This presentation goes beyond the fundamentals to assess the practical lessons learned and the mistakes to avoid. Jim DeGraw and Jim Myers, both Ropes & Gray partners with substantial patent licensing and patent litigation experience, will discuss the opportunities and pitfalls associated with patent licensing.
Participating Attorneys: James S. DeGraw, James R. Myers
Click here to register by 11/8/2004 12:00:00 AM
What restraints can firms place on the reimportation of products?
Tuesday, November 16, 2004
12:00-1:45 p.m. EST
Washington DC and satellite sites
A panel of experts will discuss the rationale for and legality of import restraints that are imposed by US manufacturers on their foreign customers that prevent these customers from reselling product that they purchased in foreign countries in the US. Restraints involving products that contain substantial intellectual property rights, such as pharmaceuticals, will receive particular attention, as well as ongoing cases. The discussion will cover both US and EU law.
George Cary of Cleary, Gottlieb, Steen & Hamilton
John Hilke of Federal Trade Commission, Bureau of Economics
Nigel Parr of Ashurst
Joseph Tabacco of Berman DeValerio Pease Tabacco Burt & Pucillo
Washington DC: Cleary Gottlieb, Steen & Hamilton 2000 Pennsylvania Ave. NW
Brussels: Cleary, Gottlieb, Steen & Hamilton, Rue de la Loi/Wetstraat 57
Chicago: Bell, Boyd & Lloyd, 70 West Madison St., Suite 3100.
Indianapolis: Baker & Daniels, 300 Meridian St., Suite 2700
Los Angeles: Paul, Hastings, Janofsky & Walker; 515 South Flower St., 25th Floor
London: Ashurst, Broadwalk House, 5 Appold Street
New York: Skadden, Arps, Slate, Meagher & Flom, Four Times Square
Minneapolis: Patterson, Thuente, Skaar & Christensen, 4800 IDS Center, 80 S. 8th St.
Philadelphia: Drinker, Biddle & Reath, One Logan Square, 18th & Cherry Streets
Paris: OECD, Annexe Ingres, 37bis Boulevard Suchet
San Francisco: Berman DeValerio Pease Tabacco Burt & Pucillo,
Seattle: Simburg, Ketter, Sheppard & Purdy; 999 Third Ave., Suite 2525
RSVP to email@example.com with name and site location (including main site) you wish to attend.
To participate by telephone, please select this program on the Antitrust Section?s website at: www.abanet.org/antitrust. Select "Other-$15" for non-members and a dial in number will be e-mailed to you three days before the program.
According to WIPO's press relase, "the study highlights the need, when genetic resources are first accessed, for a clear understanding of intellectual property issues. Agreement on how intellectual property derived from access is used and how the benefits are shared is an important part of the exercise of prior informed consent, and an important, practical way of ensuring that access and benefit-sharing is fruitful, equitable and mutually agreeable, and becomes a true partnership between custodian and user of the genetic resource. The study investigates the potential for achieving this, but underscores the practical and legal obstacles that traditional communities have encountered in the three cases discussed in the study."