Thank Goodness It's Friday,
Biogen Idec officials won't say exactly when they learned that the name Antegren was a problem. Amy Brockelman, a Biogen Idec spokeswoman, said the name created potential conflicts with Integrilin, a drug marketed by Millennium Pharmaceuticals Inc. of Cambridge for heart attacks and other cardiac woes; Ativan, an anti-anxiety medication; and Edecrin, a diuretic. But they said they had a list of backup names, and the one they chose was Tysabri. ''Abri is the French word for shelter, and that conveys the notion of protection and that Tysabri offers a new level of of efficacy and new hope for people living with multiple sclerosis," said Brockelman.
According to the USPTO website, effective January 31, 2005, trademark fees will change as follows:
Amendments or Responses to Office Actions:
The new fee requirements will apply to any fees filed on or after January 31, 2005.
"the evidence suggests specifically that the burden of knowledge is increasing. The model delivers this inference directly through increasing specialization and teamwork, but note further that a combination of greater specialization and greater educational attainment is especially difficult to reconcile withoutSo that's a yes, Mr. Jones?
appealing to a greater knowledge burden. If innovators are becoming more specialized but the distance to the frontier is not increasing, then innovators should have required less education over time. . . . If a rising burden of knowledge is an inevitable by-product of technological progress, then the model
indicates pessimistic predictions for long-run growth."
A purified oligonucleotide comprising at least a portion ofAs the name indicates, hINV contains the DNA sequence that codes for involucrin, a protein that interacts with keratin and other intracellular proteins on the skin to strengthen the plasma membrane of the cells.
the nucleotide sequence of SEQ ID NO:1, wherein said portion consists of the nucleotide sequence from 521 to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity.
While the PTOâ€™s position that the discovery of new properties of a known material does not make claims reciting those properties novel is correct, and we agree with the PTO as to its conclusion, we differ with its characterization of the nucleotide sequence of the gene as a property of that gene. The sequenceCrishâ€™s argument that the claims contain the closed ended transition term â€œconsists,â€� and that that term narrows the entire claim, was unpersuasive.
is the identity of the structure of the gene, not merely one of its properties. The gene may have functional, biological properties, and it may have physical properties, but its structure is its identity, not merely one of its properties.
The only arguable contribution to the art that Crishâ€™s application makes is the identification of the nucleotide sequence of the promoter region of hINV. However, just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art
material also does not make it novel.
Moreover, Crishâ€™s characterization that the pending claims cover a novel DNA sequence having promoter activity, whereas the references disclose only the starting material plasmid, is unsound. The starting material plasmid necessarily contains the gene of interest, including the promoter region, and once we have affirmed the PTOâ€™s construction of the claims as commprising" more than the recited numbered nucleotides, the claims necessarily encompass the gene incorporated in the starting material plasmid. Accordingly, Crishâ€™s pending claims encompassing the gene plus other nucleotides are anticipated by the starting material plasmid, which consists of the gene plus other nucleotides.
The reasonable interpretation of the claims containing both of the terms â€œcomprisingâ€� and â€œconsistsâ€� is that the term â€œconsistsâ€� limits the â€œsaid portionâ€� language to the subsequently recited numbered nucleotides, but the earlier term â€œcomprisingâ€� means that the claim can include that portion plus other nucleotides. Read in context, the claims thus do not preclude a DNA sequence having additional nucleotides.The court also noted that Crish did not argue that the portions of the plasmid not consisting of the involucrin gene are not nucleotides, nor did he argue that the preamble term â€œpurifiedâ€� has any operative meaning in this appeal. Watch for these issues to be raised in the next appeal.
"The WTO panel agreed with the United States that Europe's regulation discriminates against U.S. products and producers and is therefore contrary to WTO rules. The panel also agreed with the United States that Europe could not, consistent with WTO rules, deny U.S. trademark owners their rights. The panel emphasized that any exceptions to trademark rights for the use of registered GIs were narrow and limited to the actual GI name as registered.
The United States challenged the EU GI Regulation on two primary grounds: (1) discrimination against U.S. GIs (national treatment) and (2) failure to protect U.S. trademarks. The panel agreed with the United States that this would present concerns under the TRIPS Agreement, and found that the GI Regulation could only protect GI names as registered, and not linguistic variations of the GIs."
Comments must be received by the close of business on January 14, 2005.
Rule 28. Briefs
(a) Contents of Brief; Organization of Contents; Addendum; Binding.
Briefs must be bound as prescribed in Rule 32 of the Federal Rules of
Appellate Procedure and must contain the following in the order
listed:(5) the jurisdictional statement including a representation that the judgment or order appealed from is final or, if not final, the basis for appealability (e.g., preliminary injunction, Fed. R. Civ. P. 54(b) certification of final judgment as to fewer than all of the claims or parties, etc.);
In Simplicity at the Cost of Clarity, William H. Burgess revisits the Federal Circuit's decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) holding that claim construction is a matter of law with no underlying factual inquiries, and therefore subject to de novo review on appeal. He concludes that "Cybor has been a failure in practice because it is so inconsistent with the settled law on so many issues relating to claim construction that it is impossible to apply the holding in practice without sending contradictory messages. By labelling claim construction as a pure issue of law and then trying to force the underlying issues to behave as purely legal issues, the Federal Circuit drew an ill-advised bright line that threatens to undermine the progress that it has made toward increasing uniformity and clarity in patent law."
While I can't disparage a service that I have never tried, letting a machine blindly draft your patent application, or any other legal document, seems to be a bit risky. The key to the whole process appears to be the "experienced legal document specialists" who "review the informtation that you provide."
Nonetheless, this type of technology might be an excellent way to get more-detailed invention disclosure documents from inventors so that their attorneys can do better work. And, as every patent attorney knows, when the client is in a pickle, filing a thorough invention disclosure document is often better than not filing at all.
Please leave a comment if you have had any experience with these folks, or their competitiors.
Although the USPTOâ€™s post-grant review role in the patent system has grown, according to the report "none of these post-grant review procedures alone, or collectively, has proven sufficient to optimize the USPTOâ€™s post-grant review capability." The introduction of inter partes reexamination practice had a negligible effect on the number of ex parte reexaminations filed:
Internal reviews and customer roundtables led the USPTO to identify the following seven areas of "systematic unfairness":
In response to these inequities, the USPTO made three recommendations:
"[First t]he USPTO recommends retaining, in some form, an estoppel provision for inter partes reexamination. With an effective Post-Grant Review process in place, inter partes reexamination requests would only be appropriate for parties in limited circumstances; for example, that have discovered prior art outside the time period for requesting reconsideration under the Post-Grant Review process. It is therefore essential to place an estoppel provision with a high burden on third parties requesting inter partes reexamination in order to avoid requests intended to stall or hinder the development of a patenteeâ€™s invention late in a patent's life.
However, the current estoppel provisions do require further clarification of the requirement for third parties to raise all issues that â€œcould have been raisedâ€� except for new prior art that was â€œunavailable.â€� Accordingly, the USPTO recommends that Congress further define the extent and nature of the estoppel risks imposed upon third parties requesting inter partes reexamination of a patent.
"The USPTO [also] recommends that Congress amend current inter partes reexamination practice to permit the third-party requester to present input on Office actions even if the patent owner fails to respond. This amendment would provide an independent right to the requester to comment once for each Office action generated by the USPTO.
[Finally] the USPTO recommends that Congress extend the third-party requesterâ€™s comment period to be more than 30 days, or alternatively, to authorize the Director of the USPTO to set the period for response by rule.
Offering services via the Internet also constitutes use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. For downloadable computer software, the applicant may also submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if it indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.
While it may be more difficult for a producer of goods to prove use through the Internet, it is not impossible. Printed advertisements for the goods, including Internet websites
that merely advertise the goods, are not acceptable to show use [before the U.S. Patent and Trademark Office]. The website printout must contain photographs of the mark on the goods or their packaging for the website to qualify as a type of electronic catalog, as cited in Lands End v. Manbeck.
This case held that a printed paper catalog could qualify as proof of use of the mark on goods if
- the catalog contains a picture of the relevant goods;
- it shows the mark sufficiently near the picture of the goods to associate the mark with the goods, e.g., above, beside or below the picture; and
- there is information necessary to order the goods, e.g., a phone number, mailing address or email address. In the context of a website, it is quite probable that a â€œbuy it nowâ€� or â€œadd to shopping cartâ€� button would also suffice for this third requirement.
--- In PatentLawPractice@yahoogroups.com, "Stephan"
stupid question time--since the list is quiet. I have never known
whether you put the little plastic divider piece that comes w/ 3 ring binders in the front, or back, of the papers you file in there.
Date: Thu, 16 Dec 2004 15:22:37 -0000
Subject: [PatentLawPractice] Re: 3 ring binder query
According to: https://binders.securesites.com/sitehtml/faq.html
13. WHAT ARE SHEET LIFTERS?
They are pieces of rigid plastic that prevent pages from curling around the ring mechanism in a binder. As the binder is being closed,they help lift the sheets of paper up and over the rings. In round ring binders curved sheet lifters are placed between the front and back covers and the text. In D-ring binders, one flat sheet lifter is placed between the front cover and text.
More ODR providers are listed here.
Rather, the issue of the '015 patentâ€™s obviousness arises because the prior art showed one, two and four elongated handles on weight plates. A single elongated handle on a weight plate was disclosed by the â€™140 patent. Two elongated handles on a weight plate was disclosed by the â€™502 patent. Four elongated handles on a weight plate was disclosed by U.S. Design Patent No. 406,183 (â€œthe â€™183 patentâ€�).However, the court also noted that simply because an invention falls within a range disclosed by the prior art does not necessarily make it per se obvious. Both the genus and species may be patentable.
Nonetheless, where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention; or (2) that there are new and unexpected results relative to the prior art.
However, as noted in the dissent by Judge Newman, other parts of the specification describe the flutes working in conjunction the perforated pipe to ensure that sufficient air will be present in the material to achieve complete decomposition. In her view, the applicant's "belief" statement in the specification did not require the air channels and was not the invention that was patented.
In most places the specification describes the invention as including both flutes and perforated pipe, and the drawings show both flutes and perforated pipe. Specifically, the abstract states that "[t]he presence of air in the channels created by the flutes and the air present in the perforated pipe ensures that sufficient air will be present in the mass to achieve complete decomposition of the material." The specification further states that "[t]he air present in the grooves in the material [i.e., the flutes] and the air present in the perforated pipe causes the material to properly decompose." However, the specification also points out that both structures are not required, stating: "[I]t is believed that sufficient air will be present to achieve decomposition with either the channels 48 or the perforated pipe 50 although it is preferred that both the flutes 46 and the pipe 50 be utilized." We conclude that, in light of this disclosure, flutes are not essential.
Moreover, here the language of the claim itself also suggests that the means for creating air channels does not have to include flutes. After setting forth the "means . . . for creating air channels" limitation, that limitation is further defined by the next clause of the claim, which reads: "said means for creating air channels comprising positioning means which positions at least one elongated, perforated pipe . . . ." Although "comprising" language is not limiting and may include features not recited in the claim, such language cannot be read to require other structure. Thus the claim language itself shows that flutes are not required structure for the "means . . . for creating air channels."
Furthermore, the doctrine of claim differentiation supports the conclusion that flutes are not necessary structure. The doctrine of claim differentiation "create[s] a presumption that each claim in a patent has a different scope." The difference in meaning and scope between claims is presumed to be significant "[t]o the extent that the absence of such difference in meaning and scope would make a claim superfluous." Here, claim 2 of the â€™910 patent depends from claim 1 and adds that flutes are "also" present:2. The machine of claim 1 wherein said tunnel means has inner and outer surfaces and wherein said means for creating air channels also comprises spaced-apart inwardly projecting flutes positioned on the inner surface of said tunnel means.
The specification, drawings, and prosecution history all teach that a material aspect of the device is the air channels or grooves created by the plurality of flutes. The patentee may have "believed" that some other structure could achieve decomposition, but that is not what was presented for examination.
So what's a patent practioner to do, you ask? I say, use as much "claim-type differentiation" as possible and hope like hell that you never have to bet your career on a means-plus-function claim.
Click here anytime to listen to a rebroadcast of the November 2003 APLF Roundtable Event on "Structure, Function, and the Importance of Claim-Type Differentiation." The PowerPoint materials are available here. You'll also need RealPlayer installed on your computer.
And, of course, feel free to contact me for an in-person presentation of these materials to your patent organization.
Like the court in Decca, we conclude that the location ofIn Decca, the court addressed a claim of infringement by the governmentâ€™s "Omega" navigation system for global positioning of ships and aircraft. The system included one "master" control station, located in the United States, and several planned transmitter stations, to be located around the world, including in Norway. The government relied on Deepsouth Packing Co.
RIMâ€™s customers and their purchase of the BlackBerry devices establishing control and beneficial use of the BlackBerry system within the United States satisfactorily establish territoriality under section 271(a). We thus affirm the judgment of the district court that section 271(a) applies to RIMâ€™s
allegedly infringing conduct.
The case before us can be distinguished from Deepsouth in that the location of the infringement is within United States territory, not abroad as in Deepsouth. Even though one of the accused components in RIMâ€™s BlackBerry system may not be
physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States.
Defenses to a Dilution Claim Under the FTDA
Proof of Dilution in the United States
U.S. State Dilution Laws
Summary of State Dilution Cases
The Protection of Well-Known Marks in the European Union, Canada and the MiddleEast
Appendix A - Summaries of Key OHIM Decisions
Appendix B - Austria, Denmark, Finland, Sweden
Appendix C - Benelux, Ireland, United Kingdom
Appendix D - France, Germany, Italy, Spain
Appendix E - Hungary, Latvia, Slovakia, Slovenia
Appendix F - Norway, Switzerland, Czech Republic, Poland
Appendix G - Bahrain, Egypt, Gaza, Israel
The Protection of Well-Known Marks in Asia-Pacific, Latin America and Africa
Asia-Pacific and Africa