CAFC Leaning Toward 'Procedural Approach' to Claim Construction

In The Gillette Company v. Energizer Holdings, Inc. (Fed. Cir.; April 29, 2005), the court looked at the claim language "comprising . . . a group of first, second, and third blades" in order to determine whether it can encompass four-bladed safety razors (such as the QUATTRO®) or is limited to solely three-bladed safety razors. The majority opinion by Judge Rader concluded that the "open" claim terms "comprising" and "group of," in addition to other language, to encompass subject matter beyond a razor with only three blades:

The specification specifically acknowledges that it is not the three blades themselves which solve the prior art problem of detrimental drag forces, but instead the
arrangement of three blades in a particular spatial configuration, stating "the
novel aspects of the present invention residing in the provision of three blades
set in the blade unit set in particular dispositions with respect to each other
and the guard and the cap." The written description likewise discusses
these parameters with respect to the relative positioning of each of the three
blades at length. These principles of progressive blade exposure and progressive blade span could apply equally to four or five blades. Such a geometric arrangement of three, four, or even more blades will achieve a closer shave and, at the same time, minimize excess drag. It may be that a four-bladed safety razor is a less preferred
embodiment. A four-bladed razor costs more to build, requires more parts, and
adds more frictional drag compared to the three-bladed version.

The court also noted that, in contrast to Markush group language using the word "consisting," the phrase "group of" is presumptively open. Furtherore, with regard to the numerical references in the claim, the court pointed out that

The terms "first, second, and third" are terms to distinguish different elements of the claim, not terms supplying a numerical limit. Thus, the "first," "second," and "third" blades need not necessarily appear in that order or necessarily limit the blade unit to only three blades. Instead, these ordinal terms designate different blades within the "unit" according to their location and elevation. . . . . [T}he reference to "first," "second," and "third" blades was not a serial or numerical limitation, the claim does not follow a consecutive order (i.e., it does not discuss the second blade after the first). The claim is thus clearly not using the ordinals — first, second, third — to show a consecutive numerical limit but only to distinguish or identify the various members of the group. . . .

And, finally, with regard to the file history,

The defendant itself endorsed an open interpretation of "comprising" when it
argued to the European Patent Office (EPO) that a virtually identical claim in
Gillette’s European counterpart to the patent would not exclude an arrangement
with four or more blades. This blatant admission by this same defendant before
the EPO clearly supports this court’s holding that those skilled in the art
would construe the claims of the ’777 patent to encompass razors with more than
three blades.

Professor Hal Wegner calls this decision "Phillips Claim Construction Tea Leaves" and writes that the case continues a trend of panel opinions that maintain the full literal scope of a claim without narrowing the scope of protection to preferred embodiments:

The case is of interest as a predictor of the [upcoming] en banc Phillips case because there is a well written dissent that fully expresses the countervailing view that the author of the majority opinion had once dubbed a “specification űber alles� approach. Thus, the matter was thoroughly thrashed out in the opinion making process. The dissent was written by Senior Judge Archer who is not a member of the en banc panel in Phillips.

The folks at the Federal Circuit Claim Construction Project would likely agree Their Federal Circuit Predicter tool estimated a 71% chance that this panel would use a procedural claim construction approach "characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language." Based upon their current data, the odds appear to be running at about 2:1 strongly in favor of such a procedural outcome in the Philips en banc decision:

Happy Anniversiary I/P Updates!

Over the past year, my colleagues and I have shared just a few of the things that we know about intellectual property, all at no charge to you. Now, it's your turn to let us show you what we can do for your business. Please call me at 404-729-0729 to arrange a meeting or make a referral, and get future reports from the "I/P Updates" news service

. . . or just click on the image above to send a tasteful balloon-bouquet.

Thank Goodness It's Friday (and Ludi Florales),

--Bill Heinze

Wegner on Reexamination Reform

According to Hal Wegner's "Dear Jon letter" on patent reform, much more important than getting the average pendency down and eliminating the four-plus year reexaminations is that the Office immediately tackle the clearly most important reexaminations: Reexaminations that are filed by a losing party (or his strawman) after a full trial on the merits, after years of work on both sides, millions of dollars in fees by each side, and countless hours spent by a trial court, its staff and a jury.

He proposes an immediate fix to the most important reexamination proceedings that is available in the gap between now and the effective date of any new legislation:

We now have roughly sixty APJ’s who are eager and willing to take up the
post-grant review system that may pass Congress as early as next year. In the
meantime, why not designate two (2) of the most problematic reexaminations to
each APJ, immediately, and have the APJ clear up the 120 most serious
reexamination cases. If this were done, all of the reexaminations that have
generated so much notoriety to the system could be disposed of quite promptly.
Within the category of the Top 120 Cases there could be included the longest
pending reexaminations.

APJ’s would also streamline the process through ad hoc innovations. For example, we are now experiencing "paperless" interference proceedings that have been established through ad hoc orders of APJ’s. Only APJ’s have the security in their positions to innovate in such a manner, to the great benefit of the system (and also providing a pathway for the Office at large).

APJ’s should also be assigned all new reexaminations before the Order stage where there has been either (a) a prior reexamination proceeding filed; or (b) there is concurrent (or prior) litigation on the patent. Examiners are too often paralyzed into a default grant of an Order, when in fact there is no substantial new question of patentability. Only an APJ will have the confidence to deny a reexamination order in a case within these categories, which would greatly streamline the work of the Office.

Pop-Up Ad Strategy Summary

A chart in the August 2004 issue of Modern Practice summarizes the results of four pop-up advertising cases with the author's conclusion that

Each side in the pop-up advertising battle should focus on the most favorable forum in which to make its case and the most relevant claims and defenses to present. For website owners, forums in which pop-up advertising has been deemed unlawful or where the initial interest confusion doctrine is recognized are likely advantageous. The opposite is, of course, true for pop-up advertisers. Further, depending on whether the facts differ from previous pop-up cases, or whether the court is more liberal in extending copyright protection, website owners may also want to focus their attention on trademark infringement claims. Pop-up advertisers, on the other hand, will likely find comfort in authority categorically dismissing copyright claims. Finally, both sides must be prepared to address the use in commerce issue which has played prominently in all reasoned pop-up advertising cases.

An Outline of Bio-IPRs Since the Discovery of DNA

In the 50 years since Crick and Watson’s discovery of the structure of DNA, intellectual property law has evolved to the extent that it is now possible to acquire rights over most forms of genetic innovation with only limited exceptions. However this evolution has not been without controversy. Both in the 1880s, and subsequent to the events of the 1950s, disquiet has been expressed at the treatment of genetic material as private property. This January 4, 2005 article from Pharmalicensing.com provides an outline of some of the developments in European bio-intellectual property rights (‘bio-IPRs’) post-Crick and Watson.

Webcast Today on Congressional I/P Reform Proposal

Thursday 04/28/2005 - 12:00 PM
2141 Rayburn House Office Building
Subcommittee on Courts, the Internet, and Intellectual Property Oversight
Hearing on the Committee Print Regarding Patent Quality Improvement (Part II)
Click here for the live webcast testimony of

• Honorable Jon W. Dudas Under Secretary of Commerce for Intellectual Property & Director of the U.S. Patent and Trademark Office
• Richard Levin President, Yale University
• Dr. Nathan P. Myhrvold Chief Executive Officer, Intellectual Ventures
• Darin E. Bartholomew Senior Attorney, Patent Department, John Deere and Company on behalf of the Financial Services Roundtable

Click here for more-extensive information from the Promote the Progress Blog, including materials from the earlier April 20, 2005 House oversight hearing and the April 25, 2005 Senate hearing in the right column of http://www.promotetheprogress.com/.

Highlights of USPTO Comm'r Dudas' Testimony to Congress

The following was excerpted from "The Patent System: Today and Tomorrow," presented before the United States Senate on April 21, 2005:

• The USPTO issued more patents last year alone (173,000) than it did during the first 40 years of its existence.
• Patent pendency now averages more than two years. Without fundamental changes in the way USPTO operates, average pendency in [some] areas could double by 2008. Moreover, without intervention, the backlog of applications awaiting a first review by an examiner could grow from its current level of approximately 500,000, to over 1,000,000 by 2010.
• The USPTO will implement a new process for handling reexamination proceedings. Our goal is that, by the end of FY 2005, we will have resolved all instances of ex parte reexamination proceedings that have been pending with an examiner for more than two years. Specifically, of the current 1,200 pending ex parte reexamination proceedings, we hope to resolve 420, or over one-third of our current reexamination workload. If we had not undertaken this challenge, the total number of reexaminations pending for more than two years would have risen to 600 by the end of this year. An additional commitment is that, by the end of FY 2005, the USPTO will set a defined time period for all future ex parte reexamination proceedings to be completed before the examiner, and the period will be less than the two years achieved in fiscal year 2005.
• Post-Grant Review has great support among all major patent interest groups, including the bar, technology companies, academicians, and others seeking patent reform. We look forward to working with the Committee in helping it design the most effective and fair post-grant review process.
• We are currently developing the means for making such required education available to all practitioners via the Internet and through Continuing Legal Education (CLE) providers.
• Last year, more than 100,000 of the 355,000 applications filed with the USPTO were iterations of applications that had previously been reviewed by an examiner. That is, more than one-third of the applications received last year were not, strictly speaking, "new." Rather, they represented a form of re-work. Given the ever-increasing workloads we face, it is necessary and appropriate for all to consider whether some restrictions should be placed upon so-called "continuation" practices.
• Currently, about 7 percent of applications present about 25 percent of the patent claims we examine. That is, a minority of applicants (7%) creates more than 25% of the claims-review work. We are considering the possibility of requiring applicants who file these so-called "super-sized" applications to help us by identifying the relevant issues.
• Ensuring such a focused examination is a joint responsibility of the examiner and the applicant. By working to improve the ways that the best, most relevant information comes before the examiner, we will best achieve the goal we all share of high-quality patent grants that have the respect and trust of the entire patent community, both domestically and internationally.
• There is growing anti-IP sentiment internationally – and in some domestic circles. This sentiment has even, in some instances, spilled into the World Intellectual Property Organization (WIPO). In February 2005, we held an inaugural meeting in the United States, which was attended by 20 nations, the European Union, and the European Patent Office. Subsequent WIPO-sponsored consultations resulted in a general statement regarding a suitable work plan for proceeding with patent law harmonization within WIPO. This dual approach will be encouraged for other IP-related issues as well.
• At WIPO, less than $1 out of every $3 goes to the Office of the Patent Cooperation Treaty (PCT). As a result, the United States and a handful of other developed nations effectively are the net donors to the WIPO, while the remaining 174 nations are net receivers. These net receivers are the beneficiaries of the fees Americans pay, which do not go to PCT operations.

Click here for more-extensive information from the Promote the Progress Blog, including materials from the earlier April 20, 2005 House oversight hearing and the April 25, 2005 Senate hearing in the right column of http://www.promotetheprogress.com/.

Ford Requests Investigation of Automotive Grilles from Taiwan

On April 26, 2005, Ford Global Technologies, LLC filed a "Section 337" complaint at the U.S. International Trade Commission requesting an unfair import investigation involving "Automotive Grilles." The proposed respondents are Keystone Automotive Industries, Inc., Y.Y.C., Pomona, California; and Parts Manufacturing Co., Ltd.; Taiwan, R.O.C. The complaint has been designated as confidential and assigned Docket No. 337-2426 for indexing in the Commission's database at https://edis.usitc.gov/hvwebex//.

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 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.

Planning Is Key to Successful EDD

According to a January 27, 2005 article in the New Jersey Law Journal, wading through electronic data systems, the "file cabinets" of today, isn't as easy as "point and click." The typical rule of thumb when estimating an electronic discovery data collection is to anticipate 12,000 to 15,000 files per gigabyte. With volumes like this, your team could soon be drowning in a sea of digital data without careful planning of data collection. Their advice: know the network, understand the data, and make a plan.

Click here for specific steps that your company should take to address "E-Discovery and Inevitable Litigation."

New PCT Wheel Available from WIPO

WIPO's "PCT Wheel" for calculating PCT due dates has been redesigned to take into account recent amendments to the PCT Regulations including the new time limit for filing a demand for international preliminary examination. The new PCT Wheel, covering priority dates from January 2004 to December 2005, will be inserted in the May 2005 issue of the paper version of the PCT Newsletter (No. 05/2005). Nonetheless, a limited number of PCT Wheels is also available on request, free of charge, from WIPO - World Intellectual Property Organization; Design, Marketing and Distribution Section 34; chemin des Colombettes1211 Geneva 20; Switzerland; Fax: (41?22) 740 18 12; E-mail: publications.mail@wipo.int

Free Teleseminar on Reexamination and Reissue

Reexamination and Reissue - Snatching Victory From the Jaws of Defeat?
Thursday, May 05, 2005
1:00 PM EDT to 2:00 PM EDT
Teleconference

Click here for information and registration.

The Role of I/P in Marketing Crafts and Visual Arts

This WIPO Guide provides basic information about marketing techniques and intellectual property for artisans and visual artists. It seeks to indicate why, which, what, where, when, whether and how consideration ought to be given to the effective management of IP assets by using IP tools for successful marketing of craft and visual art products. In particular, it seeks to help artisans and visual artists to establish

USPTO Opens New Electronic Facility to Hear Patent or Trademark Appeals

The Commerce Department's United States Patent and Trademark Office (USPTO) today launched a new state-of-the-art electronic facility for hearing patent appeals before the Board of Patent Appeals and Interferences (BPAI) and appeals and contested cases before the Trademark Trial and Appeal Board (TTAB).

The BPAI held its first set of hearings this afternoon in the new Electronic Hearing Room while the appellants participated electronically from Chicago. The electronic hearing room allows for an oral hearing in an ex parte appeal or inter partes case from remote locations anywhere in the world. While three administrative patent or trademark judges preside from the USPTO in Alexandria, Va., an attorney can present a client's case from anywhere around the globe with equipment capable of dialing Standard - H.320 (ISDN) protocol.

“The USPTO is committed to the President's management agenda goal of citizen-centered operations,� said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Our electronic hearing room is another way in which we are fulfilling the President's goals. The new cyber hearing room saves our customers time and money, because they don't need to travel to our Office in order to be heard.�

Through the use of a large plasma screen in the new hearing room, as well as other hardware and software, patent and trademark judges are able to see the presenting attorney and receive evidentiary documents electronically. Hearings are conducted as usual even though the parties are hundreds or thousands of miles apart. Many law firms have purchased the necessary equipment so their attorneys can conduct electronic hearings with BPAI and TTAB. Attorneys can also participate in oral hearings from Patent and Trademark Depository Libraries located in Sunnyvale, California; Detroit, Michigan; and at Texas A&M University in College Station, Texas.

Businesses Need I/P Strategy with Metrics

According to the recently-released Spring 2004 DLA European Intellectual Property Survey there is widespread lack of confidence in IP management abilities and IP strategy performance measurement is the area of greatest internal concern. Most of the participating companies still do not have an IP management strategy and have a narrow view about what they need to do to protect their IP. They are reluctant to devote significant investment towards the effective patent drafting and, even when they do have a strategy in place, companies rarely conduct valuation of their IP assets or measure performance of those assets.

In the study, a series of seven possible metrics were put to respondents to find out a) which are being used (in descending order below):

• percentage of income from products sold under registered trade marks
• percentage of income from products sold by the business incorporating patented technology
• percentage of turnover spent on registering IP
• percentage of income from licensing IP generally
• percentage of turnover spent on licensing IP
• percentage of income from patent licensing
• percentage of turnover spent on enforcing IP

and b) how useful they are or could be, (also in descending order below):

• percentage of income from products sold under registered trade mark
• percentage of income from products sold incorporating patented technology
• percentage of income from licensing IP generally
• percentage of turnover spent on licensing in IP
• percentage of income from patent licensing
• percentage of turnover spent on registering IP
• percentage of turnover spent on enforcing IP

For more on this topic, see "Investor Expectations go Unmet by I/P Managers."

Investor Expectations Go Unmet by I/P Managers

According to a study of European I/P practices by KPMG, "there is a dangerous separation between ostensible management authority and financial
accountability for intellectual property assets. It is difficult to think of another class of corporate asset which is so highly regarded as a source of value, but which is the victim of such careless guardianship. . . .There is clearly something of an expectation gap between what investors are looking for and what companies are doing."

Here are some of the results of their survey of 300 leading companies:

• 58 percent of companies researched have created or plan to create a
  documented IP strategy.
• Most boards – 72 percent - take some role in IP management, only one
  in three participate in setting IP strategy.
• In more than 40 percent of companies, IP remains the preserve of the
  Legal Department. In only 24 percent of companies is there a separate
  IP director.
• The majority of companies – 56 percent - do not actively seek to
  commercialise their IP. Yet they estimate that such action could
  benefit each company substantially. Amongst those that put a figure
  on it, the amount forfeited through not commercialising their IP assets
  was on average Euros 6.6m a year.
• Of those companies that licence out their IP, those that expect
  increases in licensing income outnumber those who predict falls
  by eight to one.
• 71 percent of all respondents have no performance indicators for IP.
• 46 percent of all companies do not report at all to the board on IP
  matters.
• 52 percent choose to leave IP outside the scope of internal audits.

For more on this topic, see "Businesses Need I/P Strategy with Metrics."

Developed Countries Announce Preliminary Consensus on Patent Harmonization

On April 19 and 20, patent law experts from the industrialized nations met at the European Patent Office headquarters in Munich, Germany, to begin discussions on the elements of the Trilateral "first package" concerning substantive patent law harmonization: definition of prior art, grace period, novelty and non-obviousness. The meeting was the first of the Working Group of Experts, which was established at the February 2005 "Exploratory" Meeting Concerning the Future of Substantive Patent Law Harmonization hosted by the United States Patent and Trademark Office. The following statement was adopted by the Working Group at the conclusion of the meeting:

The Working Group of Experts of industrialised nations considering the substantive issues of the first package, set up by the meeting in February 2005 in Washington, met on 19 and 20 April 2005 in Munich.The meeting was attended by delegations from Australia, Canada, Japan, New Zealand, Norway and the United States of America, as well as Austria, Belgium, the Czech Republic, Denmark,
Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, the United Kingdom, the European Commission and the European Patent Office. The meeting was chaired by Mr Dave Herald, Deputy Commissioner of IPAustralia.

The Working Group conducted discussions in an open and constructive manner on the provisions concerning novelty, inventive step, grace period and prior art drafted in the context of a first-to-file system. In particular, a preliminary consensus within the experts' Working Group was achieved for many provisions of the first package, such as Articles 8(1) and 12(2) as well as Rules 8, 9(1)(b), 9(2), 14, and 15(1) to (3) of the draft SPLT as amended by the Group.

Further work is required inter alia regarding the treatment of conflicting applications and its ramifications and the features of a possible grace period as well as a number of particular issues of detail, where it is hoped that consensus can be achieved.The delegations reaffirmed their support for the harmonisation process and expressed the view that work on the first package, as well as the issues from the Working Group on IP and development, should resume within WIPO at the earliest appropriate moment. The results of this meeting will be transmitted to the Plenary meeting which will take place in Munich on 30 and 31 May 2005.

How to Choose a (Patent) Law School

Click here for advice to hopeful pre-law students, courtesy of Dennis Crouch at The Patently-O Blog.

WIPO Updates PCT Time Limit Table

On April 22, 2005, the World Intellectual Property Organization published its new table of "Time limits for entering national/regional phase under PCT Chapters I and II." Click here for other PCT resources.

Today is World Intellectual Property Day

According to the World Intellectual Property Organization, World Intellectual Property Day provides an opportunity to reflect on how intellectual property (IP) touches all aspects of our lives: How copyright helps bring music to our ears and art, films and literature before our eyes; how industrial design helps shape our world, and how trademarks provide reliable signs of quality; how patenting helps promote ingenious inventions that make life easier, faster, safer – and sometimes completely change our way of living.

"These things are often taken for granted; there is little public awareness of
the connection between human creativity and intellectual property in daily life.
Although most people have heard of copyright, patents and trademarks, many view
them simply as business or legal concerns, with little effect on their own
lives. World Intellectual Property Day provides an ideal opportunity to improve
public understanding of – and respect for – creativity, innovation, and the
intellectual property system by demonstrating their importance in daily life."

Here are a few things that that they suggest to celebrate this year's World Intellectual Property Day:

• Organize concerts or other public performances centered around the "Think Imagine Create" theme; arrange for performers to deliver messages encouraging respect for creators and creativity.
• With local businesses and chambers of commerce, organize workshops on how businesses, especially small and medium-sized enterprises (SMEs), can benefit from using the intellectual property system.
• Work with local newspapers to publish editorials encouraging respect for the rights of creators.
• Organize conferences at local universities to build awareness of intellectual property and its benefits among students, faculty and researchers.
• Mount exhibits at local shopping malls explaining how consumers benefit from strong intellectual property systems (for example, how reliable trademarks can ensure consumer confidence, or how pirated or counterfeit goods can cause problems for consumers).
• Hold a panel discussions (debate) on “hotâ€� intellectual property issues (ie. Patents and pharmaceuticals, the download of music from the Internet, open source vs. software patents, etc.) – encourage public participation or hold in a university.
• Arrange school visits to local science and art museums, with presentations explaining the link between the exhibitions, creativity, and intellectual property.
• Working with local inventors’ societies, stage a competition for best invention. Other competitions can be held for best novel, play, work of art, or any creative work protected as intellectual property.
• Organize an event to give recognition to a great inventor, musician, artist, etc. from the region or country.
• Conduct workshops aimed at various groups of creative people – artists, performers, designers, musicians, inventors, entrepreneurs, etc. – to explain the concrete benefits provided by the intellectual property system for these professions.
• Create locally-focused intellectual property day materials, such as posters, brochures, and bookmarks, targeted at specific audiences in the local language.
• Organize “open doorâ€� day in the local intellectual property or copyright office.
  Broadcast radio and television discussion programs centered around the question of creativity and innovation and how to encourage and protect them, featuring participants from the creative fields as well as from local intellectual property administrations.
• Hold an exhibit of local traditional knowledge showing its modern application and use.
  

Independent Inventor Gets $1.35 Billion

Medtronic Inc. said on Friday that it would pay $550 million to settle the lawsuit and another $800 million to acquire the patents of Dr. Gary K. Michelson, and his company, Karlin Technology. Dr. Michelson said that when he invents, he works nights and weekends at his kitchen table or in his garage.

Michael DeMane, president of Sofamor Danek, Medtronic's spinal business, reportedly said the company has spent $25 million to $30 million over the last several years in legal costs associated with these patents.

Dr. Rick Sasso, a spinal surgeon from Indianapolis, said he did not think that Dr. Michelson's ideas were all totally original, but that he was very adept at getting patents. "He didn't make any of those things," Dr. Sasso reportedly told the New York Times. "He didn't manufacture. He got some ideas and wrote them on a piece of paper and filed them with the patent office."

"I am very happy," Michelson reportedly said of the settlement. "I am looking forward to working with Medtronic to see how many of the devices we can develop to help patients."

Whereby Clause Limits Method Claim

In Hoffer v. Microsoft(Fed. Cir. April 22, 2005), the patent owner argued that the "whereby" clause in a method claim for the interactive trade network exemplified above should not limit the claim, pointing out that the Federal Circuit has held that "a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited." Minton v. Nat'l Ass'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). But the Federal Circuit disagreed under the facts of this case:

It is correct that a "whereby" clause generally states the result of the
patented process. However, when the "whereby" clause states a condition that is
material to patentability, it cannot be ignored in order to change the substance
of the invention. . . .

The whereby clause describes a network of users at multiple remote user terminals who are "collectively able to concurrently engage in interactive data messaging." This capability is more than the intended result of a process step; it is part of the process itself.

This interactive element is described in the specification and prosecution history as an integral part of the invention. The "Summary of the Invention" recites that "[f]rom a remote terminal, the user would enter selected topic boards on a Host Terminal System ('Host System') to address messages to, and receive messages from, other intended users." Col. 6, lines 64-67. Thus, the users communicate with each other.

The prosecution history is in accord. Mr. Hoffer points to an amendment during prosecution which made the disclaimer that "newly added [patent claim 21] is an independent method claim . . . that satisfies the Examiner's Statement by solely teaching methods distinct from real-time messaging." However, there is a difference between real-time messaging and interactive messaging, which can occur in real time or asynchronously.

We confirm the district court's construction of the "whereby" clause as requiring interactive data messaging, and that claim 1 is thereby limited to a method that provides interactive date messaging.

Habemus Papam Squatteram

This self-proclaimed "understatedly handsome computer book author" who registered www.benedictxvi.com says that he just wanted to prevent a pornographer or online casino from getting it first. He has a few requests (not demands) before "the future of this domain will be routed through his devout Catholic grandmother:"

• Three days, two nights at the Vatican hotel they built for the conclave.
• One of those hats.
• Complete absolution, no questions asked, for the third week of March 1987.
• A back-cover blurb from the Pope for the next edition of Movable Type 3 Bible Desktop Edition. But only if he uses the book to create his own weblog.
• World peace.

Click here for more about cyber-squatting.

Proactive I/P Lawyering a Bad Thing?

Maybe, maybe not, say the comments on this article. What are your thoughts on this controversial topic? Are enhanced damages just an excuse for attorneys and their clients to bury their heads in the sand until things get out of control? Why shouldn't purposefully avoiding an examination of your competitors intellectual property rights be the real basis for a finding of wilfull infringement and enhanced damages? After all, ignorance of the law is no excuse.

TGIF for Questionable Invention Disclosures

We all get them. Those purely functional invention disclosures where the client thinks that "it's the patent attorney's job" to explain how to actually make and use the invention. Well now, thanks to Jeremy Stribling, Max Krohn, and Dan Aguayo, three graduate students at the PDOS research group at MIT CSAIL, clients who simply want to "get more patents" can easily use the "SCIgen - An Automatic CS Paper Generator" website.

According to an April 14, 2005 report from Reuters, their computer-generated paper entitled "Rooter: A Methodology for the Typical Unification of Access Points and Redundancy" was accepted for presentation to the World Multi-Conference on Systemics, Cybernetics and Informatics (WMSCI), scheduled to be held July 10-13 in Orlando, Florida.

The students explain that the goal of their website is to "auto-generate submissions to fake conferences; that is, conferences with no quality standards, which exist only to make money. A prime example, which you may recognize from spam in your inbox, is SCI/IIIS and its dozens of co-located conferences (for example, check out the gibberish on the WMSCI 2005 website). Using SCIgen to generate submissions for conferences like this gives us pleasure to no end."

Conference organizer Nagib Callaos reportedly told Reuters that the paper was one of a small number accepted on a "non-reviewed" basis. "We thought that it might be unfair to refuse a paper that was not refused by any of its three selected reviewers. The author of a non-reviewed paper has complete responsibility of the content of their paper."

Conference organizers had not yet formally rescinded their invitation to present the paper and the students have now raised more than enough money to make it down to Orlando in order to give "a completely randomly-generated talk."

Still need some drawings for your disclosure? Click here for Context Free Design Grammar where you can use your randomly assembled paper's as a text file input to spit out a neat graphic.

China White Paper Touts IPR Success

According to the Chinese State News Agency on April 21, 2005, the Information Office of the State Council, China's cabinet, has issued a white paper entitled "New Progress in China's Protection of Intellectual Property Rights." The document is intended to "help the international community have a better understanding of the real situation regarding China's IPR protection and make a proper judgment" and list the following accomplishments:

• Establishment of a relatively complete system of laws and regulations.
• Patent protection. From April 1, 1985, when China's patent law went into effect, to the end of 2004, the State Intellectual Property Office (SIPO) handled 2,284,925 patent applications with an average annual increase of 18.9 percent. Of these, 1,874,358 were domestic applications, and 410,567 came from other countries, accounting for 82 and 18 percent, respectively. By the end of 2004, the SIPO had approved 1,255,499 patents. Of these, 1,093,268 were domestic ones, and 162,231 were from other countries, accounting for 87.1 and 12.9 percent of the total number of approved patents, respectively.
• Trademark protection. In October 2001, the Standing Committee of the National People's Congress made revisions to the "Trademark Law" for the second time, thus bringing the relevant provisions of China's "Trademark Law" in line with the principles of WTO's "Agreement on Trade-related Aspects of Intellectual Property Rights." By the end of 2004, China had had 2,240,000 registered trademarks, and meanwhile, 129 countries and regions had had 403,000 trademarks registered in China. This represents almost a 79-fold increase over that in 1979, accounting for 18 percent of the total number of registered trademarks in China.
• Copyright protection. According to incomplete statistics, from 1995 to 2004, copyright administrative management departmentsat all levels confiscated 350 million pirated copies, accepted 51,368 cases of infringement and resolved 49,983 of them. In 2004, they accepted 9,691 cases of infringement, resolved 9,497 of them and imposed administrative sanctions on the infringersin 7,986 cases. These included the investigation and punishment of two Chineseenterprises that had infringed upon the copyright of the Microsoft Corporation of the United States and other major cases.

The white paper itself concludes that

"Practice over the past two decades and more has shown that the Chinese
government has made arduous efforts to protect IPR. China has achieved a
noticeably great improvement in IPR protection, which took the developed
countries several decades and even over a century to attain. However, the
Chinese government is clearly aware that, in a large developing country with a
population of 1.3 billion, relatively backward economy and low level of science
and technology, a complete IPR protection system cannot be established
overnight. China has a long way to go in this regard, and is faced with heavy
tasks in IPR protection."

In another story published today, state-owned Beijing Metals and Minerals Import and Export Co. was ordered to compensate Nike 165,000 yuan (US$20,000) in Shanghai on Wednesday for attempting to export thousands of fake products to Russia.

In China, the owner of the trademark is obliged to pay customs to impound disputed products and then claim the costs back from the person or company at fault. "Nike paid more than 140,000 yuan (US$17,000) to Shanghai Customs to keep the products from July 2001 to August 2002," said Wang Huixiang, Nike's attorney. "We tried many times to negotiate with the defendant over the costs, but were refused." "My client was not responsible for checking whether the products are genuine or not," said Jin Xiaobing, lawyer for Beijing Minerals.

Marking the Patent Beast?

In "Marking the Software Patent Beast, Stanford University law student Stephen Lindholm argues that software patents are, practically speaking, hidden away in the recesses of the patent office and practically impossible to find. The first economic principles of the patent system provide that there can be no justification for patenting software when the public has no knowledge of the patents' scope or technical disclosure. It concludes with a proposal to put teeth into the patent marking requirement "so that holders of software patents would be required to play by the same rules as holders of other kinds of patents:

Long ago inventors would be criminally punished for failing to mark their products, but then the law was changed to couple the punishment (no retrospective damages)with patent law. It seems that a more severe punishment is necessary to ensure that software products continue to be marked. This proposal is that patent holders be permanently barred from enforcing patents on products not marked. Whether this proposal is limited to software patents or not is not relevant to this paper.

A milder proposal is that damages would be disallowed until the products are marked, regardless of notice. In practical terms it might amount to the same thing. Major computer patent portfolios are so large that companies don’t know what they own, and it seems unlikely that any large-scale marking effort would take place given the expense and the need for near-total compliance among the companies’ own products as well as those of licensees. It seems more likely that marking efforts would focus on the most valuable patents, having already been identified for licensing purposes.

Hey Stephen, why not just go hog wild and require software developers to monitor new patent publications? I do it for my clients in industries where patent marking is the norm.

When Experts Talk, Judges Listen

It's generally a good idea to let your expert know when you are going to contend that a patent specification does not adequately support one of the steps in a claim.

In Space Systems/Loran v. Lockheed Martin (Fed. Cir. April 20, 2005), Lockheed's expert answered over his counsel's objection when asked to identify where the second step of the patent claim was depicted on Figure 2A and 2B. Nonetheless, rather than admit defeat, Lockheed's attorneys then tried to argue that the second modulating step of the claim was not "inherent" in the written description because the specification did not state that the second step is necessarily used. But the court was not hearing any of it:

To the extent that Lockheed is arguing that the second step need not always
be performed, Loral agrees that there may be occasions when the second step need
not be performed because the prebias correction was adequate and no actual error
remained after the first firing. According to the '375 patent the actual error
and historical error are compared after the thrusters have been fired in the
prebias correction; it is only after this comparison that the second modulating
step is employed. This does not diminish the descriptive content of the
specification. The evidence established, on undisputed facts, that the
specification describes the two modulating steps of the claim.

In all fairness, Lockheed also argued that the deposition tesimony of its expert was an improper new issue because Loral did not offer this part of the Alfriend deposition until after Loral's motion for reconsideration. But the court noted that "the district court specifically allowed Loral to refer to the deposition, and that the entire deposition was already before the court. This was a matter of district court discretion, and cannot be faulted."

Why the Canadian Development Proposal Failed at WIPO

According to BRIDGES Weekly for April 20, 2005, Canada's draft proposal to fourth session of WIPO's Permanent Committee on Cooperation for Development Related to Intellectual Property (PCIPD) on April 14-15 April would have broadened the scope of the PCIPD's work to include several of the issues that had been raised during the "development agenda" debates earlier in the week. In particular, the committe would have been given the authority to examine the effects of intellectual property regimes on innovation and economic growth in developing countries.

However, developing country advocates opposed the Canadian approach, arguing that their concerns needed to be addressed in WIPO's core debates, not marginalised in a technical committee such as the PCIPD. They argued that the PCIPD should limit itself to operationalising concrete tasks such as technical cooperation. At the end of the meeting, the majority of WIPO members formally rejected the summary of the meeting's outcomes that the Chair had prepared in consultation with delegations. However, they did agree that the September meeting of the PCIPD would consider adopting the report of the meeting's proceedings -- a document seen by a number of members to be more representative of their concerns than the Chair's summary.

USPTO Seeks Advisory Committee Nominations

The USPTO is seeking nominations for appointment to the Patent and Trademark Public Advisory Committees that review the policies, goals, performance, budget and user fees of the United States Patent and Trademark Office. The USPTO is requesting nominations for three (3) members to each Public Advisory Committee for terms of three years that begin from date
of appointment.

Nominations must be postmarked or electronically transmitted on or before May 27, 2005. Click here for more information.

ITCTLA 2005 Spring Luncheon on Section 337 Enforcement

ITC TRIAL LAWYERS ASSOCIATION
SPRING LUNCHEON AND CLE PROGRAM
Date: May 13, 2005

Time: Noon in Washington and New York; 9:00 a.m. (breakfast) in San Francisco

(The full program is expected to last until 4:00 p.m. ET)

Locations:WASHINGTON, D.C. NEW YORK SAN FRANCISCO

Howrey LLP, 1299 Pennsylvania Ave., DC

Morgan & Finnegan, World Financial Center LLP, New York

Morrison & Foerster LLP 425 Market Street, San Fransisco

CLE: 3 hours available for New York and California

Cost: $45 for attorneys; $35 for government attorneys (Checks payable to "ITCTLA")

The ITC Trial Lawyers Association Spring Meeting will be a luncheon jointly held in Washington, D.C., New York City, and San Francisco, with a video link between the three sites for a program of:

Opening Remarks

Stephen Koplan
Chairman, United States International Trade Commission

Enforcement of Section 337 Remedial Orders: Procedures, Recent Developments, and Bar Association Proposals

George McCray, Director, Intellectual Property Rights Branch Department of
Homeland Security
Jean Jackson, Assistant General Counsel (for Section 337), U.S. International Trade Commission David Foster, Miller & Chevalier,
Chartered, Chair, ITC Trial Lawyers Association Enforcement Study Committee "An
Insider’s View of Section 337 Litigation"
Delbert R. "Chip" Terrill, Jr. (Former ITC Administrative Law Judge), White & Case

Speakers will be at the New York City and Washington, D.C. locations and Q&A will be welcomed from all locations.

Five-Step I/P Strategy Blueprint

An April 18, 2005 article from Law.com offers a five-step blueprint for an IP strategy:

1. prepare employee contracts with nondisclosure provisions protecting business information and trade secrets
2. consider if patent protection is available and worthwhile business methods, software designs or inventions of any type
3. File trademark applications based on an intent to use the mark in commerce
4. register copyrights to recover statutory damages and attorney fees for copyright infringement
5. conduct yearly internal audits of IP rights

The author concludes that "Engineers know that the time and money spent in creating a detailed blueprint can avoid added expense during production. The importance of IP assets to modern business reinforces the benefit of a similar commitment of resources to create and implement an effective IP strategy."

Trademark Dilution Act Passes U.S. House

On April 19, 2005, the Trademark Dilution Revision Act of 2005 (H.R. 683) was passed by the U.S. House of Representatives 411 - 8 (Roll no. 109).

The Act modifies provisions of the trademark law relating to dilution by allowing an owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, to an injunction against another person who commences use of a mark or trade name in commerce, after it has become famous, as a designation of source of the person's goods or services that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of confusion, competition, or economic injury. The Act also

• Defines a mark as famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.
• Defines "dilution by blurring" as an association arising from the similarity between a designation of source and a famous mark that impairs the distinctiveness of the famous mark.
• Defines "dilution by tarnishment" as an association arising from the similarity between a designation of source and a famous mark that harms the reputation of the famous mark.
• Declares that certain acts are not actionable as dilution by blurring or dilution by tarnishment, including:

  (1) fair use of a famous mark by another person in comparative commercial
  advertising or promotion to identify the competing goods or services of the
  owner of the famous mark; (2) noncommercial use of a designation of source; and (3) all forms of news reporting and news commentary.

The legislation was in response to a 2003 Supreme Court decision against Victoria's Secret requiring proof of actual harm in order to prove dilution. "This is contrary to what Congress intended when it passed the dilution statute and is at odds with the concept of dilution," said Rep. Lamar Smith, R-Texas, reportedly told Associated Press. "Diluting needs to be stopped at the outset because actual damage can only be proven over time, after which the good will of a mark cannot be restored."

Live Webcast of Patent Reform Hearing at 4:30 Today

The Patently-O Blog has a summary of the patent reform proposal being discussed today by the

House Subcommittee on Courts, the Internet, and Intellectual Property Oversight
Hearing on the Committee Print Regarding Patent Quality Improvement
Wednesday 04/20/2005 - 4:30 PM
2141 Rayburn House Office Building
Click here for the live Webcast

The witness list includes:

• J. Jeffrey Hawley Legal Division Vice President and Director, Patent Legal Staff, Eastman Kodak Company (on behalf of Intellectual Property Owners Association (IPO))
• Richard J. Lutton Jr.Chief Patent Counsel, Apple (on behalf of the Business Software Alliance)
• Jeffrey P. Kusham Esq.Sidley Austin Brown and Wood, LLP (on behalf of Genetech)
• William L. LaFuze Chair, Section of Intellectual Property Law, American Bar Association (on behalf of the American Bar Association and the ABA Section of Intellectual Property Law)

The "committee print" proposal addresses a variety of issues, including

• a first-inventor-to-file system
• limits on broadening claims in continuation applications
• post-grant opposition
• requirements for finding willful infringement
• requirements for injunctive relief
• limits on damages

The Economist: Patent Apps Should Be Open to Public

According to an opinion piece in The Economist on November 11, 2004, "[T]he patent applications should be made public. In most countries they are, but in America this is the case only under certain circumstances, and after 18 months. More openness would encourage rivals to offer the overworked patent office evidence with which to judge whether an application is truly novel and non-obvious. Patent offices also need to collect and publish data about what happens once patents are granted—the rate at which they are challenged and how many are struck down. This would help to measure the quality of the patent system itself, and offer some way of evaluating whether it is working to promote innovation, or to impede it."

The EFF Endangered Gizmos List

Rather than sit back and watch as promising new technologies are picked off one-by-one, Electronic Frontier Foundation has created the extinct and Endangered Gizmos List to help you defend fair use and preserve the environment for innovation. "Don't let the dinosaurs kill off the competition," they say. Join the EFF campaign to help save endangerd gizmos."

USPTO Conference on I/P in the Global Marketplace

The United States Patent and Trademark Office will conduct two-day seminars in four American cities this spring and summer. The seminars are designed to help promote and educate the American small business community about intellectual property and the realities of piracy and counterfeiting.

The first seminar of the series will be held in Salt Lake City on May 23-24 at the University of Utah’s Gould Auditorium and will include information on:

• intellectual property
• how intellectual property affects your business
• how to protect and enforce your intellectual property here and abroad
• a special presentation on biotech/pharmaceutical patents.

Who should attend:

• small, medium, and large-size business owners and entrepreneurs
• independent inventors; corporate General Counsel
• business owners interested in selling products abroad, global trade, and international markets
• anyone interested in learning more about protecting and enforcing their intellectual property in the global marketplace.

There is no charge for the seminars, but seating is limited, so register online now.

Georgia Gets a Slam Spam E-Mail Law

According to the Georgia Govenor's press relase, today Sonny Perdue signed into law the Georgia Slam Spam E-mail Act. The Act provides penalties for the use of false or misleading practices, such as forging headers, using misleading subject headlines or falsely stating that the information in the e-mail was requested. Sending spam to Georgians from anywhere in the United States will be punishable as a felony where spammers:

• Send a high volume of spam, such as more than 10,000 messages in any 24 hour time period; or
• Generate more than $1,000 in revenue from a single spam message or more than $50,000 from all spam transmitted to any single Internet Service Provider (ISP); or
• Where the defendant knowingly uses a minor to assist in the transmission of spam.

Deceptive emails without these factors will be punished as a misdemeanor. Criminal penalties for a felony include a fine of not more than $50,000.00 or imprisonment of not more than five years, or both. For a misdemeanor, penalties include a fine of not more than $1,000.00 or imprisonment of not more than 12 months, or both. The act also enables ISP's, such as EarthLink, and domain-owners to bring civil charges against the spammers for fraudulent and deceptive e-mail. The act does not limit or regulate in any way the sending of legitimate advertisements through e-mail.

Madrid Protocol U.S. Fee Change Effective May 2, 2005

The World Intellectual Property Organization (WIPO) has adjusted the individual fees payable to the United States of America when the United States is designated for an extension of protection in an international application for registration or a subsequent designation. An information notice regarding the new fees that go into effect on May 2, 2005, is posted on WIPO’s web site at: http://www.wipo.int/madrid/en/notices/.

Copyright Term Extended in New York State

According to an article in the April 18, 2005 issue of Managing Intellectual Property, an April 5 decision of the New York Court of Appeals means that sound recordings made before 1972 cannot be reproduced without the permission of the copyright owner anywhere in New York until February 15 2067. The case is Capitol Records v. Naxos of America (April 5, 2005 NY Slip Op 02570) and according to John Caher writing in the New York Law Journal, "New York apparently stands alone in its common law protection of the intellectual property rights of composing artists."

Legal Blog Watch Alert from Law.com

If you like law weblogs ("blawgs"), you'll love the free, daily Legal Blog Watch Alert service from Law.com at https://store.law.com/registration/register.asp?SubscribeTo=lbw&w=lbw. View a sample here.

Free PCT Practice Teleseminar on April 21

Date: April 21, 2005
Time: 12:30 PM Eastern
Duration: 1 Hour
Please RSVP to info@aplf.org in order to obtain toll free dial in number
There is no charge to participate

Topic: The Patent Cooperation Treaty (PCT) - Enhanced International Search and Preliminary Examination (EISPE) System. How can you use the PCT system as part of your overall strategy to seek both U.S. and international patent protection?

Outline of Talk: The Patent Cooperation Treaty (PCT) continues to experience increasing popularity as the preferred system for preserving international patent rights to inventions. At present, the filing of a single application under the PCT will preserve international patent rights in 126 member countries for a period of either 30 or 31 months from the effective filing date.
This presentation will discuss the procedures available for pursuing international patent protection through the PCT, with particular emphasis on the options available to applicants through the Enhanced International Search and Preliminary Examination (EISPE) System that became effective for PCT applications having a filing date on or after January 1, 2004. In addition, this presentation will discuss issues to be considered in determining whether both U.S. and international patent protection should be sought through the initial filing of only a single application under the PCT system, or whether a separate US national application should be filed in addition to the filing of an international application under the PCT.

Presenter: Martin L. Faigus, [mlfaigus@crbcp.com] from Caesar, Rivise, Bernstein, Cohen and Pokotilow, Ltd

U.S. Statement on WIPO Development Agenda and Partnership Program

The following is excerted from the "Statement by the U.S. at the Inter-Sessional Intergovernmental Meeting on a Development Agenda For WIPO, April 11-13, 2005":

[T]he proposals submitted by Brazil, Argentina and other co-sponsors concern us, because they appear to imply that WIPO has disregarded development concerns, and that strong and balanced IP protection is detrimental to global development goals.

We disagree with both notions. As noted by the Director General of WIPO in his book entitled "Intellectual Property -- A Power Tool for EconomicGrowth," intellectual property is an important tool in economic, social and cultural development, and it encourages domestic innovation,investment and technology transfer. The experience of many developing countries here today will attest to the fact that IP has facilitated,rather than hindered, their development.

It appears obvious to us, however, that WIPO and intellectual property systems can contribute only a part of the solution. We must look toother international bodies, those whose core competence is developmentor trade, to address other core development issues. As the sponsors recognize, not all countries will achieve the samebenefits from intellectual property at the same time, and IP alone cannot bring about development. It is simply one part of the necessary infrastructure needed to stimulate development, as noted by the
delegate of Switzerland in his remarks yesterday. The thought that less IP willfurther development, however, appears to us to be as flawed as the idea that an IP system alone can bring about development.

The following is excerted from the "Statement Introducing U.S. Proposal for a Partnership Program":

Mr. Chairman, the United States has submitted a proposal for the establishment of a Partnership Program in WIPO.

The U.S. proposal is not intended to answer or rebut the Argentina/Brazil proposal, but it is premised on the recognition of the contribution that intellectual property and WIPO make to development and aimed at strengthening this contribution.

Our proposal is not just about technical assistance, but also about the strategic use of the IP system, including its flexibilities, for development.

The U.S. proposal would help developing and least-developed countries to partner with these institutions to achieve synergies and address specific circumstances and needs; to strike appropriate balance in national legislation, and to strengthen institutions such as IP offices, inventor groups, collecting societies and so on.

The Partnership Program would include two main features: a WIPO Partnership Database and a WIPO Partnership Office.

The WIPO Partnership Office would have a partners section listing available, partner institutions with contact information, a country and region section where specific needs could be notified, and a success section with descriptions and/or evaluations of successful partner matches.

The WIPO Partnership Office would have WIPO staff that aggressively seek partners, funds and matches.

The myriad of possible matches is almost infinite. For example:

A developing country culture ministry with museum experts, charitable organization and a regional development bank to exploit rich cultural assets in developing and least developed countries.

A developing country copyright collecting society with NGOs having expertise and a developed country collecting society to ensure compensation to authors, producers and performers in developing countries.

A developing country IP office with a developed country IP office and development funding, for automation projects, patent information dissemination, and so forth -- so that developing countries' institutions can enhance their access to knowledge and technology transfer.

Indian Statement on Wipo Development Agenda

The following is excerted from the "Statement by India at the Inter-Sessional Intergovernmental Meeting on a Development Agenda For WIPO, April 11-13, 2005":

The primary rationale for Intellectual Property protection is, first and foremost, to promote societal development by encouraging technological innovation. The legal monopoly granted to IP owners is an exceptional departure from the general principle of competitive markets as the best guarantee for securing the interest of society. The rationale for the exception is not that extraction of monopoly profits by the innovator is, of and in itself, good for society and so needs to be promoted. Rather, that properly controlled, such a monopoly, by providing an incentive for innovation, might produce sufficient benefits for society to compensate for the immediate loss to consumers as a result of the existence of a monopoly market instead of a competitive market. Monopoly rights, then, granted to IP holders is a special incentive that needs to be carefully calibrated by each country, in the light of its own circumstances, taking into account the overall costs and benefits of such protection.

Should the rationale for a monopoly be absent, as in the case of cross-border rights involving developed and developing countries, the only justification for the grant of a monopoly is a contractual obligation, such as the TRIPS agreement, and nothing more. In such a situation it makes little sense for one party, especially the weaker party, to agree to assume greater obligations than he is contractually bound to accept. This, in short, is what the developed countries have sought to do so far in the context of WIPO. The message of the Development Agenda is clear: no longer are developing countries prepared to accept this approach, or continuation of the status quo.

Even in a developed country, where the monopoly profits of the domestic IP rights holders are recycled through the economy and so benefit the public in varying degrees, there is continuing debate on the equity and fairness of such protection, with some even questioning its claimed social benefits. Given the total absence of any mandatory cross-border resource transfers or welfare payments, and the absence of any significant domestic recycling of the monopoly profits of foreign IP rights holders, the case for strong IP protection in developing countries is without any economic basis. Harmonization of IP laws across countries with asymmetric distribution of IP assets is, clearly, intended to serve the interest of rent seekers in developed countries rather than that of the public in developing countries.

Neither intellectual property protection, nor the harmonization of intellectual property laws leading to higher protection standards in all countries irrespective of their level of development, can be an end in itself. For developing countries to benefit from providing IP protection to rights holders based in developed countries, there has to be some obligation on the part of developed countries to transfer and
disseminate technologies to developing countries. Even though the intended beneficiary of IP protection is the public at large, the immediate beneficiaries are the IP rights holders, the vast majority if whom are in developed countries. Absent an obligation on technology transfer, asymmetric IP rent flows would become a permanent feature, and the benefits of IP protection would forever elude consumers in developing countries. As pointed out in the proposal by the Group of Friends of Development, technology transfer should be a fundamental objective of the global intellectual property system. WIPO is recognised as a specialised agency with the responsibility for taking appropriate measures for undertaking this and we expect the "development agenda" to address this issue.

* * *

In conclusion, it is important that developed countries and WIPO acknowledge that IP protection is an important policy instrument for developing countries, one that needs to be used carefully. While the claimed benefits of strong IP protection for developing countries are a matter of debate - and nearly always in the distant future - such protection invariably entails substatial real an immediate costs for
these countries. In formulating its IP policy, therefore, each country needs to have sufficient flexibility so that the cost of IP protection does not outweigh the benefits. It is clearly in the interest of developing countries that WIPO recognizes this and formulates its work program accordingly - including its 'technical assistance' - and not limit its activities, as it currently does, to the blind promotion of increasingly higher levels of IP protection. This is where WIPO, as a
specialized UN agency, can make a major impact - by truly incorporating the development dimension into its mission - in letter and in spirit, so that it is appropriately reflected in all its instruments. Certainly it will result in a revitalisation of WIPO as an organisation sensitive to integrating the development concerns of developing countries into all areas of its work.

The Federal Circuit Predictor Tool

This tool, from R. Polk Wagner, Assistant Professor University of Pennsylvania Law School, accepts as inputs the identity of the three-judge panel hearing a claim construction case at the Federal Circuit. It returns the (statistically) most likely methodological form of claim construction opinion that the panel will issue. Here is the data supporting their nifty little gadget:







The Federal Circuit Predictor, if you know the panel, they'll predict the result!

Shanghai to Open I/P Exchange

According to the April 14, 2005 Shanghai Daily news, a patent exchange center will open in the city on April 25, allowing companies and individuals to buy and sell patented ideas, the city government announced yesterday.

The Shanghai Patent Exchange Center will be the first facility of its kind in the city. "The center aims to quicken the steps of sharing and industrializing local patents," Gu Yonghua, a spokesman for the Shanghai Intellectual Property Administration, said yesterday.

The new center will be located at 2310 Yangshupu Road, home to the city's Intellectual Property Park. An exhibition center for displaying newly patented products will also open its door at the site this month. "Many patented products and ideas can be used more efficiently if they are introduced to the public," Gu said.

Pro Bono I/P Resources in the U.S.

from the American Bar Association Section of Intellectual Property Law are listed at http://www.abanet.org/intelprop/probono.html

Happy Japanese Invention Day!

Commemorating the promulgation of the Patent Monopoly Act on April 18, 1885, the predecessor of the current Patent Law, the Japan Patent Office (JPO) has set April 18 as the “Invention Day� and has been making efforts to disseminate the industrial property systems.

The Patent Monopoly Act was promulgated on April 18, 1885, with efforts of Korekiyo Takahashi, a Japanese statesman. After the Meiji Restoration, Japan had started to move ahead with modernization lagging far behind the West and was in a pressing need for industrial modernization. The Japanese government at that time took measures to encourage new industries. To achieve this end, establishment of a patent system was essential to protect inventors’ rights.

About 20 years prior to the promulgation of the Patent Monopoly Act, Yukichi Fukuzawa referred to a patent system in his book titled "Seiyo Jijo," or the Ways of the West. In this book, he described that protection of inventors’ rights would help encourage further creative activities and thus lead to the nation’s development. The government delegation lead by Tomomi Iwakura, a Japanese statesman who played a key role in bringing about the Meiji restoration of 1868, visited the US patent office　and witnessed the circumstances surrounding patents in the West. The delegation returned their home country with a large volume of materials on patent systems, which greatly influenced the drafting of the Patent Monopoly Act.

Shortly after the promulgation of this Act, Japan entered the era of industrial revolution centering on yarn-making and spinning industry. With the revolution, Japan became a world power. Around that time, Sakichi Toyoda, father of the founder of Toyota Industries Corporation obtained his first patent for a wooden hand loom.

Has Leo Stoller Finally Met His Match?

John Welch at The TTAB Blog is reporting on a civil action currently pending in the United States District Court for the Northern District of Illinois, where the Defendants have charged Leo Stoller with an "extortionate protection scheme" that includes "abuse of the legitimate processes for trademark conflict resolution through the . . . U.S. Patent and Trademark Office." Central Mfg. Co. et al. v. Pure Fishing, Inc. et al., Case No. 05-c-0725 (N.D. Ill.). The post links to the 35-page Answer and Counterclaims with an allegation of unfair competition that (over nine pages) alleges Stoller has engaged in a "pattern of unlawful activity" involving his acquisition of federal trademark registrations, including various activities in TTAB proceedings.

John even includes a photograph of the "alleged office of Leo Stoller." Hey John, could this be the home of the Stealth Trademark Mall?

Search Chinese Patent Abstracts in English

The Chinese State Intellectual Property Office offers English-language searching of Chinese patent abstracts at http://www.sipo.gov.cn/sipo_English/zljs/default.htm

WIPO Delegates Leave Empty-Handed

According to Intellectual Property Watch on April 15, 2005, members of the World Intellectual Property Organisation (WIPO) on Friday failed to agree on the proper role for a permanent committee on technical cooperation that could impact larger efforts by some to reform WIPO toward development issues.

Debate reportedly focused on a proposal by developed countries, drafted by Canada, to broaden the scope of the existing permanent committee on cooperation for development related to intellectual property (PCIPD). Canada reportedly put forward the proposal while key opposing delegations like Argentina and Brazil were out of the room in a regional meeting. The Canadian proposal broadly proposed to enhance innovation and economic growth, the development of national policies and capabilities, and the role of WIPO.

Also dropped from the meeting was a draft meeting summary by the chair. Developing countries said they objected to the summary on the grounds that it is not legally binding and could be used to circumvent WIPO procedure requiring a report agreed to by all participants. That report is due to WIPO's General Assembly at the end of July.

The issue of expanding the permanent committee was seen as key to the fate of the "Development Agenda" a proposal discussed earlier in the week for ensuring developing countries have the flexibilities and benefits they need from the international intellectual property system. The next meeting is June 20 to 22, followed by an unspecified three-day meeting in July.

RIAA Pursues Internet2 Infringers with 9900th Lawsuit

According to their press release, the Recording Industry Association of America (RIAA) filed 405 new copyright infringement lawsuits against students at 18 different colleges across the country on April 18, 2005 "in response to an emerging epidemic of music theft on a specialized, high-speed university computer network known as Internet2."

Internet2 is an advanced network created by participating colleges and universities for important academic research. Through the use of a file-sharing application known as “i2hub,� however, Internet2 is increasingly becoming the network of choice for students seeking to steal copyrighted songs and other works on a massive scale. Downloading from i2hub via Internet2 is extremely fast -- in most cases, less than five minutes for a movie or less than 20 seconds for a song. Students reportedly find i2hub especially appealing because they mistakenly believe their illegal file-sharing activities can’t be detected in the closed environment of the Internet2 network.

IFPI also filed new cases against 963 individuals in 11 countries across Europe and Asia on April 12. This brings the total number of these copyright lawsuits to 11,552 including 9,900 cases that have been brought to date in the US.

Click here for (non-)RIAA Form URSCR 00D and here for more RIAA satire.

Who's Reading I/P Updates?

Servers in these countries made the last 10,000 hits on I/P Updates:

	7773	United States
	359	Canada
	212	-	-
	159	United Kingdom
	154	Japan
	93	Australia
	83	India
	50	Korea, Republic Of
	48	Taiwan
	46	France
	45	Germany
	39	Finland
	35	Hong Kong
	32	Netherlands
	29	Switzerland
	29	Philippines
	25	Singapore
	24	Spain
	21	Italy
	15	Norway
	15	Israel
	15	Sweden
	14	South Africa
	14	Nigeria
	12	Belgium
	10	Mexico
	10	Malaysia
	9	Poland
	7	Indonesia
	7	Pakistan
	6	Denmark
	6	Kuwait
	6	Romania
	6	Turkey
	5	Viet Nam
	5	Thailand
	5	Jordan
	4	United Arab Emirates
	4	Benin
	4	Georgia
	3	Ukraine
	3	Cote D'ivoire
	3	Ireland
	3	Czech Republic
	3	Serbia And Montenegro
	2	Luxembourg
	2	Ghana
	2	Sudan
	2	Yemen
	1	Slovakia
	1	Peru
	1	Uruguay
	1	China
	1	Trinidad And Tobago
	1	Zambia
	1	Brazil
	1	Iran, Islamic Republic Of
	1	Bangladesh
	1	Macedonia, The Former Yugoslav Republic Of
	1	Estonia
	1	Togo
	1	Senegal
	1	Dominican Republic
	1	Virgin Islands, U.s.
	1	Tanzania, United Republic Of
	1	Burkina Faso
	1	Portugal
	1	Mali
	1	Venezuela
	1	Iceland
	1	Kazakstan
	1	Belarus
	1	Bahrain
	1	Latvia