Enforcement of Exclusion Orders by the U.S.I.T.C.

Anyone who has saw the June 2002 APLF Roundtable on "Unfair Import Investigations at the U.S. International Trade Commission" knows that the Commission is authorized under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) to issue two types of remedial orders -- exclusion orders and cease and desist orders. Both types of orders may be issued in the same case. However, questions often arise as to why these orders might be preferable to an injunction from a U.S. federal district court.

An exclusion order directs the U.S. Customs Service to exclude articles from entry into the United States. If an entity has previously attempted to import an excluded article into the United States and the article was previously denied entry by the U.S. Customs Service, the Commission may further order the seizure and forfeiture of subsequent shipments of the article. In contrast, a cease and desist order directs a respondent in the Commission investigation to cease its unfair acts, including selling infringing imported articles out of U.S. inventory. Unlike exclusion orders, cease and desist orders are enforced by the Commission, not by the Customs Service.

Proceedings to enforce these orders (including consent orders) may be formal or informal, and conducted before the Commission or before a U.S. federal district. Upon request, the Commission may also issue an "advisory opinion" upon whether proposed conduct will violate any particular order. Once an exclusion order has been issued, advisory administrative rulings may alternatively be obtained from Customs and appealed through the Court of International Trade. However, the Customs Service prefers to leave the technical patent issues for resolution by the International Trade Commission.

Based upon informal proceedings usually conducted by the Commission's Office of Unfair Import Investigations, or its own public hearings, the Commission may issue whatever orders it deems appropriate to to implement and ensure compliance with any of its previous orders, including seizure and forfeiture orders. The Commission may also implement formal enforcement proceedings under it own rules, or by brining a civil action in a federal district court.
The commission's enforcement and advisory proceedings are often delegated to an Administrative Law Judge acting under the independent authority of the Administrative Procedures Act (5 U.S.C. 551 et seq.), and following the Rules of Practice and Procedure the Commission (19 CFR 210 et seq.). Although the Commission's rules do not set deadlines for advisory proceeding determinations, the Commission may order the "ALJ" to follow a schedule.
Perhaps the most effective enforcement tool in the Commission's arsenal is the power to assess a civil penalty, payable to the U.S. Treasury, of up to the greater of $100,000 per day or twice the value of the goods, for each day that a cease and desist order is violated. The monetary penalties are imposed by the Commission, but, if necessary, can be collected by U.S. Marshals via a civil action in a federal district court. For example, the Commission successfully brought a civil action to collect $2,320,000 in the Agricultural Tractors investigation involving gray market imports.

For more information on government resources for enforcing you clients' intellectual property rights, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA or via the (free) "I/P Updates" news service at www.ip-updates.com.

TGIF for Free Term Calculators (and Twine)

If you can't tell the expiration date of a patent just from looking at the front page, then check out the SSJR "Patent Calendar." According to their website, you can "view a customized U.S. utility patent expiration date and maintenance fee calendar" by simply filling in the information at http://ssjr.com/tools/toolshell.aspx?tl=1.

And, if you are uncertain when to renew your trademark registration, the can also "calculate the first three times you need to do so (further renewals are available)" and provide "a customized U.S. Trademark Registration renewal calendar" at http://ssjr.com/tools/toolshell.aspx?tl=2.

And while you're at it, why not visit The World's Second Largest Ball of Twine.

Thank Goodness It's Friday,

--Bill Heinze

WIPO Proposes Internal Audit Committee

According to Intellectual Property Watch on May 26, 2005, a working group at the World Intellectual Property Organisation has recommended a new committee to conduct independent audits of the U.N. body. The working group was designated by the WIPO Program and Budget Committee last month, and the recommendation will go the WIPO General Assembly in the fall.

WIPO has come under greater scrutiny in recent weeks as a U.N. inspection team issued a report critical of WIPO’s budget management, and a senior WIPO official was linked in press reports to a broader U.N. financial accountability investigation. The closed working group meeting was said by government participants during and afterward to be relatively non-controversial, but there were disagreements to be worked out.

Something you never want to see on your website

Something you never want to see on your website is posted at http://www.elitetorrents.org/ with more information at
http://www.siliconvalley.com/mld/siliconvalley/11737028.htm.

Thanks for this one go out to my colleague Benjie Balser.

USPTO Ends Processing and Retention Practice with New Surcharges for Late Patent Filing Fees

Effective July 1, 2005, The United States Patent and Trademark Office is changing its practice for handling patent applications filed without the appropriate basic filing (or basic national) fee, search fee, and examination fee. The new rules will

1. Require a surcharge under § 1.16(f) ("By a small entity (§ 1.27(a)) - $65.00; By other than a small entity - $130.00 ") in any nonprovisional application filed under 35 U.S.C. 111(a) in which any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application;
2. Require a surcharge under § 1.492(h) ("By a small entity (§ 1.27(a)) - $65.00; By other than a small entity - $130.00") in any application filed under the PCT in which either of the search fee or the examination fee are paid after the date of the commencement of the national stage (§ 1.491(a)); and
3. Eliminate the processing and retention fee (§ 1.21(l)) practice which in the past has permitted an applicant to file an application without the basic filing fee and pay only the processing and retention fee set forth in former § 1.21(l) in order for the application to be used as a basis for foreign filing and benefit claims under 35 U.S.C. 120 and § 1.78(a).
   Thus, the Office is requiring payment of the basic filing fee (rather than just the processing and retention fee set forth in former § 1.21(l)) to retain the application, such as to permit benefit of the application to be claimed under 35 U.S.C. 120 and § 1.78 in a subsequent nonprovisional or international application.

The Office is also implementing a new provision in 35 U.S.C. 41(a)(1)(G) to prescribe the paper size equivalent of an application filed in whole or in part in an electronic medium for purposes of the application size fee specified in 35 U.S.C. 41(a)(1)(G) (§ 1.16(s) and § 1.492(j)):

A 21.6 cm by 27.9 cm (81�2 by 11 inches) sheet of paper
with a top margin of 2.0 cm (3�4 inch), a left side margin of 2.5 cm (1 inch), a
right side margin of 2.0 cm (3�4 inch), and a bottom margin of 2.0 cm (3�4
inch), will contain about 30 lines of text with double line spacing, with each
line having about 50 to 65 characters. An ASCII text (the only format permitted
by § 1.52(e)) document containing 30 lines of text, each line having about 50 to
65 characters, will be slightly less than two kilobytes in size. Since the
Office permits text with a line spacing of 11�2 (notwithstanding that ASCII does
not permit 11�2 line spacing), the Office is providing that each three kilobytes
(rounding up) of content submitted on an electronic medium shall be counted as a
sheet of paper for purposes of the application size fee specified in 35 U.S.C.
41(a)(1)(G) (§ 1.16(s) and § 1.492(j)).

The paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as

The change to 37 CFR 1.78 applies to any application that claims benefit of an application under 35 U.S.C. 111(a) in which the processing and retention fee in now former 37 CFR 1.21(l) was not paid before July 1, 2005. The change to 37 CFR 1.16(f) applies to any application under 35 U.S.C. 111(a) filed on or after July 1, 2005. The change to 37 CFR 1.492(h) applies to any international application in which the basic national fee was not paid before July 1, 2005.

Click here for the full Final Rule.

Beware of Model Complaint Form 16

In the May 2005 issue of The Intellectual Property Strategist, Ted Sichelman writes about some courts that are not satisfied with patent infringement complaints that otherwise follow Form 16 of the Federal Rules of Civil Procedure. He cites several cases and recommends that "plaintiffs attorneys should be wary of of vaguely asserting infringement of unnamed products or inviting a motion for a more definitive statement by lodging hundreds of unspecified patent claims."

Markman Hearings for Interferences?

This month's issue of Intellectual Property today includes an intriguing article by Chico Gohlz suggesting that "In each case, the APJ whom the case is assigned discuss with counsel handling the desirability of having a Markman hearing in that specific case and, if so, when the Markman hearing should be held."

Sounds like a good idea to me.

Law Firm Intellectual Property Publications

Brandon Rash at the EEJD Blog has an excellent and growing list of "Intellectual Property Publications by Firm."

Free Teleconference on Indian Patent Changes

Date: May 26, 2005
Time: 12:30 PM Eastern
Duration: 1 Hour
RSVP to http://us.f404.mail.yahoo.com/ym/Compose?To=info@aplf.org in order to obtain toll free dial in number

India - An Insight Into The Changed Patent Regime & Protecting Your Pharmaceutical IP

India has increasingly been receiving attention as a technical powerhouse. Specifically, its large and highly-trained technical manpower combined with a culture of scientific education and research makes it a choice destination for large multi-national corporations as well as upstarts. While the initial emphasis was on software, other areas of technology like pharmaceuticals and technical services have followed suit. Recognizing that a well-established IP regime is essential for the continued success of such a technology-based economy, India has recently changes its patent laws after significant debates on the issue. These changes are an attempt to harmonize with other successful patent regimes in the world and to honor India's commitments to the WTO.

The presenters welcome suggestions/questions from potential listeners on any specific topic that they wish addressed at the presentation. Please email suggestions/questions to ciyer@sughrue.com.

Presenters:
Chid S. Iyer [http://us.f404.mail.yahoo.com/ym/Compose?To=ciyer@sughrue.com] from Sughrue Mion PLLC.
V. Lakshmikumaran, Senior Indian Supreme Court Lawyer and IP litigator from Lakshmikumaran & Sreedharan (New Delhi, India)
Mark Pohl from Pohl and Associates.

DC Patent Reform Symposium June 9, 2005

AIPLA has previously joined with the National Academies' Board on Science, Technology, and Economic Policy and the Federal Trade Commission in a series of regional town meetings on US patent reform in late Winter and Spring 2005. The purpose of those meetings was both educational and to discuss differences of detail in the largely consistent recommendations of the three organizations. The final wrap-up symposium will be held in Washington, DC - June 9, 2005. Click here to view the agenda.

This conference is being held at the National Academy of Sciences Building Auditorium located at 2101 Constitution Avenue, NW. There is no registration fee for the conference, and no CLE has been requested. If you plan to attend, you must pre-register by contacting Craig Schultz at the NAS (cschultz@nas.edu ).

You can view the transcripts from the three previous Town Meetings, as well as the original NAS and FTC Reports and AIPLA's Responses by clicking here .

I/P Law Journals Update for March 2005

In his "May 2005 Report on New Academic Research," Dennis Crouch at the Patenly-O Blog is summarizing and linking to several new law journal articles:

• Douglas G. Lichtman, Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard, U Chicago Law & Economics, Olin Working Paper No. 244 (May 2005),
• Mark H. Webbink (of RedHat), A New Paradigm for Intellectual Property Rights in Software, 2005 Duke L. & Tech. Rev. 0012 (2005), and
• Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. Prop. L. 336 (2005), where Chisum writes

Microsoft and others complain about the ability of the “trolls� and other patent owners to not only assert infringement but to take draconian positions on remedies.

First, the trolls are said to always demand a damage royalty based on the whole product even though the patented invention relates to only one part or feature of a product. The Reform Bill’s response: a new section 284(e) on “Determination of Royalties or Damages on Components.� It says about what you would expect it to say: damages only on “value� attributable to the patented “invention alone� and not on elements “otherwise known in the art or contributed by the infringer or its licensors.� I suspect that careful study would show that this is not necessary. Basic principles of compensatory damage law should reach the same result. If a royalty is based on the whole product rather than the part, the appropriate royalty rate should be correspondingly low.

Second, the trolls are said to threaten an injunction against distribution of a whole product—even though the troll is not producing a competing product. The Reform Bill’s response: permanent injunctions shall issue only on a finding that
the patentee “is likely to suffer irreparable harm that cannot be remedied by the payment of money damages.� The court should not presume irreparable harm and must consider, inter alia, equitable factors including “the extent to which the
patentee makes use of the invention.� Again, this probably should be the law undertraditional principles of equity.

For example, patents are often treated as property rights. In property law generally, I am assured by colleagues who teach it or who teach equity that injunctions to protect property rights are not automatic and take into account equitable factors. But I admit that CAFC decisions tend to create a
presumption of irreparable harm—so some legislative correction may be appropriate. Yet owners of patents, valid and infringed, traditionally have a right to enforce them even if they are not producers. If the threat of injunctive relief is softened too much, are they put at too great a disadvantage in terms of bargaining.

More on How to Protect I/P in China

According to Loke-Khoon Tan, An Xiang, and Ren Haiyan at the INTA Annual Meeting as reported by Managing Intellectual Property:

• file trademark applications early
• register Chinese character versions of marks
• against squatters, consider filing a non-use cancellation application, making an unofficial agreement on coexistence, or buying their mark
• booklets to help Customs officials identify counterfeit goods "can create bigger problems if the material gets into the wrong hands."
• fight infringers politically and publicly, "not just legally"

Click here for more information on intellectual property in China and for an update on these and other aspects of the Chinese Legal system check out "The China Syndrome" by Tamara Loomis in Corporate Counsel on May 26, 2005.

Outhouse Lawyer Fun?

Geoffrey G. Gussis, the self-described "outhouse lawyer" at the new InHouse Blog, is asking Who said outhouse lawyers don't have fun? "If you haven't heard this voicemail," he writes, "then you may be working too hard." And if you're on that voicemail, then you ARE working too hard.

Notice to Low-Level Employees Triggers Enhanced Patent Damages

In one of its first opinions on willful infringement following the Knorr-Bremse decision, the Federal Circuit concluded that there was substantial evidence for a jury to find willfulness in Imonex Services, Inc. v. W.H. Munzprufer Dietmar Trenner GMBH, et al. (Fed. Cir.; May 20, 2005; citations removed) even though the defendant had obtained non-infringement opinions shortly after the lawsuit was filed:

"The defendants dispute the district court’s denial of JMOL on the jury’s verdict of willful infringement. Willfulness requires a showing that the totality of the circumstances evince the egregious conduct that constitutes willful infringement. Actual notice of another’s patent rights triggers an affirmative duty of due care. Constructive notice, as by marking a product with a patent number, is insufficient to trigger this duty. This court has identified several criteria for assessing damages, including, inter alia, whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed, and the duration of defendant’s misconduct.

"Willful infringement in this case hinges on when the defendants had actual knowledge of Imonex’s patent rights, and their actions after that time. The record shows that Imonex disclosed its coin selection devices to employees of the original equipment manufacturer, or OEM, defendants at trade shows years before it filed suit. Those Imonex devices were marked with the numbers of both of the patents in suit. Imonex also distributed advertising literature which stated that the products were patented. Imonex corresponded with employees of the OEMs about use of the patented devices in the OEMs’ products. The record also disclosed that none of the OEM defendants commissioned an opinion of counsel about infringement, until after they were sued for infringement. The defendants do not deny that Imonex displayed its properly marked products at trade shows, but insist that this notice was insufficient to trigger its duty of due care, because no defendant employees with decision-making capacity received notice or studied the patents themselves.

"The jury could have reasonably concluded that several instances recounted in the record triggered the OEM’s duty of care. Those instances that provide actual notice to the OEMs of the patents on Imonex’s products include Imonex’s display of its products at trade shows, the widespread distribution of literature depicting the products as patented, and correspondence with OEM employees about the use of patented devices in the OEM products.

"The defendants also argue that they exercised their duty of due care by obtaining
opinions of counsel regarding possible infringement of the patents in suit shortly after being served with the complaint. Imonex argues that the defendants should have obtained these opinions as soon as they learned of their possible infringement of Munzprufer’s patents.

"This issue is informed, however, by this court’s recent decision in Knorr-Bremse, which was decided shortly after the briefs in this case were submitted. In that case, the affirmative duty of due care to avoid infringement was reiterated, but it was found no longer appropriate to draw an adverse inference with respect to willful infringement from failure to obtain legal advice. Therefore, while early receipt of legal advice would have strengthened the defendants’ argument that they had not willfully infringed, failure to have solicited such advice does not give rise to an inference of willfulness. Overall, the jury had substantial evidence to find willfulness, and this court affirms the district court’s denial of JMOL on this point."

It's quite likely that Munzprufer could have avoided at least some of this problem with a little "proactive intellectual property lawyering," including free watch services and free intellectual property training. For more information, click on the previous links or contact me on how to avaoid a similar fate for your company. What have you got to lose?

World's Oldest Patent Attorney Says You Can't Learn it Overnight

The nation's oldest patent lawyer (USPTO Registration No. 13,782) was awarded an honorary degree by the Franklin Pierce Law Center on May 21, 2005. And next month later, he'll be off to a reunion at the Massachusetts Institute of Technology, where he got an engineering degree in 1925.

C. Yardley Chittick was born in Boston, MA on October 22, 1900, the son of a silk miller who lost his job in 1905. The family was very poor, until his father reinvented himself as an expert witness and consultant ten year’s later. With the help of an uncle, Chittick was able to attend Phillips Academy in Andover, MA where he roomed across the hall from Humphrey Bogart in 1917. He later attended MIT where he earned a BS degree in mechanical engineering.

After graduation from MIT, Chittick worked for his father for about three years and decided to go out on his own. At 24 years-old, he interviewed for a job with Thomas Edison, but turned down the offer to work with a golf club manufacturer. He still says that it was the best thing that he ever did. The position put him in contact with various inventors and patent lawyers so that when the Great Depression hit, he decided to go to law school.

Chittick earned his Juris Doctor degree from George Washington University and passed the Patent Bar in 1934 when he accepted a position at the United States Patent Office for an annual salary of $1900. He later started his own practice, retiring in 1985.

Chittick has since been a regular guest at the New Hampshire law school commencement exercises giving this advice -- "You've got to be honest. No cheating. And you have to learn it slowly, to be a lawyer. You can't learn it overnight."

IIPI Launches EU CII Discussion Forum

The International Intellectual Property Institute (IIPI) today launched a public Discussion Forum focusing on the European Union's proposed Directive on Computer Implemented Inventions (CII). The EU CII Discussion Forum will feature a short weekly article discussing an aspect of the CII debate. Visitors to the site will be able to post comments responding to articles, as well as the posts of other visitors. The Discussion Forum does not require registration but will be moderated.

The first article kicking off the EU CII Discussion Forum was supplied by Dr. Jacques Michel, former Vice-President of the European Patent Office and member of IIPI's Board of Advisors. In his article, Dr. Michel provides an overview of the controversy surrounding the proposed CII Directive. Dr. Michel will be a regular contributor to the Discussion Forum, but several other guest authors will also be featured. While IIPI is a US-based organization, articles posted on EU CII Discussion forum will come primarily from European authors.

Intellectual Property Metrics Require Learning Your Client's Business

According to an article by Ronald E. Myrick, Sarbanes Oxely has created new pressures for better selection of what to patent and when to enforce:

It may seem obvious (but in practice it is not) that in deciding what to patent, the most fundamental parameter is the purpose that the patent will serve. Knowing that will guide many decisions, including the decision to file or not. Establishing purpose requires the rigorous involvement of multiple facets of the business, including marketing, engineering and technology. Absent such involvement, the full marketing role of the asset may not be achieved. The purpose for an asset can change along the way, but having a defined purpose for each patent prior to filing makes its use easier to justify. . . .

The key is business-based metrics for the IP program. Merely counting the number of patents filed or issued is useless for most businesses, unless they are relying on the terror factor of a multiplicity of patents. In general, metrics are needed that demonstrate the impact of the patent program on growth. Focusing on such metrics will change not only the number of patent applications filed (up or down), but the type and content of patent applications filed.

Unfortunately, many attorneys for large clients are still in the "just get me a patent" mode. And why shouldn't they be. No one gets fired for getting a patent application allowed. Besides, it's tough to make calls on whether the hypotehical value of protection is really worth the actual cost. But sometimes not doing the wrong thing can be even more valuable than doing anything at all. "'You get what you measure' is as true for IP as it is for other parts of a business," writes Myrick. But only if the folks doing the measurement are willing and able to take the time to articulate an I/P strategy within your business goals before deciding what to measure.

Call me for more information on how to articulate and measure and your I/P strategy, or just click on the following links to related topics:

I/P Metrics in the U.S.
I/P Metrics in Europe
SOX and I/P Metrics
Investor Expections for I/P Metrics
Strategic Legal Sourcing
Simulation for Allocation of Legal Resources
Patent Portfolio Theory
Procative I/P Lawyering
What to Do about Comeptitor's I/P
Where to Start Learning About Your Client's Industry

Russian Officials Accused of Protecting Counterfeiters

According to the Wall Street Journal on May 12, 2005, Russioan Legislator Vladimir Ovsyannikov makes no bones about his relationship to Sergei Kaluzhenok, the owner of a Moscow warehouse recently found to be filled with counterfeits. "A politician isn't a politician unless he can offer krysha -- to bandits, prostitutes, or state officials, it doesn't matter," he said in an interview."

When police launched a second raid on the warehouse in December 2004, they found a newly installed steel door, in front of another door, with a red sign saying the warehouse was now Mr. Ovsyannikov's public office. Police contacted the lawmaker, who said he didn't even know he had an office there. "I have 15 of them, and I can't tell you where they all are," he said. " All these street names get muddled up in my head."

ANAQUA I/P Management Software

ANAQUA claims to "integrate workflows across the entire IP lifecycle including requesting, analyzing, processing, maintaining and exploiting IP. This modular, scaleable solution manages all IP rights including patents, trademarks, designs, domain names, and copyrights. Through ANAQUA, IP leaders gain visibility into their global portfolio and the knowledge needed to proactively support their firm's business strategy and generate value. Below is an overview of the ANAQUA approach:"


To me, it looks almost too good to be true. Too bad they don't have an e-mail address or screeshots posted on their website. I would love to get more information or trial access. Leave a comment if you know something about this product.

Broadcom Requests Import Investigation Against Qualcomm

On May 19, 2005, Broadcom Corporation filed a "Section 337" unfair import complaint with the U.S. International Trade Commission requesting that an investigation be instituted involving "Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets." The proposed respondent is Qualcomm Incorprated and the complaint has been designated as confidential and assigned Docket No. 337-2430 for indexing in the Commission's database.

The case appears to coincide with two federal district court complaints that were reportedly filed in Santa Ana late Wednesday. Broadcom is reported to be seeking unspecified monetary damages in the paralell district court actions and has alleged that Qualcomm's current and next-generation wireless products infringe ten patents. Broadcom is also asking for an injunction barring the manufacture and sale of infringing products. The request for an injunction is likely to be heard within a few weeks.

The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondents will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission." For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

TGIF for Working Your Patent Mojo

Bob Ambrogi at Law Sites has linked to a new service that "enables patent professionals to create watchlists for patent searches and monitor them through RSS feeds. Called PatentMojo, its users are able to create watchlists using any search criteria. The service searches the U.S. Patent and Trademark Office data daily and delivers updates via RSS. A seven-day free trial is available through the site, after which subscriptions cost $15 a month."

As Austin Powers might say, "Someone's stolen my mojo." Free patent watch services have always been an important part of my proactive intellectual property program. So why not let me show you what else that we can do to get your (patent) mojo working.

Yeah Baby! Thank Goodness It's Friday,

--Bill Heinze

EP Hearing Academic Views on Software Patent Definitions

According to ZDNet UK on May 17, 2005, the European Parliament's JURI committee will seek the help of legal experts on amendments to the wording of the software patentability directive in a public meeting on Monday, 23 May, from 1515 to 1700 at the European Parliament building on Rue Wiertz in Brussels. The speakers include Uma Suthersanen, a senior lecturer in Intellectual Property Law at Queen Mary Intellectual Property Research Institute; Reto Hilty, a director at the Max Planck Institute for Intellectual Property, Competition and Tax Law; François Pellegrini, an associate professor in computer science at ENSEIRB; and Alberto Bercovitz, from the Spanish law firm Estudio Jurídico.

The article also quotes an unidentified EP spokesman as saying "The directive itself says software is not patentable and the European Patent Office says the same, but software patents have been allowed anyway. The European Patent Office has problems in taking a decision on whether to allow a patent or not."

JURI will next vote on the proposed amendments on either June 6 or 20, 2005.

Top Ten Pending Patent Cases

Former GWU Law School Professor Hal Wegner, now at Foley & Lardner in DC, has just circulated his current list of the ten most importent pending patent cases:

(1) Voda v. Cordis
(2) Merck v. Integra LifeSciences I
(3) KSR International v. Teleflex
(4) In re Fisher
(5) Phillips v. AWH
(6) Purdue Pharma v. Endo Pharmaceuticals
(7) Unitherm Food Systems v. Swift Eckrich
(8) Schering-Plough Corp. v. F.T.C.
(9) Symbol Technologies v. Lemelson
(10) Honeywell v. Hamilton Sundstrand

If you're not already on his "list," just drop me a line for his inciteful snapshot of the issues, status, prediction of the range of possible outcomes, and implications for these pending decisions.

AIDS Patent Pool Proposed

According to William New at Intellectual Property Watch, a proposal put forward by Consumers International and the Consumer Project on Technology (CP Tech) in the margins of the annual U.N. World Health Assembly on Tuesday would create an “Essential Patent Pool for AIDS� to “enable a sustainable scale up of the global AIDS campaign and expansion of access and creation of needed technologies to combat the AIDS pandemic.�

The proposed patent pool would be managed by a board of directors and would provide open licensing of patents in the pool to all suppliers of anti-retroviral medicines and technology. The initial list of patents in the pool would be developed by the patent pool, and the voluntary contribution of patents by patent holders would be sought for manufacture, import and export. If industry did not accept it voluntarily, then a compulsory license could be used.

One advantage to the pooled approach from a developing nation standpoint is that it would allow governments to join together on a compulsory license instead of one government facing the pressure that can accompany such a decision, she noted. It could also help generic producers innovate as some have feared litigation if they started producing in some countries and typically operate on small margins. Under the proposal, royalties for high-income countries would be determined through a formula reflecting “equitable� terms such as the relative therapeutic benefits of products and the affordability of royalties in countries depending on average incomes and the presence of HIV/AIDS.

In a discussion following the announcement, Jon Pender, director of government affairs for access issues and intellectual property at GlaxoSmithKline, reportedly showed a willingness to discuss the issue further, but said at first reaction that it might lead to research-based industry “washing its hands� (pulling out of) countries that joined the patent pool. An additional concern was that it might mean a reduction of investment in those pharmaceuticals, he said.

BenQ Requests Unfair Import Investigation Against Thomson

On May 17, 2005, Gary Hnath filed a "Section 337" unfair import complaint at the U.S. International Trade Commission on behalf of BenQ Corporation requesting that an unfair import investigation be instituted involving "DVD/CD players and recorders, Color Television Receivers and Display Monitors."

The proposed respondents is Thomson, Incorporated of Indianapolis, Indiana. The complaint has been designated as confidential and assigned Docket No. 337-2429 for indexing in the Commission's database.

The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations. 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

IP Lawyers Mull Offshore Outsourcing of Legal Work

Reed Smith partner Ajay Raju beleives that India's enormous, educated work force, particularly in the math and science fields, makes outsourcing legal work in the IP practice an extremely attractive option. According to Jeff Blumenthal at The Legal Intelligencer on May 18, 2005:

Raju said cooperation between Indian and American business interests should only increase as the Indian government decreases economic protectionism. The
Indian Advocates Act of 1961 prohibits foreign lawyers from practicing law in
India. But the Indian government has recently proposed a controversial measure
to allow foreign lawyers and law firms to enter India at the very least in
alliances with Indian firms. Another proposal calls for foreign firms to be
allowed to open law offices but not argue cases in Indian courtrooms. Raju said
because India is a signatory to the General Agreement on Trade in Services, it
will have to enter into negotiations regarding opening up of service sectors to
foreign service suppliers such as law firms. He said the potential opening of
American law offices in India would only enhance outsourcing capabilities. "This
is not a fad or a trend," Raju said. "It's the reality of the global economy.
And the future is bright for India."

Where do I sign up?

Simulation for Legal Resource Allocation

According to an intriguing article by Ellis Mirsky pointed out by Rees Morrison in Law Depratment Management, "monte carlo" models of litigation inventories can assist in producing sensitivity analyses that enable companies to determine where best to allocate their limited resources (e.g., money and executive and attorney time) for optimum results (e.g., maximizing the use of external funding, such as insurance, indemnities and subsidies, while minimizing the use of company cash). In addition, these sensitivity analyses enable managers to establish a suitable litigation reserves with confidence levels that will satisfy auditors. Mirsky reccomends the Crystal Ball software from Decision Engineering.

Anyone who has every gotten and MBA, studied operations research, and/or worked in the oil industry (like me) can attest to the fact that such simulations are relatively easy to configure, and even easier to explain to non-technical managers such as most general counsel.

Feel free to contact me for more information on portfolio risk appraisal techniques for your law department. You can also learn more about risk, return, and portfolio characteristics from William F. Sharpe's "Macro-Investment Analysis." And, for a lighter read on portfolio risk appraisal theory, check out Burton G. Malkiel's classic "A Random Walk Down Wall Street."

Deily to Step Down from WTO

Ambassador Linnet Deily, the United States representative to the World Trade Organization, will be leaving office on June 15 to spend more time with family. According to Intellectual Property Watch, Ambassador Deily was instrumental in helping WTO "Doha Round" negotiators reach a consensus on implementing Paragraph 6 of the TRIPS and public health declaration, allowing countries to use existing flexibilities in TRIPS to bypass patents if necessary for public health.

In re Fisher Oral Argument Summary

Don Zuhn and Dennis Crouch at the Patently-O Blog have reprinted the AIPLA's report of the oral arguments for In re Fisher before the Federal Circuit on May 3, 2005. The case questions whether the PTO is requiring a heightened standard of utility for biotechnology inventions — specifically the case is directed to the standard of usefulness under 35 U.S.C. Section 101 applied to nucleotide sequences known as expressed sequence tags (EST’s).

Error Not Apparent from the Face of the Patent Correctable Only by USPTO

In Group One LTD v. Hallmark Cards, Inc. (Fed. Cir. May 16, 205), the prosecution history revealed that the missing language was required to be added by the examiner as a condition for issuance. However, this fact was not clear simply by reading the patent for which a printing error did not include the required language. The Federal Circuit therefore concluded that the district court did not have authority to correct the patent in such circumstances:

Even though the PTO has the authority to correct its own errors under §254, we have held that in some circumstances the district court can correct
errors retroactively. But the district court can correct an error only if the
error is evident from the face of the patent. Novo Indus., L.P. v. Micro MoldsCorp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). "A district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the
prosecution history does not suggest a different interpretation of the claims."
Id. (emphasis added). Because a reader of the patent at issue in Novo Industries
could not ascertain the error from the face of the patent, we held that it was
beyond the district court’s authority to guess at what was intended, and that
the error, if any, could only be corrected by the PTO. Id. at 1357-58. We
recently followed Novo Industries in Hoffer, holding that an error apparent from the face of the patent could have been corrected by the district court. Hoffer v. Microsoft Corp., No. 04-1103, slip op. at 7-8 (Fed. Cir. Apr. 22, 2005).

This rule also comports with our prior case law. In Lemelson, we permitted correction of a patent by inserting the word "toy" in a claim where the patent on its face was clearly directed at a toy trackway rather than an actual trackway. Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1203 & n.3 (Fed. Cir. 1992). In Southwest Software, the patent lacked multiple pages of software code due to a PTO error, and the content of the missing code could not be known by simply looking at the face of the patent lacking the code. Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1291, 1296 (Fed. Cir. 2000); see also Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1331 n.1 (Fed. Cir. 2003) (court refused to correct PTO error not apparent from the face of the patent). While we upheld the PTO’s issuance of a certificate of correction, we limited the effect of the correction to actions arising after the correction, and assumed that the district court could not correct the error. Southwest Software, 226 F.3d at 1293-97.

Experts Question U.S. Special 301 Process

"Ten years after the signing of the TRIPS agreement to help developing countries defend against unilateral actions against them by larger countries, the Office of the U.S. Trade Representative’s (USTR) annual report on trading partners’ protection of U.S. intellectual property rights is still questioned for its fairness or even legality," writes Willian New at Intellectual Property Watch.

Experts have interpreted the Special 301 evaluation to be limited to performance under existing laws and agreements. But critics charge that USTR uses the mechanism to push for gains that go beyond what exists, as it does in negotiations for free trade agreements. In addition, questions have arisen about the criteria for judging countries, as it could be argued that any position unfavourable to the United States could land a country on a problem list. They also question the accuracy of the findings in the report as they are based primarily on U.S. industry accounts, and the degree to which nations cited in the report have a say either before or after it comes out.

Nonetheless, many experts say it is unclear whether a formal challenge would succeed before the World Trrade Organization. In fact, most government officials are reluctant to publicly criticize the U.S. system. "For developing countries in particular, the possibility of retaliation in some other way is daunting," says David Vivas-Eugui, an attorney and program manager at the International Centre for Trade and Sustainable Development. “When you fight with Goliath, you have to make sure you kill him or he will come back to get you.�

The Special 301 annual review is part of a process designated under Section 301 of the U.S. Trade Act of 1974, which gives statutory authority to the government to impose trade sanctions against countries seen as violating U.S. trading rights. Countries are rated by how problematic they are found to be, the worst being “priority foreign countries,� followed by the “priority watch list� and the “watch list.�

TGIF for Sarbanes-Oxley I/P Requirements

According to an interview in The Metropolitan Corporate Counsel, under the heightened level of scrutiny for coroprate governance under the Sarbanes-Oxley Act (particularly Sections 302, 404, and 409) all publicly held companies must conduct regular audits - at least once per year - of their IP assets, and to report on any material changes to those assets likely to impact the company's financial operations and well-being.

According to the interviewee, companies must at least annually (if not more often) follow a process for determining what intellectual property exists, what the strengths and weaknesses of its pool of IP property are, and what changes have transpired since the last reporting period. As a result of SOX, there also has to be training for those at the company who are charged with developing, identifying, and assessing the value of IP.

Click here for more information on a free training program for your employees, and click here for a proactive apprach to intellectual property lawyering that addresses these requirements, along with strategic I/P legal sourcing, and metrics.

And, of course, please feel free to contact me for more information on these issues.

Thank Goodness It's Friday (the Thirteenth),

--Bill Heinze (e-mail, v-card)

USPTO Revising URAA Transitional After Final Practice

For any submission under 37 CFR 1.129(a) ("Transitional procedures for limited examination after final rejection and restriction practice") filed on or after June 8, 2005, the United States Patent and Trademark Office (Office) announced on May 6, 2005 that it is changing its final action practice for the Office action immediately following a submission under the URAA transitional limited examination procedure.

Under the new practice, the next Office action following timely filing of a submission under 37 CFR 1.129(a) (and payment of the fee set forth in 37 CFR 1.17(r)) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits shall be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a). Any information disclosure statement submitted under 37 CFR 1.129(a) without the statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) (in view of applicant’s payment of the fee set forth in 37 CFR 1.17(r)).

Section 706.07(g) of the Manual of Patent Examining Procedure will be revised in due course to reflect this change in practice.

The URAA provided (among other things) for the Office to prescribe regulations to provide further limited (re)examination after final rejection of applications that have been pending for two years or longer as of June 8, 1995, taking into account any reference made in such application to any earlier filed applications under 35 U.S.C. 120, 121, or 365(c). The purpose of this transitional procedure was to facilitate the completion of the prosecution of applications pending in the Office as of June 8, 1995.

Under 37 CFR 1.129(a), if the first submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final. Likewise, if the second submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final.

This final action practice is having a greater than anticipated effect in working against the completion of prosecution of applications filed before June 8, 1995. In addition, a review of the Statement of Administration Action revealed that the final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) (treating such Office action as the equivalent to a first action in a continuing application) was not the contemplated implementation of the transitional procedure provided for in § 532(a)(2)(A) of the URAA. Therefore, the Office is changing its final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) to bring about the completion of prosecution of applications to which the transitional procedure set forth in 37 CFR 1.129(a) applies.

For more, click on "Changes to the Transitional Procedures for Limited Examination After Final Rejection in Certain Applications Filed Before June 8, 1995" published May 6, 2005.

PUBPAT WANTS YOU to Search for Prior Art

The Public Patent Foundation ("PUBPAT") released a free program today that details how to find prior art for issued patents. The hour long audio recording with supporting written materials uses a model patent as the basis for examples during the session. PUBPAT's program is made available as part of the organization's ongoing efforts to inform the public and provide advocacy about the patent system.

"One of the biggest problems with the patent system today is that it is not capable of being easily understood by the general public, because it has been intentionally made overly confusing and complex, highly non-intuitive, and extremely expensive for anyone to know what it all means and how patents impact them," said Dan Ravicher, PUBPAT's Executive Director and the author of the Finding Prior Art for an Issued Patent program. "The program we released today is one way in which PUBPAT is enabling the general public to better understand the patent system and defend itself from the harms caused by wrongly issued patents."

More information about PUBPAT's education and advocacy activities, including links to the Finding Prior Art for an Issued Patent program, can be found at PUBPAT ACTIVITIES > Educating and Advocating.

U.S. Patent Reexamination Growth

Source

Power Integrations Requests Investigation of Power Supply Controllers from Taiwan

On May 9, 2005, Power Integrations, Inc. filed a "Section 337" unfair import complaint at the U.S. International Trade Commission. The complaint requests that an unfair import investigation be instituted involving "Certain Power Supply Controllers and Products Containing Same."

The proposed respondents is Systems-General Corporation, Taipei, Taiwan. The complaint has been designated as confidential and assigned Docket No. 337-2428 for indexing in the Commission's database. Power Integrations’ patent-infringement lawsuit against System General, filed in June 2004 in the U.S. Federal District Court for the Northern District of California, reportedly remains in progress.

The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations. 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

May 27 Deadline for USPTO PAC Nominations

The United States Patent and Trademark Office is seeking qualified individuals to serve on its public advisory committees. Persons wishing to submit nominations should send the nominee's resume to the Chief of Staff, Office of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450. Electronic submissions for the patent advisory committee should be sent to PPACnominations@uspto.gov and to TPACnominatons@uspto.gov for the trademark advisory committee.

Nominations must be postmarked or electronically transmitted on or before May 27, 2005. For more information about the advisory committees and the duties and responsibilities of members please visit the public advisory committee section of the USPTO website.

What Trademark Filings Say About the Economy

From the May 9, 2005 National Law Journal:

• Domestic trademark applicants outnumbered foreign ones by a ratio of 85 to 15.
• Applications by companies in China increased from 488 to 770 in one year.
• Indian applicants matched China in the number of filings for business services data processing and software development
• In the U.S., there were 132,000 "blue state" applicants v. 81,000 from businesses in the red states. Sixteen applications contained the word "Blue State" v. three containing "Red State."
• With 12% of the U.S. population, Californians filed 21% of domestic trademark applications in which computer and electronic goods applications increased 2% while entertainment services class jumped 14%
• With less than 1% of the U.S. population, Nevadans accounted for 2% of filings by U.S. applicants last year, a 40% rise from last year, with almost one-quarter involving casino and gaming services.
• On the other hand, Louisiana and Wisconsin both saw declines, with applications by Wisconsin companies for cheese falling by 50%.

"Clearly, what happens in Vegas winds up at the Trademark Office," writes Glenn Gundersen. And apparently, what happens in Wisconsin, stays in Wisconsin.

No Equivalents for "Conventional Computer" Limitation

Computer Diskette Drive Communication Interface

In PC Connector Solutions LLC v. Smartdisk Corp., et al. (Fed. Cir.; May, 6, 2005) claim 1 required that the peripheral device used with the claimed coupler have "an input/output port normally connectible to a conventional computer input/output port," while claim 10 similarly required the peripheral device to have a "standard input/output port" that is "traditionally connectable to a computer." The court construed these claim limitations to require the peripheral device be connectable to a computer I/O port that was in common use at the time of filing in 1988.

Lynn E. Eccleston and Harold Wegner have described "Time of Invention for Claim Construction" as the unasked question in the pendng Phillips en banc decision. It looks like they might now have an answer. But perhaps more importantly, the court also noted such limitations essentially eliminate the need to consider any scope of equivalents:

A finding of equivalence in this case would effectively vitiate the time-related limitation on the I/O ports, if what is "normally connectible," "conventional," "traditionally connectable," and "standard" at the time of filing were deemed to be equivalent to what is "normally connectible," "conventional," "traditionally connectable," and "standard" at a future date. As a matter of law, there can be no infringement under the doctrine of equivalents "[i]f a theory of equivalence would vitiate a claim limitation." Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998). Accordingly, the district court’s failure to consider infringement under the doctrine of equivalents was, at most, harmless error.

BCG Innovation Survey 2005

According to the Boston Consulting Group's second annual global survey of senior executives on innovation and the innovation-to-cash process, 50% of executives are not satisfied with the financial return on their innovation investments. Nonetheless, 66% said that innovation is one of their company’s top three strategic priorities for 2005—including 19 percent who said it was their companies’ single most important initiative. Other key findings include:

• Seventy-four percent of the executives surveyed
  said that their companies will increase spending on
  innovation in 2005, up from 64 percent in 2004.
• Almost 90 percent of the executives surveyed said
  that generating organic growth through innovation
  has become essential for success in their industry.
• However, less than half of the executives surveyed
  said that they were satisfied with the financial
  returns on their investments in innovation.
• Executives ranked Apple, 3M, GE, Microsoft, and
  Sony as the most innovative companies. Apple
  rose to the top spot from number five last year.
• Globalization and organizational issues were
  cited as two of the biggest challenges facing many
  companies in 2005.

One of the biggest problems identified by the servey is measurement. Few companies believe
they have the right metrics for innovation in place and less than half of the executives in their survey said that their company carefully tracked the financial returns on innovation at all. However, according to the report,

Despite the many uncertainties of innovation, it is possible to assess, at the outset, the likely impact of different approaches to managing the full innovation-to-cash ("ITC") process. In our experience, this assessment typically is best accomplished by examining the cash curve of an innovation. A cash curve depicts the cumulative cash investments and returns for an innovation over time—it runs from the very beginning of development until the point at which the product or service is removed from the market. Since management’s decisions affect the shape of the cash curve, companies can use it to openly discuss how to manage the curve, and the resulting returns, and make the required decisions and tradeoffs.

But for that type of analysis, they probably have to sell you your own survey.

Protecting IP When an Employee Leaves

In "How To Protect IP When Terminating Employees," Caroline Horton Rockafellow reccommends

• taking inventory of all documentation and electronic information that may contain corporate intellectual property, prior to the termination.
• terminating the former employee's electronic access immediately prior to termination or, in the alternative, monitoring access in accordance with company computer policies.
• ensuring that the company continues to have access to all electronic records, corporate documents, and notebooks of the former employee
• using exit interviews to educate the former employee as to the proper treatment of these assets. Accordingly, an exit interview should be a part of all employee-employer separations. Each employee should be educated

Intel: More Manufacturing, Less Enjoining?

According to Brenda Sandburg's article in The Recorder on May 9, 2005, while the Business Software Alliance says patent reform is needed to decrease the amount and cost of patent litigation, those opposed say the legislation would, in effect, impose compulsory licensing on inventors.

"This is a critical reform for us," she quotes David Simon, Intel Corp.'s chief patent counsel. "Unfortunately there's been a growing business model of [these entities] buying patents from distressed companies and suing people." Simon also repotedly said that Intel is facing seven suits from patent-holding companies. They are able to use the threat of an injunction, he said, to push big companies into a settlement. "If someone buys a patent for 50,000 bucks and their business model is suing people, should they be able to get an injunction?" he asked.

But many other groups are opposed to limiting the ability to obtain an injunction. The American Intellectual Property Law Association, Eli Lilly Co. and Dean Kaman, the inventor of the Segway scooter and head of DEKA Research & Development Corp., testified against the provision at the recent Senate hearing.

"This would essentially destroy the exclusivity that a patent grants," AIPLA President William Rooklidge reportedly said in an interview. "It's telling patentees, 'If you don't commercialize an invention ... we'll allow others to come in and do so.'"

Besides, only Boy Scouts pay their patent damages without a fight.

New Scout Badge for Protecting Intellectual Property

The Hong Kong Scouts Association has reportedly unveiled a souvenir "protecting intellectual property rights" badge. The programs will attempt to teach the public about the importance of preserving copyright and intellectual property rights, an Intellectual Property Department spokeswoman said Tuesday. "It is really what they call a proficiency badge - the badge cannot be put on the shirt," she reported told The Standard on May 4, 2005.

Greg Shields, spokesman for the National Association for the Boy Scouts of America commented that obeying the law would not earn a Scout a merit badge. "That's kind of an expectation, so to speak, of a Scout."

Eight Tips for Avoiding Rejections in Business Method Applications

Dennis Crouch at the Patently-O Blog boils down Bob Weinhardt's presentation to the May 4, 2005 business method partnership meeting to eight tips here. And click here for his Updated Business Method Patent Statistics.

IP.com Now Includes IBM Technical Disclosure Bulletin

According to the May, 8, 2005 Buffalo News, IBM Corp. turned over its Technical Disclosure Bulletin archive of published inventions to IP.com in April 2005. Companies like Kodak, Motorola, Xerox and Sony are reportedly using the IP.com services. According to the IP.com website,

The IP.com Prior Art Database is an excellent solution for companies who wish to publish their technical disclosures (defensive publications) in a well-known, library indexed, publicly searchable database specifically dedicated to the promotion and publishing of prior art data. The IP.com Legal Safeguarding Agent enables customers to protect all internal e records such that they can prove the original date and content of any document in the future. This is especially relevant for any compliance requirement in addition to all intellectual property applications. The IP.com LSA runs behind your firewall, automatically archiving and digitally fingerprinting your records on a regular basis. The IP.com Innovation Q is the answer for corporations looking to add a level of security to their existing research and development process (like lab notebooks), without negatively impacting their existing work processes.

CAFC Ends Panel Composition Notices

For several months, the Court had posted panel composition for Court Week the previous Thursday. According to an unconfirmed note from Hall Wegner, the Federal Circuit no longer gives an at least 96 hour warning on panel composition prior to each oral hearing. "The change will have no major impact on the work of the Court nor on pre-hearing settlements because the notification comes too late in the process, after almost all the fees for the appeal have been generated," writes Hal.

TMEP 4th Edition Now Available

The April 2005 edition of the Trademark Manual of Examining Procedure (TMEP) may be viewed and downloaded free of charge from the United States Patent and Trademark Office (USPTO) website at http://www.uspto.gov/web/offices/tac/tmep/. Here are the direct links for the sections on Changes - 4th Edition and Instructions for Updating TMEP 3rd Edition to 4th Edition.

The TMEP is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants, with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.

The Idiot's Guide to the Federal Courts

Let me just say that the journalists I know are not idiots, but the law can be.

With that in mind, "A Journalist's Guide to the Federal Courts" is intended to assist reporters assigned to court coverage. The Guide explores the Federal District Courts, Bankruptcy Courts, and the Federal Appellate Courts. And, it sure beats going to law school with a bunch of idiot lawyers.

If you are a journalist looking for information on an intellectual property issue, then feel free to give me a call anytime at 404-729-0729. Just don't make me look like an idiot to your audience.

TGIF for Patent Terrorism Foolishness

In their zeal to educate, amuse, enrich, and tell you the truth about investing, those happy fellows at www.fool.com want you to know about a new problem in our profession -- "patent terrorism." According to their article on April 26, 2005, the patent "T-word" refers to a legal entity that owns a patent or patents but neither develops products based on them or retains the original inventor:

Often, these organizations purchased the patents or swallowed companies that were going under to acquire the ideas, which is called patent trolling. These companies then scour the marketplace for other companies that may be doing business in areas related to the owned patents, and follow through with litigation to demand payment of license fees or royalties, or both.

These patent terrorists have no interest in cross-licensing because they produce no products themselves. They also often don't help the licensee with product development, because they usually don't hire the original inventor of the patents -- only lawyers. The typical legal action is more akin to a shakedown, with them often swooping in after a company has developed and sold so-called infringing products and trying to collect retroactive license fees.

There are a few practices in licensing patents that are considered legitimate in
the business of technology. First, innovative ideas are recognized and paid for by companies if there is some form of return in kind. It is very common, for instance, for companies to execute cross-license agreements, where each company gets access to selective innovations of the other. Microsoft, for instance, has stepped up its efforts in the past year and is pushing for cross-license agreements.

Companies also tend to be willing to pay license fees to a patent owner if the ideas can give the company a significant boost in either time to market, profitability, or competitive advantage. Obviously, if there is a clear advantage to incorporating an outsider's invention into your own product or service, it's worth paying for.

But at least the Patent Baristas aren't buying into this bit of Foolishness. "From the article, patent licensing apparently means licensing if done by a large company (the article mentions IBM and TI), which for some reason is OK even though it is described as generating huge revenue streams for companies, revenue that must come from someone," they write. "It's funny that the Fools often recommended tobacco stocks in the past because of the massive return on investment and have now come out against licensors for asserting their rights."

The Baristas aren't sure what the Fools might have been smoking, but they couldn't help but notice that the article came out just as Intel’s patent attorney was "on a road show campaigning against those pesky patent trolls." And while the chief patent counsel of the Business Software Alliance doesn't use the T-word, he too is voicing concern over what the industry sees as unfounded patent litigation. "Too many of these (patent litigation lawsuits) are filed in search of a quick buck through settlement negotiations, rather than a party legitimately asserting a right, because the infringer is interfering with commercial objectives," David Simon reportedly said.

However, Robert Merges, professor of law at the Center for Law and Technology at the University of California, Berkeley, offers a bit less tomfoolery in his analysis of this issue. He beleives that relatively few companies are actually out gaming the patent system:

"Sometimes people will become pretty good at playing the patent game.
They'll get a patent and not really contribute anything significant in terms of
technology, but just be a little ahead of the curve and be pretty clever about
working the patent system. It's kind of a tricky policy issue. How do you
slap down and try to stop the illegitimate guys while not wrecking any of the
beneficial uses people have found for patents?"

In other words, "reform is in the eye of the patent holder," writes Jonathan Krim in the May 5, 2005 Washington Post. As any Fool will tell you, no one ever likes to pay for what they can otherwise get for free. That's why potential infringers see every patent owner as a terrorist, and every patent as a weapon of mass destruction. On the other hand, when you're a patent owner, it can seem like every manufacturer is just one more point on the axis of evil, so that every enforcement action will inevitably lead to the Mother of All Lawsuits.

But there is still no reason to be terrified by the folly of this titular patent arms race. You can protect your business against these tommyrotten tiffs with a touch of "Proactive I/P Lawyering" and a trace of "Stategic I/P Legal Sourcing" trumpeted earlier in the "I/P Updates" news service. And, if that's still not enough to tranqulize your trepidations, then here's another "T-word" to think about,

Thank-Goodness-It's-Friday,

--Bill Heinze

p.s. - For more "patent Foolishness," check out TiVo Tunes In Patents, A Passage to India?, and Sony Immerses Itself in Haptics.

The $15.5 Million Patent Defense?

Commerce One Inc.'s 39 Web services patents that went to a mysterious high bidder, JGR Acquisition Inc., for $15.5 million, in a December auction at the Bankruptcy Court for the Northern District of California in San Francisco are reportedly now in the hands of Novell. It has been reported that Novell will use the patents for defensive purposes and doesn't plan to use them for licensing revenue. However, Novell's director of PR areportedly told eWeek on May 3, 2005 that "We clearly are a believer in open source, and we are always considering alternative ways to promote open source. But I can't speculate at this stage on specific future actions we might take around patents."

EPO: Non-Technical Features Cannot Support Inventive Step

According to Axel Horn at the IPJUR Blog, the European Patent Office (EPO) has issued another decision confirming that non-technical features cannot support the inventive step (nonobviousness) requirement for obtaining a European patent.



In case T 0531/03, the claims at issue required a cumulative discount certificate to be printed at the end of a transaction in which each entry corresponds to a different triggering product from the customer order. The prior art, on the other hand, disclosed a separate discount coupon being printed for each "coupon deal" which may be one triggering product or a predefined group of triggering product identified in the customer order.

The patent addressed "the problem of encouraging consumers to revisit the same store, so as to provide a consumer incentive to return to the store without having to manage the printing of a multitude of coupons." However, the Board viewed this characterization as merely a matter of marketing strategy and went on to redefine the technical problem/solution for determining whether there was sufficient inventive step:

The problem stated above is a matter of marketing strategy which does not in itself involve any technical considerations upon which an inventive step could be based. Therefore, an objective technical problem should be reformulated in terms of providing a technical implementation of the underlying marketing strategy. In the present case this means that the technical professional who is given the task of modifying the known electronic coupon generation system so that it operates according to a desired market strategy must, in order to carry out this task, also receive knowledge of this market strategy. This means the replacement of discount coupons with a single discount certificate.

The objective technical problem thus relates to adapting an electronic coupon generation system, such as that known from the prior art document, so that it generates a single cumulative discount certificate for each transaction. The opposition division correctly rejected the suggestion of the appellant that a technical problem may be formulated in terms of improving the efficiency and reducing the amount of paper used in printing the coupons or certificates, since this problem is not clearly and unambiguously derivable from the application as filed. In particular, is not an inevitable result from printing a single cumulative discount certificate using the system according to claim 1 that less paper will indeed be consumed. The appellant has also not provided any evidence that this would be the case.

The Board agrees with the opposition division's assessment that the
skilled person faced with the above technical problem would not require any
inventive skills to solve it. The appellant has also not contended that the solution of the above problem would involve any non-obvious technical considerations or provide any non-obvious technical effect. Therefore, in the Board's judgement, the subject matter of claim 1 according to the main request does not involve an inventive step within the meaning of Article 56 EPC.

Mug Configuration Not Distinctive

In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000), the U.S. Supreme court held that product configurations can never be inherently distinctive. Now, according to the TTAB Blog on April 28, 2005, the U.S. Trademark Trial and Appeal Board has explained in In re Pacific Market, Inc., Serial No. 75444515 (April 14, 2005) [not citable], why "the burden of showing acquired distinctiveness in a product configuration is significant."



Pacific reportedly offered the declarations of two employees, stating that the mug shown above was sold to Starbucks, Target Stores, and Seattle's Best Coffee, that its shape is unusual, and that it was "specifically designed with the intention that it be a distinctive design in the marketplace." Pacific also provided sales figures of 150,000 units over a five-year period. However, there was no evidence that the shape is recognized by the trade or by the ultimate consumers as a trademark. The TTAB blog also illustrates nicely how competing products had a similar look and the the design was not featured in promotional materials.

Thanks John, and watch out for Pacific Marketing's portfolio of design patents, including D476,528.

Copyright Pre-Registration Coming Soon to the U.S.

The Family Entertainment and Copyright Act of 2005 was enacted on April 27, 2005 as Public Law No: 109-009 [Text, PDF].

Among other things in the new law, Section 104 directs the Register of Copyrights to issue regulations to establish procedures for preregistration of a work that is being prepared for commercial distribution and has not been published. Infringement actions for such preregistered works will be dismissed, and any award of statutory damages or attorney fees will be prohibited, for a preregistered work if those items are not submitted to the Copyright Office in proper form within the earlier of: (1) three months after the work's first publication; or (2) one month after the copyright owner has learned of the infringement.

Read the House Report on the bill at http://www.aipla.org/html/reports/2005/HRpt109-33.pdf.

Freivogel on Conflicts for Coporate Law Departments

Rees Morrison CMC at the Law Management Blog reccomends that corporate law departments with a conflicts situation turn to Freivogel on Conflicts at www.freivogelonconflicts.com/new_page_36.htm.

Freivogel on Conflicts is an online publication dedicated to conflicts of interest. It contains approximately 250 pages of material by William Freivogel, Senior Vice President for Loss Prevention at Aon Risk Services, Inc. His "What’s New page" also contains very recent decisions and opinions on those categories and is updated daily, using a variety of sources.

Strategic I/P Legal Sourcing

According to "Strategize This! Prepare Now For When Procurement Analysts Come Knocking on the Legal Department's Door," (Altman Weill; October 2004):

Too many CLOs don't have the information they need to manage legal costs properly. Those who continue to rely on instinct to justify budgets and increases in staffing requests are vulnerable. Today's marketplace and technology tools provide to legal departments of all sizes the ability to become savvier consumers of legal services. Shaking up long-term and trusted relationships with outside counsel will be uncomfortable. However, law firms that are truly delivering great service and doing so in an efficient manner will only stand out further when the electronic billing data is analyzed.

It generally takes about six to nine months’ worth of ebilling data to begin
performing a valid statistical analysis. Prior to accumulating that much data, work is focused on identifying how the information needs to be categorized and sliced for future analysis. Interpreting economic benchmark data can be a daunting task.

For intellectual property work, start with the the "I/P Task-Based Billing Codes" discussed at http://ip-updates.blogspot.com/2004/12/ip-task-based-billing-codes.html. If you drop me an e-mail at BillHeinze@yahoo.com or BillHeinze@tkhr.com, I would be pleased to send you a copy at no charge.

The authors go on to describe the details of a three-pronged approach to mining your ebilling data for startegic information:

• Performance Management -- Define the metrics by which outside counsel will be measured by developing a “Performance Scorecardâ€� that rates law firm performance
  against peers and industry data.
• Relationship Management -- Definine how these new expectations and ratings are communicated to outside counsel is critical. Long-term law firm relationships must be handled with care, especially with lawyers who have developed a deep understanding of your business. Most law firms want to exceed client expectations.
• Fiscal Accountability -- Law firms know that the hourly billing model is not always in the best interests of a client. Some law firms are highly creative and willing to share risk with
  clients when they are provided with accurate information and incentives, in an economic manner that is fair to both law firms and corporations.

They don't view the problem as an epic battle between in-house and outside counsel, and neither do I. For more information on strategic legal sourcing, check out the Altman Weil Direct newsletter at http://www.altmanweil.com/about/newsletter.cfm. I have been reading it for years and would enjoy hearing your thoughts on some of these ideas on how to get more for your money from outside counsel. I'll even spring for the lunch.