Global Prosecution Argument Trumps Doctrine of Claim Differentiation

In Seachange International, Inc. v. C-Cor, Inc. (Fed. Cir. June 29, 2005), claim 1 of the patent required "interconnecting each one of said processor systems in a point-to-point two way channel interconnection with each other one of said processor systems." Claim 37 was identical to claim 1, except that claim 37 requires only that the interconnection be through a "network for data communications." Nonetheless, the court concluded that there had been "a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations" so that the broader claim language was also limted to point-to-point communications.

The court noted that on the one hand, an IEEE technical dictionary definition of "network" does not suggest the point-to-point limitation and the doctrine of claim differentiation creates a presumption that the limitations in claim 1 and claim 37 are of different scope. On the other hand, it also noted that written description consistently refered to the network interconnections as point-to-point, and that global arguments had been made during prosecution with regrd to these two claims in an single, exemplary group:

The Examiner grouped several claims together, including claims 1 and 37
(40), and rejected them as a group as being obvious over Morita in view of
Benner. Applicant responded, stating, inter alia, that applicant will in general treat a single claim as being representative of the group. Applicant then selected claim 1 as "an illustrative claim" and argued that Morita and Benner do not suggest connecting each processor to each other processor via point-to-point, two-way channel
interconnections. Applicant also argued that Morita and Benner do
not disclose "the arrangement of stored data and redundant data" required by
claim 1. Applicant concluded that "in view of the fact that neither Morita nor Benner . . . suggest the above-mentioned elements of Applicant’s invention . . . , it is submitted that the rejection has been overcome by argument."

Even though Applicant "reserve[d] its right to later argue that additional ones of the claims are patentably distinct over the combination of references," Applicant made no separate patentability argument for claim 37. Because Applicant provided "clear
notice of th[e] linkage" between claim 1 and claim 37 for the purpose of its argument to overcome the prior art rejection on the basis of the "point-to-point" and "redundant storage" limitations, it would be improper to now broadly construe claim 37 not to contain those limitations. See Elkay, 192 F.3d at 980 (holding that arguments made with respect to a claim during the prosecution of an earlier patent applied to a claim in a later patent where the claims were "affirmatively linked" by the applicant); Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998) (holding that a general statement distinguishing prior art applied to all claims linked to the statement).

Seachange argues that Applicant made two arguments to overcome Morita and
Benner, and because the "point-to-point" argument relates directly to the "point-to-point" language of claim 1 rather than the "network for data communications" language of claim 37, and because the "redundant storage" argument relates to all claims of the grouping, the public was on notice that claim 37 did not necessarily contain the "point-to-point" feature. Seachange buttresses this argument by citing the notice of allowance in which the Examiner allowed all claims based only on the
"redundant storage" feature.

However, the conclusion that Seachange would have us reach—that Applicant responded to the First Action and distinguished claim 37 over Morita and Benner based only on the "redundant storage" feature, and not based on the point-to-point feature—is unwarranted. Nothing in the prosecution history suggests that the point-to-point argument did not apply to all of the grouped claims. Applicant did not indicate that the "point-to-point" argument applied only to claim 1. Instead, the natural reading of Applicant’s statements suggests that the "point-to-point" argument applied to each claim in the grouping.

TTABlog Quarterly Index for April -- June 2005

The TTAB Blog has just released its quartly index for April-June 2005 at
http://thettablog.blogspot.com/2005/06/ttablog-quarterly-index-april-june.html, with posts listed by the following topics:

• Section 2(d) - likelihood of confusion
• Section 2(e)(1) - merely descriptive
• Section 2(e)(3) - primarily geographically deceptively misdescriptive
• Section 2(e)(4) - primarily merely a surname
• Section 2(f) - acquired distinctiveness
• Dilution
• Genericness
• Not a Trademark/Mutilation
• TTAB Discovery/Evidence/Procedure
• Res Judicata
• Standing/Timeliness/ESTTA/Etc.
• Recommended Reading
• Leo Stoller

The index for November-December 2004 postings may be found here , and for the January-March 2005 postings here. The TTABlog is also word-searchable. Just enter the search term in the Google search box at the upper left corner of the blog page. A Google search results listing will then appear.

It's all great stuff from John L. Welch.

ePAVE Filing Fee Reminder

Effective July 1, 2005, the application size fee for electronically filed utility and provisional patent applications will be based on 75% of the number of pages for the paper size equivalent of the specification (including claims) and drawings, and any external tables.

Customers should enter 75% of the total number of pages in the new utility application specification and any external tables in the “Number of pages in the specification and any external tables” field in the Fee Calculation screen in ePAVE.

For questions regarding the how to determine fees for electronically filed applications, please contact the Patent EBC toll free at 866-217-9197 between the hours of 6 a.m. and midnight Monday through Friday EST, or by e-mail at: ebc@uspto.gov. Additional information on the fee rule changes is available at www.uspto.gov/web/offices/com/sol/notices/70fr30360.pdf, §1.52 (f)(2).

USPTO Pre-Appeal Brief Conference Pilot Program Coming Soon

Around the first first half of July 2005, the USPTO is expected to formally announce a new Pre-Appeal Brief Conference Pilot Program that will offer applicants an avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief. The program is intended to spare applicants the added time and expense of preparing an appeal brief if a panel review determines an application is not in condition for appeal. Applicants will likely be required to file a formal request with the notice of appeal, and before the filing of an appeal brief.

Feel free to contact me for an informal, advance copy of the announcement.

METI Publishes China I/P Enforcement Survey

On June 23, 2005, the Japanese Ministry of Economy, Trade and Industry (METI) published the results of its "Field Survey for Infringement of Intellectual Property Right in China." Their survey covers two years from 2003 through 2004. Among the conclusions, "Of the 67 companies that used the remedial procedures of Chinese governmental authorities when there was an infringement of intellectual property rights in China, 40 answered that they sensed difficulty when seeking a response from the authorities, or a lack of smooth progress."

Several other systemic inadequecies were also noted in the survey responses from 134 companies, primarily Japanese corporations that have gained ground or are doing business in China:

• The party holding the rights must be liable for such expenditures as warehouse storage cost for confiscated items and disposition expenses.
• Unfairly low prices were used to calculate the amount of fines for administrative measures, or the amount of illegal business being conducted, which is the benchmark for determining whether to initiate criminal prosecution. Therefore, we cannot expect the infringements to be curbed because the fines are extremely low and criminal prosecution cannot be initiated.
• There are delays in trademark registration applications and the deliberation for protests filed, and the period for responding to rejections in the deliberation process is too short at 15 days.
• There was a repeat offender, but criminal charges were not filed because the monetary amount was insufficient. Repeat offenders should be regarded as malicious and we want criminal charges filed against them.

APLF Patent Reform Roundtable Today

A preview of today's APLF Roundtable on the latest patent reform proposals is available at
http://www.aplf.org/events/roundtables/2005-06-28-tmp.shtml. Contact info@aplf.org in order to obtain the toll free dial in number for today's presentation at 12:30 pm eastern.

WIPO's Guide to Inventing the Future

"Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises" can be downloaded as a PDF document from World Intellectual property Organization's SME website or may be obtained in hard copy by writing to publications.mail@wipo.int. The guide is the third in the "Intellectual Property for Business" series following earlier publications on trademarks and designs.

For more information on "IP for SMEs" visit http://www.wipo.int/sme.

GAO Report Addresses Human Capital Challenges at USPTO

According to a June 2005 report from the U.S. Government Accountability Office, the USPTO has made greater progress in implementing its Strategic Plan’s initiatives to improve the patent organization’s capability than it has in implementing initiatives to improve its productivity and agility:

While USPTO has undertaken a number of important and necessary actions to
attract and retain qualified patent examiners, the agency continues to face
three long-standing human capital challenges that could also undermine its
recent efforts if not addressed.

• First, the agency lacks effective mechanisms for helping managers to communicate and collaborate with examiners.
• Second, human capital models suggest that agencies should periodically assess their monetary awards systems to ensure that they help attract and retain qualified staff.
• Finally, counter to current workforce models, USPTO does not require ongoing technical education for patent examiners, which could negatively affect the quality of its patent examination workforce.

The report concludes that "unless USPTO begins the process of developing an open, transparent, and collaborative work environment, its efforts to hire and retain examiners may be negatively impacted in the long run."

Grokster Decision Reveals Split on Intent Requirement

Temple University Law School Professor David Post has already concisely summarized today's Supreme Court decision in Metro-Goldwyn-Mayer Studios, Inc. et al., v. Grokster, Ltd., et al.

"It's a unanimous victory for the entertainment industry plaintiffs," he writes, "but actually not quite as one-sided as all that:"

The full court says: even if you meet the Sony standard (i.e., even if you
have "substantial noninfringing uses"), you can still be liable for inducing
copyright infringement, if there's evidence that you actively encouraged or
promoted infringing conduct. And there is such evidence in this case.

More interestingly, though, the Court is split on the question: Can you be liable
for distributing file-sharing software if you are NOT actively inducing/encouraging/promoting its use for infringing purposes. Three Justices
(Ginsburg, Rehnquist, Kennedy) say: Yes, you can, if the product is primarily
used for infringement. Three of the Justices (Breyer, Stevens, O'Connor) say:
No, you can't, as long as there's evidence that the product is capable of being
used in a noninfringing way. So it's a 3-3 split on that question.

The other 3 Justices (Scalia, Souter, Thomas) take no position on this point (on the grounds that it's not necessary to decide this case, where there is such evidence of
inducement/encouragement.) Though there is a footnote 12 in which they seem to suggest that they're on the Breyer (no) side of the line:

"Of course, in the absence of other evidence of intent, a court would be unable to find contributory infringement liability merely based on a failure to take affirmative steps to prevent infringement, if the device otherwise was capable of substantial noninfringing uses. Such a holding would tread too close to the Sony safe harbor."

StreamCast's general counsel's take on the opinion was a bit less nuanced, reportedly calling it "Orwellian," and describing lawyers for media companies as "the new thought police." Perhaps, but will their mind-reading powers be able to penetrate a simple warning label advising against infringing uses of the next generation of this technology?

TRIPS Council Meeting Split by North-South Divide

According to BRIDGES Weekly Trade News Digest, a European Union submission to the June 14-15 meeting of the WTO Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS) met with strong resistance from developing countries. The EU "would like the TRIPS Council to carefully examine compliance of Members with the enforcement provisions of the TRIPS Agreement, pursuant to Article 68 of the TRIPS Agreement"(IP/C/W/448, available at http://docsonline.wto.org/). Such examination would include assessing "the implementation of TRIPS provisions onenforcement in detail, and make recommendations on ways to improve the situation (for instance by laying down benchmarks to evaluate the progress made by national administrations towards a higher level of intellectual property enforcement, suggesting best practices, etc) to ensure a full implementation of TRIPS obligations in this field."

WTO members also made no substantive headway in their discussions on extending the higher level of protection already accorded to geographical indications for wines and spirits to other products (GI extension) at a meeting on June 17. Similarly, limited progress was made on the establishment of a multilateral register for GIs for wines and spirits during the Special Session of the TRIPS Council from June 16-17, leading the Chair to conclude that "differences appear to be as large as ever and not have narrowed since prior to Cancun."

The next formal session of the TRIPS Council is currently scheduled for October 25-26.

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New USPTO Patents Central FAX Number Starting July 15, 2005

On July 15, 2005, the Central Facsimile (FAX) Number will change from 703-872-9306 to 571-273-8300. Faxes sent to the old number will be routed to the new number until September 15, 2005. After September 15, 2005, the old number will no longer be in service and 571-273-8300 will be the only facsimile number recognized for "centralized delivery."

The official notice dated June 20, 2005 also includes an "updated list of exceptions to the centralized delivery and facsimile transmission policy for patent related correspondence." Questions regarding this notice may be e-mailed to PatentPractice@uspto.gov, or directed to the Inventors’ Assistance Center by telephone at 800-786-9199, or 571-272-1000.

TGIF for the Return of Dr. Funkenstein

After showing us that even unidentifiable samples of his music are still copyright infringements, George Clinton, aka "Dr. Funkenstein," has now convinced Judge Manuel L. Real of Federal District Court of Los Angeles that he also owns the master recordings of four albums made in the 1970's with his band Funkadelic.

Unfortunately, the good Doctor lost a court ruling in 2001 where claimed to still owned the copyrights for that music, which are now controlled by his onetime publisher, Bridgeport Music. According to the June 7, 2005 New York Times, it is not clear whether the latest ruling would provide for a new claim on that issue.

"I'm still writing the whole history of the thing," Mr. Clinton reportedly said. "I just want my stuff back."

Luckily, the rest of us can get our funk back here.

Cited Reference Invalidates Claim based on Procedural Approach to Broad Construction

In Prima Tek II, L.L.C., et al. v. Polypap, et at. (June 22, 2004) the Federal Circuit invalidated a claim under a broad claim construction in light of a prior art reference had been considered by the Examiner during prosecution. The court appeared to give little deference to the Examiner's consideration of the prior art:

In considering questions of anticipation, we are mindful that if an invalid patent is issued, competitors may be deterred from challenging it by the
substantial cost of litigation. Even if a successful challenge is brought,
competition may be suppressed during the pendency of the litigation. The risk of
antitrust liability or litigation sanctions may deter some from seeking to
secure or enforce invalid patents, but our patent system depends primarily on
the Patent and Trademark Office’s ("PTO’s") care in screening out invalid
patents during prosecution.

Anticipation is ultimately a question of fact, but also depends on proper claim construction—a legal issue. We review the district court’s claim construction without deference, and its factual determinations for clear error. Here, extensive prior art exists regarding products and methods for displaying floral groupings, and the district court considered prior art stretching back over a century. It appears likely that the asserted claims are anticipated by the 1899 Bertels reference, but for
simplicity we address only the more recent Charrin reference, which the district
court found to be "substantially identical" to the much earlier Bertels
reference. Under the appropriate standard, the Charrin prior art reference, which was before the examiner during prosecution of the ’532 patent, clearly anticipates the asserted claims of the patents in suit.

The court then went on to apply the so-called "procedural approach" in construing three of the claim limitations:

When construing claims, we look first "to the words of the claims themselves . .
. to define the scope of the patented invention." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[W]ords in a claim are
generally given their ordinary and customary meaning" unless some "special
definition of the term is clearly stated in the patent specification or file
history." Id. We may consult with dictionaries "in determining the ordinary and
customary meanings of claim terms." Tex. Digital Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1202 (Fed. Cir. 2002). "Pot" is defined as a "rounded metal or
earthen container of varying size used chiefly for domestic purposes." Webster’s
Third New International Dictionary 1774 (2002). The Charrin reference clearly
satisfies the "without a pot means" limitation. It does not use a metal or
earthenware container. Prima Tek’s argument that the wire or string tied around
the moss of the Charrin reference is a pot means is without merit.

Costs were awarded to the alleged infringer. . . ouch.

The Federal Circuit Predicter tool would have predicted the same result. According to their model, there was an 80% probability 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 in favor of such a procedural outcome in the next en banc decision.

USPTO Reducing PTC National Stage Search and Examination Fees

On June 20, 2005, the United States Patent and Trademark Office (Office) announced that it is reducing the search fee and examination fee for certain PCT applications entering the national stage. The changes in this final rule apply to any search fee paid on or after July 1, 2005, and to any examination fee paid on or after July 1, 2005, in an international application entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was paid on or after December 8, 2004.

Among other things, the Consolidated Appropriations Act of 2005 split the national fee for Patent Cooperation Treaty (PCT) applications entering the national stage into a separate national fee, search fee and examination fee, during fiscal years 2005 and 2006. The United States Patent and Trademark Office (Office) is now reducing the search fee and examination fee for certain PCT applications entering the national stage.

In particular, the Office will reduce the search fee to $0.00 and the examination fee to $0.00 where an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the PCT Article 33(1) to (4) criteria have been satisfied for all of the claims presented in the application entering the national stage (§ 1.496(b)).

The Office is also reducing the search fee to $100.00 ($50.00 for a small entity) for other applications entering the national stage in the United States with an international search report provided by the United States Patent and Trademark Office acting as an International Searching Authority. The Office reduced the search fee to $400.00 ($200.00 for a small entity) for applications entering the national stage in the United States with an international search report provided by an International Searching Authority other than the United States Patent and Trademark Office.

The search fees and examination fees in § 1.492 apply only to international applications entering the national stage in the United States under 35 U.S.C. 371. The search fees and examination fees in § 1.492 do not apply to any application filed under 35 U.S.C. 111(a), including continuation applications of an international application (i.e., a bypass continuation application), or continuation applications of an international application that entered the national stage in the United States under 35 U.S.C. 371.

If the Office delays issuance of the international preliminary examination report until after thirty months from the priority date, and the international preliminary examination report states that the PCT Article 33(1) to (4) criteria have been satisfied for all of the claims presented in the application entering the national stage, the applicant may request a refund of the search fee and the examination fee. The Office will grant such a request for refund, however, only where the delay in issuance of the international preliminary examination report was the Office’s fault (e.g., the Office will not grant a refund where the delay was due to applicant delays, or delays by another International Searching Authority).

USPTO Considering Three-Dimensional Biological Structural Data Requirement

In an Advance Notice of Proposed Rule Making published on June 21, 2005, the United States Patent and Trademark Office (USPTO) announced that is considering amending its rules of practice to require submission of chemical and three-dimensional (3–D) biological structural data in electronic format. The USPTO anticipates that requiring submission of chemical and 3–D biological structural data in electronic format in patent applications will improve the processing and examination of patent applications that include such data, as well as the dissemination of such data to searchable public databases. They are therefore soliciting comments on this topic, in the form of responses to the questions posed in the notice, from industry, academia, the patent bars, and members of the public.

To be ensured of consideration, written comments must be received on or before August 22, 2005. No public hearing will be held.

USPTO Proposing Search Fee Refunds for Expressly Abandoned Applications

On June 21, 2005, the U.S. Patent and Trademark Office issued a notice of proposed rulemaking on "Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005." In particular, the Office is proposing to revise the rules of practice to implement the provisions for a refund of the search fee for any applicant who files a written declaration of express abandonment as prescribed by the Office before an examination has been made of the application under 35 U.S.C. 131.

To be ensured of consideration, written comments must be received on or before August 22, 2005. No public hearing will be held.

WIPO Harmonization Talks Stymied by 'North-South' Divide

According to a June 23, 2005 report from Intellectual Propert Watch, officials at the latest June 20-22 meeting of the World Intellectual Property Association to discuss the so-called Development Agenda were unable to reach a consensus.

The gathering was the second of three sessions of the WIPO Intergovernmental Inter-sessional Meeting (IIM) called for by the General Assembly last October to discuss a proposal from Argentina and Brazil to overhaul WIPO’s mandate to make it more development-oriented. As positions on the various proposals on the table began to emerge, conesus reportedly diverged along North-South lines of developing versus developed countries with some notable exceptions:

Perhaps the biggest dividing point was whether to move the subject of
development wholly into an existing WIPO committee, the Permanent Committee on Cooperation for Development related to Intellectual Property (PCIPD). The idea derived from a United Kingdom proposal that argues for the cost-effectiveness and practicality of putting the issue under and existing body with no apparent limit on its mandate.

Questions also remain about legal and political aspects of the committee, a U.K. delegate said, as it currently meets every two years and reports to the WIPO Conference, not the General Assembly as the Intergovernmental Inter-sessional Meeting (IIM) does. The official said the General Assembly includes all governments who are member of at least one WIPO treaty, but that the Conference includes all WIPO members. The PCIPD could be “reinvigorated” with new purpose, he said. But there also appeared to be a lack of clarity among U.K. proposal supporters on whether the PCIPD mandate should be expanded or whether it is sufficiently broad as is.

The PCIPD proposal got significant support from developed countries, both as the Group B industrialised countries, and as a number of individual developed country delegations, including Australia, Canada, France, Japan, Russia, Switzerland, and the United States. But key developing countries, such as Argentina, Brazil and India argued against it, out of concern that the broader, cross-cutting issues of a sweeping development agenda would be dumped into a “garbage can” committee, as a Brazilian delegate put it.

The U.S. representative reportedly spoke against most of the development agenda proposals, arguing generally that they are based on two “misconceptions.” They assume that WIPO has disregarded development concerns, and that strong intellectual property protection is detrimental to global development goals, the U.S. argued. The United States also argued that WIPO continues to make its best contribution to development by deepening and expanding rather than diluting its intellectual property “expertise.”

According to the WIPO press release, two new proposals were presented by Bahrain (co-sponsored by Jordan, Kuwait, Lebanon, Libyan Arab Jamahiriya, Oman, Qatar, Saudi Arabia, Syrian Arab Republic, United Arab Emirates and Yemen) (document IIM/2/2, http://www.wipo.int/edocs/mdocs/mdocs/en/iim_2/iim_2_2.doc) relating to the Importance of Intellectual Property in Social and Economic Development and National Development Programs, and by the United Kingdom relating to Intellectual Property and Development (document IIM/2/3, http://www.wipo.int/edocs/mdocs/mdocs/en/iim_2/iim_2_3.doc).
These proposals are in addition to previous ones submitted to the first session of the IIM in April by the United States of America (entitled "Establishment of a Partnership Program in WIPO", http://www.wipo.int/edocs/mdocs/mdocs/en/iim_1/iim_1_2.doc), Mexico (entitled "Intellectual Property and Development", http://www.wipo.int/edocs/mdocs/mdocs/en/iim_1/iim_1_3.doc), Brazil (co-sponsored by Argentina, Bolivia, Cuba, Dominican Republic, Ecuador, Egypt, Iran, Kenya, Peru, Sierra Leone, South Africa, United Republic of Tanzania, and Venezuela) (entitled "Proposal to Establish a Development Agenda for WIPO: An elaboration of issues Raised in Document WO/GA/31/11", http://www.wipo.int/edocs/mdocs/mdocs/en/iim_1/iim_1_4.doc), and the United Kingdom (entitled "IP and Development, Observations from the United Kingdom", http://www.wipo.int/edocs/mdocs/mdocs/en/iim_1/iim_1_5.doc).

EU Software Patentability Directive Reaches Turning Point

According to a June 20, 2005 report by EurActive, "The Parliament's Legal Affairs Committee adopted the draft directive on the patentability of computer-implemented inventions. Most of the major amendments proposed by the rapporteur, Michel Rocard, and other MEPs critical of the proposal were rejected."

The Financial Times calls Monday's vote "a turning point in the protracted battle over the law, which has split the software industry and sparked severe recriminations" while the Guardian calls the vote "patent absurdity."

The European Parliament will vote on whether to accept the report at its next session on July 4-7. The plenary has typically followed the committee's recommendations. However, "as majorities were quite tight on some key amendments in the committee vote, this may change," note the folks at EurActiv.com.

Europe Receives First PDO Application from Non-EU State

On June 8, 2005, the European Commission received its first application for registration of a protected denomination of origin (PDO) from a non-EU state. The application by "Federación Nacional de cafeteros de Colombia" for "Café de Colombia" follows a World Trade Organization (WTO) report on March 15, 2005 addressing whether geographical indication protection can coexist with trademark rights under the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS).

According to their press release, "The Commission welcomes the fact that the application comes from an association of producers in a developing country, thus underlining that geographical indications can be an instrument for development. The Commission will now study the application. If it meets all the requirements, it will be published in the Official Journal. Third parties then have six months to raise any objections. If they do not, it will then receive EU-wide approval."

Click here for an overview of protected designations of origin (PDO), protected geographical indications (PGI), and Traditional Speciality Guarantees (TSG); and click here for the latest official information from the European Commission.

Lybia Accedes to the PCT

The Patent Cooperation Treaty (PCT) will enter into force with respect to the Socialist People’s Libyan Arab Jamahiriya (Arabic: ?????) on September 15, 2005.

Libya is the fourth largest state in Africa. The name "Libya" derives from the ancient Egyptian term "Lebu," referring to Berber peoples living east of the Nile, and adopted into Greek as "Libya."

According to Wikipedia, the Libyan system of government is "quite unusual." Colonel Moammar al-Qadhafi claims that Libya is a "pure socialist state," and as such the formal institutions of government are purposely quite vague. Qadhafi himself is not even technically the "President" or "Prime Minister" of the country, and instead describes himself as a sort of "guide" or a "leader" to help the Libyan people in socialism. Libya has no constitution, and the laws of the land come from Islamic law, and Qadhafi's Green Book of political philosophy. The government is called a "jamahiriya," a modification of the Arabic word "jumhuriya" (republic) that translates loosely as "people's state." In practice, however, Libya is essentially a dictatorship, with Qadhafi ruling by decree, assisted by a small clique of military and political officials.

Introducing "Copyright Royalty Board News"

"Copyright Royalty Board News" is a new electronic mailing list originating from the Copyright Royalty Board in the Library of Congress with periodic alerts on orders, decisions, hearings, deadlines for comments, new and proposed regulations, and other subjects of interest relating to the business of the Copyright Royalty Board. To subscribe, fill in the Web form at http://www.loc.gov/crb/news/subchange.html or send an email message to LISTSERV@loc.gov with "Subscribe crb-news" in the body of the message.

A complete archive of Copyright Royalty Board News messages is available at http://www.loc.gov/crb/news/. More information on the new Copyright Royalty Board is available at http://ip-updates.blogspot.com/2005/06/new-copyright-royalty-board.html

NewsNet, the Copyright Office's electronic news service, will no longer distribute messages on Copyright Royalty Board matters. However, since the Copyright Office continues to have responsibility for various aspects of the compulsory licenses, including ongoing proceedings to establish rates for the cable andsatellite television licenses, NewsNet will continue to distribute messages relating to those Copyright Office activities.

The NewsNet archive is available at http://www.copyright.gov/newsnet/past_issues.html

Dispenser Block Insufficient to Support "Dispensing Means"

In Default Proof Credit Card System v. Home Depot (Fed. Cir. June 16, 2005) the court concluded that claim 1 of U.S. Patent No. 6,405,182 is invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, ¶ 2 because it did not disclose structure corresponding to the "means for dispensing at least one debit card."

According to the Federal Circuit, the only structure in the ’182 patent associated with the function of distributing debit cards was the "dispenser" shown in Figure 1 (above). The specification described the "dispenser" as "loaded with three or more stacks of debit cards with a digital storage number wherein a unique identifying serial number has been recorded." However, the specification also disclosed that the dispenser required some type of human intervention:

Important to this appeal, the specification teaches that the "[d]ispenser will [sic] the merchant or the entity or place selling the card, and an issuer will be the entity or financial institution issuing the card. Dispenser 40 is loaded with three or more stacks of debit cards with a digital storage number 46 wherein a unique identifying serial number has been recorded, and identifies [sic] 48."

The court noted that Default Proof did not argue that the term "dispenser" constitutes the structure corresponding to the dispensing means. Instead, Default Proof merely asserted that "certain specific parts" of the POS terminal correspond to the distributing function shown in Figure 2. But the court was not persuaded:

This argument fails for two reasons. First, the specification fails to clearly
link the POS terminal, or any part thereof, to the distributing function.
Second, the specification fails to describe any parts of the POS terminal
capable of dispensing debit cards. . .

Because the evidence intrinsic to the ’182 patent clearly establishes that the POS terminal does not constitute corresponding structure for the "means for dispensing," specific parts of the POS terminal also do not constitute such structure. Default Proof’s arguments that the structure corresponding to the "means for dispensing" can entail human (or "merchant") participation or a human being manually operating an apparatus, are equally misplaced. Given that a human being cannot constitute a "means," see In re Prater, 415 F.2d 1393, 1398 (CCPA 1969), Default Proof’s arguments merely beg the question of what structure the human being operates to perform the function of distributing the prepaid debit cards. . . .

The district court expressly considered Default Proof's expert's testimony in determining "whether a person of ordinary skill in the relevant art would understand that a corresponding structure [to the ‘means for dispensing’] is disclosed in the specification." Recognizing, however, that it is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent, the court chose not to rely on those portions of Gafford’s testimony that were either unsupported or contradicted by the express language of the written description. . . .

In sum, while it is true that the patentee need not disclose details of
structures well known in the art, the specification must nonetheless disclose some structure. Stated differently, the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification. Because the specification of the ’182 patent discloses no structure corresponding to the claimed function of the "means for dispensing," Default Proof cannot use the declaration of its expert to rewrite the patent’s specification. We thus hold claim 1 invalid as indefinite. As we have stated, "[t]he primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent, so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe."

Who's Suing Whom for I/P Infringement

The free "Who's Suing Whom: Patent, Trademark and Copyright Edition" website, sponsored by InterLingua translation services, allows users to search patent, trademark and copyright cases by court, state, case name, or date range.

Supreme Court to Review Rebuttable Presumption on Patent Tying

The U.S. Supreme Court today granted certiorari in Illinois Tool Works, Inc. v. Independent Ink, Inc., Supreme Court No. 04-1329, proceedings below sub nom Independent Ink, Inc. v. Illinois Tool Works, Inc., 396 F.3d 1342 (Dyk. J.) establishing a rebuttable presumption of market power from patent tying.

Bloggers' FAQs on Intellectual Property

The "Bloggers' FAQ on Intellectual Property" from the Electronic Frontier Foundation addresses issues that arise when you publish material created by others on your blog. Their goal is "to give you a basic roadmap to the legal issues you may confront as a blogger, to let you know you have rights, and to encourage you to blog freely with the knowledge that your legitimate speech is protected."

Quebec Proposes I/P Tax Credit

According to Me Julie Gauvreau at Goudreau Gage Dubuc in Montreal, the Quebec government announced in its last budget that it would provide tax credits for certain expenses related to intellectual property so as to improve the productivity of small manufacturing businesses.

The scope and limits of this financial support will be specified by regulations in months to come. However, documents filed with the budget reportedly indicate that the credit will apply to 40% of admissible expense for sprofessional and search fees associated with patent and intellectual property protection, up to a maximum of 50,000$ or 50% of all the expenses linked to a project.

USPTO Relaxes Claim Status Identification Requirements

On June 6, 2005, the U.S. Patent and Trademark Office published a pre-OG notice on "Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c)" announcing that the Office will now accept non-compliant amendments under 37 CFR 1.121(c) where the non-compliance is limited to: 1) the inclusion of text of a canceled claim, or a not entered claim, and 2) use of certain variations of status identifiers in a claim listing. The Office will also now accept claim listings that include the alternative status identifiers set forth below if the amendment otherwise complies with 37 CFR 1.121:

1. Original - Original Claim; and Originally Filed Claim
2. Currently amended - Presently amended; and Currently amended claim
3. Canceled - Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; and Deleted
4. Withdrawn - Withdrawn from consideration; Withdrawn – new; Withdrawn claim; and Withdrawn-currently amended
5. Previously presented - Previously amended; Previously added; Previously submitted; and Previously presented claim
6. New - Newly added; and New claim
7. Not entered - Not entered claim

Additionally, the Office may also accept other variations of the status identifiers provided in 37 CFR 1.121(c) when the examiner determines that the status identifier used by applicant clearly and accurately designates the status of the claim.

The Office revised the amendment practice set forth in 37 CFR 1.121 in a final rule that became effective July 30, 2003. See Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 Fed. Reg. 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197 (July 29, 2003). Although the revised amendment practice has been in effect for over 18 months, the Office is still receiving an unexpectedly high number of non-compliant amendments. Correction of the non-compliant items causes extra work for applicants, examiners and the Office’s Technical Support Staff, delays prosecution and increases pendency of applications. Upon review, the Office has determined that some of the requirements of 37 CFR 1.121 are not essential and that waiver of certain provisions of 37 CFR 1.121 will still allow an examiner to clearly understand exactly what amendments have been made in an Image File Wrapper application. The Office will propose changes to 37 CFR 1.121 consistent with this notice in a rule making in due course.

For the latest information on patent application amendment formatting go to http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm.

Copyright Ownership for Employee Creations

In the U.S., if a work is a "work made for hire," then the employer or other person for whom the work was prepared is the initial owner of the copyright unless there has been a written agreement to the contrary signed by both parties. Section 101 of the copyright law defines a work made for hire to include "a work prepared by an employee within the scope of his or her employment." However, if a work is created by an independent contractor (that is, someone who is not an employee under the general common law of agency), then such a work can be a work made for hire only if both of the following conditions are met: (1) it comes within one of the nine categories of works listed in Section 101 and (2) there is a written agreement between the parties specifying that the work is a work made for hire.

According to a recent article from the IPR HelpDesk, in most countries of the European Union, the employer becomes the owner of rights in works made by its employees in the performance of their duties. However, this should not be understood as meaning that the legal regime in the countries that follow that general rule is identical. Two basic regimes can be distinguished:

In the first one the employer becomes the initial owner of the employees'
intellectual creations - for example the UK law simply provides that the
employer is the first owner, subject to the agreement to the contrary. In the
second regime, characteristic for the civil law countries, the employer is
deemed to acquire copyright in the employees' creations by means of implied
contract terms. For example, the German law arrives at a comparable result (to
the UK law) stating that the employee retains author's rights provided nothing
else "transpires from the terms or nature of the work or service relationship",
thus leaving scope for implied terms in employment contract.

Needless to say, in controversial cases these subtle differences may
matter. In some countries (France, Italy, Belgium. Luxemburg, Portugal) the
employee remains the owner of copyright, even though the work has been created
in performance of the employees' job duties, which means that the employment
contract does not trigger the implied effect of copyright transfer. In France,
Italy and Luxembourg the employer may however acquire copyright in the creations of his/her employees, if the work in question is the so-called collective work,
i.e. a work made by several creators under the direction of another person
(including a corporate body). If the employer is the one directing the creation
process, he/she can be deemed to be the initial owner of copyright.

TGIF for Living up to Your Patential

Patential is the board game designed by patent attorney Richard Warburg that "illuminates the business of pharmaceutical development by taking players step-by-step through the process. An exciting and educational game board weaves players through the world of inventions, FDA approval and pharmaceutical sales."

Players collect money, gather up to three "invention cards," experience pitfalls related to the FDA approval process, and battle with other players over patent litigation and sales of intellectual property. The strategic race to $1 billion is one-of-its kind and is sure to educate and entertain for years.

Thank Goodness It's Friday (and I'm on vacation through June 20),

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

p.s. - Pharmaceutical clients can attach this article to a signed engagement letter and receive Patential at no charge. That's a $34.95 value in addition to all the intellectual property services that you need in order to live up to your potential.

USPTO Seminar on IP Protection in China

U.S. Under Secretary of Commerce for Intellectual Property Jon Dudas will lead a conference on “General IP Protection and Enforcement in China: Practical Information for Companies Doing Business in China” on Wednesday, June 15, 2005, in Dearborn, Michigan.

The event, sponsored by the Department of Commerce’s United States Patent and Trademark Office (USPTO), is part of government efforts to protect American businesses from falling victim to intellectual property theft—both domestically and abroad. Under Secretary Dudas will give the keynote luncheon address. During the one and one-half-day seminar, USPTO experts and other government and private sector specialists in China’s intellectual property-related laws and enforcement procedures will provide attendees with specific details and useful tips about protecting and enforcing their intellectual property rights in China.

Information on Lawyers Assistance Programs

In 1991, Johns Hopkins University in Baltimore interviewed 12,000 workers about depression. Lawyers ranked No. 1 on the list of occupations that were most depressed. While 3 percent to 9 percent of the population at any given time may experience depression, a quality-of-life survey conducted by the North Carolina Bar Association in 1991 reported that almost 26 percent of the bar's members exhibited symptoms of clinical depression. Almost 12 percent of them said they contemplated suicide at least once each month.

Other research by psychologist Andrew Benjamin showed that significant numbers of law students at the University of Arizona were psychologically healthy when they arrived, but within the first year developed major psychological distress that remained through law school and into the graduates’ careers. Anxiety, hostility, and depression ran eight to 15 times higher than in the general population.

For information and confidential help on addiction, depression & related issues by attorneys, for attorneys, judges, law students & law graduates go to http://www.lawyersassistance.org/

Currently, a lawyer assistance program or committee exists in every state, whereas slightly more than two decades ago, only 15 states had such programs. All of the 60 programs that responded to a 2001 ABA questionnaire reported that they served lawyers impaired by drug or alcohol problems. Most of them were also helping lawyers deal with stress and clinical depression, as well as disorders involving gambling, sex and eating.

US Says WIPO Harmonization Talks on "Indefinite Hold"

The failure of the World Intellectual Property Organization's Standing Committee on the Law of Patents ("SCP") to reach an agreement on its work plan for patent law harmonization "puts talks at WIPO on indefinite hold," the USPTO said in a press release on June 9, 2005. "The impasse also raises serious questions as to whether WIPO is even a viable forum for further meaningful patent discussions."

"We are very disappointed with the outcome of last week's Standing Committee meeting," noted Jon Dudas, Under Secretary of Commerce for Intellectual Property. Lois Boland, Director of the Office of International Relations at the U.S Patent and Trademark Office added that, "WIPO appears to be facing a serious identity crisis, underscoring the need to consider alternative approaches for achieving harmonization so that we can realize efficiencies and better patent quality worldwide. Our users have spoken in no uncertain terms about their need for progress in this area."

Last week's meeting of the SCP, which has been attempting to negotiate a Substantive Patent Law Treaty (SPLT) for years, began and ended with countries generally lined up along "North-South" (developed and developing country) lines.

USPTO Ending URAA Trasitional After Final Practice

The USPTO has reiterated that it is changing its final action practice for the Office action immediately following a submission under the URAA transitional limited examination procedure for any submission under 37 CFR 1.129(a) filed on or after June 8, 2005:

The next Office action following timely filingof a submission under 37 CFR 1.129(a) (and payment of the fee set forthin 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 disclosurestatement filed during the period set forth in 37 CFR 1.97(c) with thefee 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 CFR1.97(c) with the fee set forth in 37 CFR 1.17(p) (in view ofapplicant's payment of the fee set forth in 37 CFR 1.17(r)).

Patent Reform Legislation Update

According to the June 8, 2005 press release from Congressman Lamar Smith (R-TX), co-sponsor of HR 2795 - The Patent Reform Act of 2005, the proposed legislation

• Provides that the right to a patent will be awarded to the first inventor to file for a patent who provides an adequate disclosure for a claimed invention;
• Simplifies the process by which an applicant takes an oath governing the particulars of an invention and the identity of the rightful inventor;
• Deletes the “best modeâ€� requirement from §112 of the Patent Act, which lists certain “specificationsâ€� that an inventor must set forth in an application;
• Codifies the law related to inequitable conduct in connection with patent proceedings before the PTO;
• Clarifies the rights of an inventor to damages for patent infringement;
• Authorizes courts with jurisdiction over patent cases to grant injunctions in accordance with the principles of equity to prevent the violation of patent rights;
• Authorizes the PTO to limit by regulation the circumstances in which patent applicants may file a continuation and still be entitled to priority date of the parent application;
• Expands the 18 month publication feature to all applications;
• Creates a new post−grant opposition system; and
• Allows third-party submission of prior art within six months after the date of publication of the patent application.

In his Subcommittee Hearing Statement, Congressman Smith explained that "We intend to mark-up this bill by the end of the month. So it is incumbent upon the Subcommittee members, industry stakeholders, the PTO, and other interested parties to work hard and in good-faith between now and June 30th."

In other legislative news, the Senate Committee on the Judiciary Subcommittee on Intellectual Property has scheduled a hearing on "Patent Law Reform: Injunctions and Damages " for Tuesday, June 14, 2005 at 2:30 p.m. in Room 226 of the Dirksen Senate Office Building.

For the latest resources on patent reform legislation, check out J. Matthew Buchanan's "Promote The Progress" where he has already posted a copy of the Act.

Canadian Import Exclusion Procedures Criticized

According to Lisa Lerer writing for IP Law & Business on June 9, 2005, Canada has become a key stop on the counterfeit road from China to the United States. The country's lax border controls make it one of the easiest ways to get fake goods into North America.

The root of Canada's IP enforcement troubles is reported to be a complex and expensive seizure process. To stop goods at the border, IP holders need first to obtain a federal court order, a lengthy procedure that involves gathering evidence, going to court and winning a hearing -- all before the products enter the country. The Royal Canadian Mounted Police can also seize counterfeit goods at the border. However, in the past, when the Mounties received reports of counterfeits, the agency was too overwhelmed and underfunded to investigate.

O Canada, we stand on guard for thee. . .

USPTO Independent Inventors Conference

The 10th Annual Independent Inventors Conference, co-sponsored by the United States Patent and Trademark Office and the National Inventors Hall of Fame, will be held at the new USPTO campus in Alexandria, VA, August 12-13, 2005.

Experts in the fields of invention, marketing and intellectual property protection will join senior USPTO officials covering trademarks, copyrights, utility and design patents, provisional patent applications, invention promotion firms, searching, licensing and marketing. Participants will have an opportunity for one-on-one sessions with the experts, and there will be plenty of time for inventors to network.
The two days of information-packed workshops and presentations are designed for both novice and seasoned inventors.

The registration deadline is August 1, 2005.

WIPO Facing Mismanagement Complaints

In recent months, the World Intellectual property Organisation has been called upon to address a series of questions about the organisation’s financial and management practices that have come under scrutiny along with the United Nations at large. In addition, complaints have arisen about the way meetings of WIPO’s members are conducted and policies are developed.

Read more from Intellectual Property Watch. . . .

Beginner's Guide to Patent Powers of Attorney

A patent assignee becomes "of record" and may then conduct prosecution of a patent application by filing a statement in compliance with 37 CFR § 3.73(b) that is "signed by a party who is authorized to act on behalf of the assignee, e.g., an officer of the assignee." In this regard, the USPTO issued three new Patent Power of Attorney forms in April 2005

1. http://www.uspto.gov/web/forms/sb0080.pdf
2. http://www.uspto.gov/web/forms/sb0081_fill.pdf
3. http://www.uspto.gov/web/forms/sb0082_fill.pdf

Each requires the "SIGNATURE of Assignee of Record: The individual whose signature and title is supplied below is authorized to act on behalf of the assignee."

The first Form PTO/SB/80 one may be used by an assignee (e.g., a corporation) to give a Power of Attorney to registered practitioners (either by individual name(s) or to those registered practitioners who are associated with a customer number) for (all) applications assigned to the assignee, and individual patent application numbers are not indicated. After execution of a single form by the assignee, a copy of the executed PTO/SB/80 form, together with a statement under 37 CFR 3.73(b) (using, for example, a PTO/SB/96 form) which identifies one specific patent application (which may be executed by a practitioner if the practitioner is authorized to act on behalf of the assignee), may be filed in the one specific application to establish a power of attorney for the registered practitioner(s) in that specific application.

The advantage of the use of this PTO/SB/80 form is that an assignee only has to be asked to sign this one Power of Attorney to Prosecute Applications Before the USPTO form, as copies of it can then be used to establish the desired power of attorney in (all) the patent applications of the assignee. To establish a power of attorney in each of the individual applications of the assignee, the attorney(s) would file: 1) a copy of the one executed PTO/SB/80 form, and 2) an application specific statement under 37 CFR 3.73(b) (using, for example, a PTO/SB/96 form).

Restriction Practice Reform Must Address Disposal "Churning"

According to Professor Hall Wegner, a major reason for long patent application pendencies in certain areas at the U.S. Patent and Trademark Office is the high rate of "churning" by examiners:

Patent Examiners are forced to gain multiple disposals per invention by
coerced refilings of applications through, inter alia), (a) complex formalities
rejections taking many pages which are impossible to clear up without at least
one refilling; (b) forced narrowing of generic claims on pain of forcing an
appeal (thereby compelling patentees to file a "Vogel trailer" continuation to
gain true generic protection); and (c) otherwise unnecessary, disposal-based
restriction requirements. Until the PTO keys production requirements for
Examiners to actual net disposals of initial applications without the
gamesmanship of the refilings, there will be no significant decrease in the
horrific rate of churning patent applications. The proposed reform
of restriction practice is particularly meaningless in the absence reform of the
disposals system.

Material Alteration by Deletion at the TTAB

John Welch at The TTAB Blog discusses In re Space Adventures, Ltd. , Serial No. 76391912 (May 26, 2005) [not citable] where the Board affirmed a refusal to register the mark SPACE ADVENTURES & Design because the amended drawing submitted above is a material alteration of the mark as originally filed below.



HINT: New moons are not visible on Julian days.

WIPO Harmonization Talks Fail to Reach Consensus

The meeting of the Standing Committee on the Law of Patents (SCP) at the World Intellectual Property Organization WIPO, which has been attempting to negotiate a Substantive Patent Law Treaty (SPLT) for years, failed to reach a consensus last week. The meeting began and ended with two primary and differing proposals on the future of patent harmonisation at WIPO, and countries generally lined up along “North-South� (developed and developing country) lines. “This is a serious setback for the proponents of patent law harmonisation� because of the lack of agreement on how to proceed, one developing country official said afterward.

According to Intellectual Property Watch, the United States will now consider ways to move on harmonisation outside of WIPO. “The U.S. is disappointed that there was no agreement to move forward with substantive patent law harmonisation on prior art issues in WIPO,� said Brigid Quinn, deputy director at the office of public affairs of the U.S. Patent and Trademark Office. “We think that such an approach would benefit all countries by allowing them to rely more on examination work performed in other countries under common examination standards," she added. “The U.S. intends to pursue harmonisation of prior art issues within the group of developed countries, and will evaluate in the future whether an agreement may be possible in WIPO at some point.�

The official WIPO press release tried to cast a more-positive light on these events:

This meeting of the SCP was devoted solely to the consideration of options
for the future work of the Committee. Talks focussed on whether discussions
should be limited to six issues pursued in parallel processes (prior art, grace
period, novelty, inventive step, sufficiency of disclosure and genetic
resources) - whereby the first four would be considered in the SCP and the
latter two in the Intergovernmental Committee on Intellectual Property and
Genetic Resources, Traditional Knowledge and Folklore (IGC) - or whether the
draft SPLT should be discussed as a whole, and also include further issues,
inter alia, clauses on public interest flexibilities, transfer of technology and
the disclosure, in patent applications, of the source of genetic resources.
While delegations recognized the importance of the work of the SCP and
emphasized that the work on patent law harmonization should progress taking into
account the interests of all parties, they did not reach agreement as to the
modalities and scope of the future work of the Committee.

USPTO Issues Green Paper on Restriction Practice Reform

On June 3, 2005, the USPTO published its “Green Paper� describing and evaluating four options to reform restriction practice for patent applications including multiple independent inventions. Prior to considering the desirability of drafting proposed legislation in a “White Paper� on reforming restriction practice, the USPTO is seeking public comment on the Green Paper. To be ensured of consideration, written comments must be received on or before August 5, 2005.

The Green Paper concludes that only the first two of the following four options under consideartion are viable for implementation:

1. Current national restriction practice with an option to pay for the examination of additional invention(s) within the original application.
2. Modified PCT unity of invention standard with: 1) an additional requirement that the special technical/common feature comply with 35 U.S.C. § 112, 1st paragraph and 2) an option to pay for additional invention(s).
3. Three-tiered fee structure dependent upon the search burden associated with, and the presence of different patentability issues between, various inventions.
4. Independent and distinct standard (as opposed to independent or distinct).

Under "Option 1," the current 35 U.S.C. §121 "independent or distinct" standard for restriction would be retained and applicants would be given the option to request and pay for examination of up to 2 additional independent or distinct inventions beyond that which would be examined in the current practice. Applicants would also have the option to request and pay for examination of up to 10 species separately claimed, or claimed within a genus or Markush group, at an additional per species cost.

Under "Option 2," the current PCT "unity of invention" standard, modified to require that any purported special technical/common feature comply with 35 U.S.C. §112, 1st paragraph (in addition to being novel and non-obvious), would be applied to all US applications. Applicants would be given the option of concurrent examination of up to two additional inventions that lack unity of invention for an additional fee.

More specifially, the Green Paper concludes that

The first option of permitting applicant to request and pay for examination of additional inventions, while retaining the current restriction standard, would be significantly less difficult to implement than the remainder of the options. Its impacts are principally directed to staffing and fee revisions designed to maintain constant revenue. While this option, like all of the others, has a short-term negative impact on office-wide pendency, it is expected to introduce the least amount of uncertainty and negative impact on the overall patent system.

The second option of adopting the unity of invention standard, modified to require that the common feature satisfy the enablement and description requirements in addition to novelty and non-obviousness, is considered the second best alternative. However, adoption of this standard would include all of the impacts of the first option and a number of others. The second option would require additional initial training and subsequent monitoring of the examiners, as well as serious evaluation of each of the examination changes suggested in the original request for comment, to which the public was strongly opposed. This option is considered to have a somewhat higher degree of uncertainty and negative impact on the overall patent system relative to the first option; nevertheless it has significantly less impact relative to the third and fourth options.

The third (three-tier fee structure) and fourth ("independent and distinct" standard) options introduce even greater changes to the existing system that would produce a number of new, significant challenges, some of which may not be predictable. It is not at all clear that the transition to either of these two options would result in an improved system, and such a transition may even cause significant quality and pendency degradation. Transition to either the third or fourth option is not recommended without an effective pilot evaluation of their long-term impact. Given the initial results, the limited resources of the Office, and the anticipated implementation issues, continued consideration of either of these two options beyond that described in this paper is not recommended.

The development of the standards reflected in Options 3 and 4 highlights the difficulty in the formulation of any new standard. A new standard
should be both easy to understand and to implement; unfortunately, the standards
embodied in Options 3 and 4 proved to be neither. While Options 1 and 2 were
somewhat more promising, the results of the business case analysis indicate that
even these options do not satisfactorily achieve the desired balance.

Appropriate legislation would need to be enacted in the event a decision to
implement Options 1 or 2 is made. Implementation of Option 1 would not be viable
without a revision to the fees for search/examination, issue and maintenance.
Implementation of Option 2 would require revision to 35 U.S.C. 121 in addition
to the same fee revisions required to implement Option 1. Options 3 and 4
are not considered viable for implementation.

.XXX Domain Coming Soon

According to a June 3, 2005 article in the Washington Post, the Internet Corporation for Assigned Names and Numbers has approved a new "top-level domain" specifically for adult-oriented Web sites. The .xxx sponsored top-level domain ("sTLD") is intended to primarily serve the needs of the global responsible online adult-entertainment community. It will be managed in accordance with the bylaws of the International Foundation for Online Responsibility (IFFOR) and operated by ICM Registry. Look for the domain names to go on-line later this year (and watch for big-money fights over registrations for naughty words ending in .xxx . . .).

A Change in the Services Outsourcing Market?

According to a new report by Delloitte Consulting, the outsourcing of services requires a complex series of tradeoffs: cost savings versus growth, speed versus quality of service delivery, and maintaining organizational cohesion versus knowledge and innovation. They note that 70 percent of the participants have had negative outsourcing experiences and have either revised or are revising their outsourcing outlook, strategies, and tactics:

Vendors and organizations have inherently conflicting objectives, putting the latter’s
objective for innovation, cost savings, and quality at risk. Moreover, the vendors’ structural advantages do not always translate into cheaper, better, or faster services. The world’s largest companies should be able to replicate the vendors’ structural advantages in-house and rely on vendors only under specific circumstances, such as fixing deep-seated structural problems or maintaining infrastructure operations.

Outsourcing originated and became popular as a cost-saving strategy during a recessionary environment. The world’s largest organizations in this study are calling into question its efficacy in today’s economy. Companies should outsource only commodity functions to guard against a loss of knowledge and should plan for short-term outsourcing to prevent vendor dependency. Demanding transparency to costs,
negotiating for simplicity to eliminate hidden charges, and actively managing against service disruptions may improve the outsourcing experience for large companies…but in turn they also will increase the time needed to manage the complexity and
costs of these arrangements.

In the near future, with structural risks that cannot be fully mitigated, uncertain cost savings, and a multitude of components to manage (people, process, and knowledge), outsourcing will likely lose luster for large organizations.

Click here for more on legal services outsourcing.

Sample Tech Transfer Policies and Agreements

The Association of University Technology Managers offers an excellent collection of tech transfer policy and agreement forms at http://www.autm.net/aboutTT/aboutTT_policies.cfm

TGIF for Age and Great Invention

Using data on Nobel Prize winners and great inventors, Benjamin F. Jones has concluded that "the age at which noted innovations are produced has increased by approximately 6 years over the 20th Century." He also finds that "innovators are much less productive at younger ages, beginning to produce major ideas 8 years later at the end of the 20th Century than they did at the beginning. Furthermore, "the later start to the career is not compensated for by increasing productivity beyond early middle age" and "this drop in productivity is particularly acute if innovators' raw ability is greatest when young."

Get Jones' NBER Working Paper No. 11359 here. And for further reading, check out his theories on the rising burden of knowledge here.

Thank Goodness Its Friday (and we're all another week older),

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

Updates to Japanese Patent Examination Guidlines

On May 18, 2005, the Japan Patent Office released English-language updates to its "Examination Guidelines for Patent and Utility Model."

Competitive Intelligence Resources for Your Legal Desktop

Tom Mighell at Internet Legal Reserach Weekly writes that "the folks at the Justia Legal SEO Blog have put together a list of the 60 Essential Free Competitive Intelligence Resources for your Legal Desktop. There are separate pages for 1-11, 12-24, 25-39, 40-44, and 45-60. There are some good sites here -- make sure they're part of your Favorites."

A Low-Cost, Trademark Portfolio Management Policy

One approach to managing your trademark portfolio is based upon obtaining and maintaining federal trademark registrations for each brand family head in typed, stylized, and design forms, if any, in each country where you have a significant market share. The costs and benefits of federal trademark registrations are generally described "Basic Facts About Trademarks" from the U.S. Patent and Trademark Office. In order to minimize the cost of managing the trademark portfolio, you may also want to consider allowing registrations to expire for other, secondary marks, including those which are no longer in use. Once all of the registrations are issued for the current brand family, you will then be in a better position to use them properly and consistently with the "®" symbol. For secondary marks within the family, you can simply mark them with the "TM" symbol indicating unregistered "common law" trademark rights and retain specimens and dates of earliest use for those marks within the parameters of its document retention policy.

For all new words, phrases, or symbols that will be used in other than a merely descriptive sense, conducting a trademark clearance search is generally a good idea in order to determine the mark's availability for use. For marks that will be relatively easy to change if you are accused of trademark infringement, such as slogans used in publications with limited circulation, a quick and inexpensive "knockout" search of the U.S. trademark register and Internet search engines for closely similar marks may be all that is necessary. Knockout word searches can often be conducted via the Internet, often on the same day that they are requested. In contrast, knockout design mark searches are usually conducted by various service providers using the records at the USPTO's Trademark Search Library.

For marks that are going to be used more-extensively, such as for the introduction of a new product line, consider a more-comprehensive "full search" of U.S. trademark records along with "common law" trademark records for marks that are in use, but not registered. Because common law trademark records are not freely available on the Internet, the cost of full trademark search and report is roughly five to ten times greater than a knockout search.

For any new trademark applications, the identification of goods and services should be stated as broadly as possible while still allowing for possible narrowing of the "ID" during examination, if necessary. In this regard, the U.S. Patent and Trademark Office has published an "Acceptable Identification of Goods and Services Manual that contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney. Using identification language from the Manual enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods or services.

With respect to enforcing your trademark rights, for imported infringing goods, including counterfeits and gray market parallel imports, it is possible to obtain enforcement assistance from the U.S. Customs Service. The fee for recordation of the trademark with Customs is significantly less than engaging in litigation with importing infringers, and goods may be seized at the border before actual harm can occur in the U.S. marketplace. However, Customs will generally need to know where the goods are going to enter the U.S. in order to provide effective intervention.

With regard to Internet domain name registrations, consider obtaining domain names corresponding to each head of the brand family in at least the ".com" domain. Other defensive domain name registrations may also be worth considering for at least these names in other top-level domains, such as .net, .biz, and .info, and in each of the two-letter, top-level country code domains where your company has significant market share or plans for expansion. Internationalized domain names have also recently become available for non-ASCII characters, including Japanese and Chinese scripts. Top-level domain names that contain other formatives of your trademarks can also be searched at http://www.domainsurfer.com/.

From a domain name management perspective, some of your domain name registrations may have already been obtained by what appear to be "cybersquatters" with no interest in the underlying trademark corresponding to these names. Other of your registrations may have recently expired and been re-registered by what appear to be "cybersnatchers" looking for short-term, speculative profits from the resale of those registrations. In addition there are some domains names that are likely to be in legitimate use, but for which you may still be able to negotiate a purchase. There are various options for recovering, registering, and managing these domain name registrations.

For example, for domain name records that are expiring within one year, we have checked to see whether those names are available on the Internet Corporation for Assigned Names and Numbers' ("ICANN's") new wait-listing service that has been approved for implementation by Verisign in connection with ".com" and ".net" domains. Although this new service must still be approved by the U.S. Department of Commerce, Verisign is continuing to offer "Pre-Orders" for its "Next Registration Rights" service at $39 per year, per domain name. Only one backorder is allowed for each domain name and the current backorders are searchable by the public.

The wait-listing service was devised because it is often difficult to determine exactly when an expired domain name registration will "drop" and become available to the public. While monitoring and backorder services such as SnapNames, DomainsBot, and ExpiredTraffic are available, they are reported to be only about 70% successful. If, as some expect, the service is approved by the U.S. government, then the wait listed party will automatically receive a 1-year registration (included in the yearly subscription fee) only if the domain name becomes available during the subscription. Therefore, wait-listing may be an adequate short term procedure for cybersquatted registrations of less-important domain names.

Of course, cybersquatters can also check to see if their domain names have been placed on the wait list in order to determine whether there is sufficient interest in a particular name to justify renewing the registration. Other domain names may simply be too important to wait for their expiration. For these domains, it may be necessary to initiate a Uniform Domain Name Dispute Resolution Procedure ("UDRP") or file a lawsuit under the Anti-Cybersquatting Consumer Protection Act ("ACPA").

The UDRP is a mandatory arbitration procedure set forth in the contractual agreement between all registrants and their ICANN-accredited registrars. To prevail under the UDRP, the complainant trademark owner must generally establish that the they have trademark rights in the mark at issue, and that the domain name was registered and is being used in "bad faith." Transfer of the domain name to the prevailing party is the only available relief; monetary relief is not available. Filing and prosecuting a UDRP proceeding is relatively inexpensive because there is no discovery, briefing, or oral argument; and panels try to issue their rulings in about 45 to 60 days. However, a losing domain name registrant can "appeal" the panels decision by filing a declaratory judgment action at any point during the proceeding (or within 10 days of an unfavorable ruling) seeking a declaration of non-infringement.

ACPA lawsuits are aimed at people who register a domain name with the intention of taking financial advantage of another's trademark and generally apply to those who: (1) have a bad faith intent to profit from a domain name; (2) register, use or traffic in a domain name; and (3) that is identical, confusingly similar, or dilutive of certain trademarks. Since these lawsuits must generally be filed in the judicial district where domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located, they are not often used with foreign registrars. In fact, letters threatening such litigation often cause cybersquatters to move their registrations offshore where they are more difficult to track down. However, the ACPA provides for statutory damage awards between $1,000 and $100,000 per domain name, as well as forced transfer of the domain name. But, due to the nature of the judicial process in the U.S., they are generally slower and more expensive than UDRP proceedings.

In order to minimize the possibility of any further domain name losses, trademark owners should consider changing the administrative contact for all of their existing domain name registrations to a blind address in its corporate intellectual property department, such as Domain_Name_Administrator@yourcompany.com, and then have messages to that address forwarded to the current administrator. This arrangement may help to prevent loss of renewal rights when an e-mail address goes dead because an employee leaves the company. A trademark "abuse" email address and/or reporting hotline can also encourage customers and distributors to let you know about problems on the Internet.

Finally, trademark owners should consider transferring all of their domain names to a single registrar with automatic renewal and transfer prevention services. Various service providers, including MasterData Center (partnering with "MarkMonitor") and Verisign, also offer a smorgasbord of digital brand management services including domain name registration, recovery, automatic renewal, locking, synchronization of expiration dates, access portal software, and status reporting. Of course, most law firms can also provide similar services.

For more information on trademark portfolio management and auditing strategies, and other I/P management issues, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA or subscribe to the free "I/P Updates" news service at http://www.ip-updates.com/.

ASEAN IPR Capacity-Building Seminar

The International Intellectual Property Institute, the United States Patent and Trademark Office (USPTO) and the Association of Southeast Asian Nations (ASEAN) Secretariat with support from the Kenan Institute Asia are hosting a workshop dedicated to educating ASEAN government officials as to the benefits of IPRs and IP enforcement for domestic industries. The workshop is scheduled to take place June 28-29, 2005 in Bangkok, Thailand.

The audience for the event will consist of government officials responsible for intellectual property enforcement and domestic IP industry promotion from eight ASEAN nations and representatives of local ASEAN small and medium-sized businesses. Speakers include representatives from the USPTO, IIPI, the ASEAN Secretariat, the Kenan Institute Asia, US and Asian multinational companies and small and medium-sized businesses from ASEAN countries. Topics to be discussed include identifying and leveraging intellectual property rights as entrepreneurial assets, effective exploitation of IPRs, strategies for protecting IP, enforcement of IPRs: administrative, border, civil and criminal practices and procedures, franchising and licensing issues, brand management and protection issues, handling IPR issues in business transactions and national branding.

The Idiot's Guide to Patent Searching

Mary Russell Sarao provides a "Super Easy Guide to Step-By-Step Patent Searching Online!" at http://www.asktheinventors.com/Books/patentsearch.htm. She explains the four basic ways to do an online patent search at the USPTO website with data entry blocks inside her site.

But that's only part of the story. For a more advanced guide to patent searching, go to http://ip-updates.blogspot.com/2004/07/patent-searching-in-product.html

Introducing the I/P Updates Weekly Digest!

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