That is, for applications filed via the Office electronic filing system, a
sequence listing or a computer program listing is â€˜â€˜filed in an electronic medium as prescribed by the Directorâ€™â€™ for purposes of 35 U.S.C. 41(a)(1)(G) only if the listing is submitted in ASCII text as part of an associated file of the application. Thus, for example, sequence listings or computer program listings submitted via the Office
electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagg(ed) Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by Â§ 1.16(s) or Â§ 1.492(j).
updates for Monday, January 31, 2005
Deference to Trial Courts: Time for "Truth in Advertising?"
This is the classic "close case," so close in fact that ultimately two federal judges (one of whom conducted an entire bench trial on this issue) and the United States Patent and Trademark Office agreed with Merck & Co., and two federal judges agreed with Teva Pharmaceuticals. The United States District Court of Delaware tried this case from March 4 â€“ 7, 2003, then issued a 75-page opinion analyzing the claims and arguments in consummate and accurate detail. This court received the typical briefs from the parties, an appendix containing selected portions of the record, and heard a total of approximately thirty minutes of argument by the parties on the issues before this court. Despite the district courtâ€™s superior tools and time to evaluate the complete record, to hear and inquire from expert and fact witnesses, to delve into countless related details, to probe the scientific and semantic context, and to entertain argument as long as necessary for clarity, this court with its reading three briefs before its half-hour hearing becomes enamored with its own analysis of a very close issue and reverses the district court.
This court often hears criticism from district court judges that its reversal rate on claim construction issues far exceeds that of other circuit courts. In response, nearly every judge on this court has publicly professed to accord some level of deference to district courts regardless of this courtâ€™s de novo. Either the Federal Circuit accords deference in accordance with its public protestations or it does not in accordance with its legal standard barring any deference. If the former, this court has a "truth in advertising" problem. Its actual practice clashes with its professed legal duty. If the latter, this court has a different kind of "truth in advertising" problem.
In this case, this court eschews all deference, a particularly striking choice in the face of a very close case and a district court whose diligent and intelligent process and resolution earned more respect than it received. I am not entirely sure which aspect of the "truth in advertising" problem this case illustrates, but it certainly makes any
protestations of deference in fact sound rather hollow.
Perhaps the USPTO just needs more "bi-lingual" Examining Attorneys to enforce this portion of the Trademark Manual of Examining Procedures:
After all, if you believe that some marks are just too scandalous for registration, then how hard can it be to convince yourself that pig latin is really just a dead language?
While foreign words are generally translated into English for trademark comparison purposes under the doctrine of foreign equivalents, works from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English. The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent. Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead.
An earlier press release by the KIPO also noted that "Patent applications for multi-functional shoes are increasing, with the growing interest in health and safety. On January 13, the total number of patent and utility model applications for multi-functional shoes filed with KIPO from 1994 to 2003 is 363 cases: 36 cases in 2000, 62 cases in 2001, 77 cases in 2002, 81 cases in 2003. As for the type of shoes, applications for 'fatigue relief shoes with finger pressure, massage and fomenting functions' were 167 cases (46.0%), followed by 66 applications for 'temperature controlling shoes with an embedded thermostat'. There were 53 applications (14.6%) for shoes that increase amounts of exercise by heightening or shortening heels. Length controllable shoes and shoes with wireless transmission function for preventing missing children have been introduced as well."
The KIPO also said on January 10 that "typefaces are to have exclusive rights under â€˜Design protection law (previous design law)â€™ from July 2005; the law was announced the end of last year."
Please tell the Sultan that my firm is available at his convenience.
updates for Friday, January 28, 2005
ABSTRACT: "A greeting card is formed to have a pocket for receiving a test kit therein. In one embodiment of the present invention, the greeting card is a fiftieth birthday greeting card and the test kit is a fecal occult blood test kit. The pocket is formed to have a cutout portion for facilitating removal of the kit, and the text and graphics of the greeting card refer to and correspond to the type of kit contained in the pocket. In the example given, competent health authorities recommend use of fecal occult blood test kits annually beginning at age fifty."
CLAIM 5: "An article of manufacture comprising: an occasion greeting card with a pocket formed therein and a cutout portion formed in said pocket, said greeting card containing text and graphics; a kit carried within said pocket, said pocket dimensioned to receive said kit, said kit carrying health information, said text and said graphics corresponding to said occasion, said kit being a device for collecting samples of body fluids for testing."
CLAIM 7: "The article as recited in claim 5, wherein said greeting card is a fiftieth birthday greeting card."
Thank Goodness It's Friday,
--Bill Heinze (born January 27, 1961)
"This exploratory meeting will be an important step in getting substantive patent law harmonisation back on track," USPTO undersecretary and director Jon Dudas said in a statement earlier this month announcing the meetings scheduled for February 3 -4, 2005. "Harmonisation promises to bring substantial benefits such as consistent patent examination standards throughout the world, reduced patent office workloads and higher patent quality. The sooner we can agree on a basic framework, the sooner we can begin providing these benefits to all patents stakeholders â€“ patent applicants, patent offices and the public alike."
To that end, the official notice lists several sets of questions, organized by issue, in an effort to begin gathering relevant information. Commenters do not need to respond to all questions, but are encouraged to respond to those as to which they have particular knowledge or information. Commenters may also frame additional questions or reframe any of the issues, which are reproduced below.
- Nature of the Problems Faced by Subsequent Creators and Users
- Nature of â€œOrphan worksâ€�: Identification and Designation
- Nature of â€œOrphan Worksâ€�: Age
- Nature of â€œOrphan Worksâ€�: Publication Status
- Effect of a Work Being Designated â€œOrphanedâ€�
- International Implications
Click here for a "Video about the U.S. Copyright Office."
Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.
updates for Thursday, January 27, 2005
Patent Allowance Error Rates Were Up:
"While the USPTO fell short of its FY 2004 quality target, much of this is due to the intense focus on quality and the significant implementation of all the quality initiatives. The implemented quality initiatives are expected to produce long-term quality improvements as the knowledge, skills, and abilities of our employees are upgraded, helping us to achieve our quality goal."
Patent First Action Pendency Was Up:
"Target met. The initiatives identified in the USPTO 21st Century Strategic Plan will continue to reduce patent pendency, substantially cut the size of the work backlog, and recover our investments in people, processes, and technology."
Total Patent Pendancy Was Up:
"Target met. The initiatives identified in the USPTO 21st Century Strategic Plan will, over several years, reduce total patent pendency."
Trademark First Action Pendancy Was Up:
"Target not met. Although the trademark organization fully met and exceeded production output targets, new application filings drove first action pendency above target. New application filings were 11.7% above the prior year and 9.7% above target. Process changes introduced in the fourth quarter further contributed to the increase in first action pendency results. Current plans, assuming sufficient funding, are to hire additional examiners in FY 2005 to address the increase in filings which will improve first action pendency."
Total Trademark Pendancy Was Stable:
"Target met. Production and office disposals were above plan, which reduced disposal and registration pendency."
During fiscal year 2004, the USPTO granted 187,170 patents, including 169,296 utility (inventions), 16,533 design, and 998 plant patents. U.S. resident inventors received 97,913 U.S. patents in fiscal year 2004. California resident inventors received the highest share (23 percent, 22,389 patents) of these patents, followed by inventors from New York (7 percent, 6,788 patents), Texas (7 percent, 6,424 patents), Michigan (4 percent, 4,260 patents), and Massachusetts (4 percent, 4,109 patents).
The USPTO registered 155,991 trademarks and renewed 34,735 registrations in fiscal year 2004. At the end of the fiscal year, there were 1,216,691 active trademark registrations.
"A strong economy, a vibrant economy, depends directly on effective protection of new ideas and investments in innovation and creativity," said Under Secretary of Commerce for Intellectual Property Jon Dudas, in a press release accompanying the report. "The continuing demand for patents and trademarks underscores the ingenuity of American inventors and entrepreneurs."
Click here for a sample of the new certificate.
EPO Demand Prices Up 32% in Dollar Terms
- Record companies have digitised and licensed over a million songs. In 2004 the available catalogue on the biggest online services doubled from around 500,000 to around one million tracks
- The number of online services where consumers can buy music has increased four-fold to more than 230 worldwide â€“ and over 150 of those are in Europe
- Services like iTunes and Napster have become household names internationally â€“ but local repertoire services in many countries are also developing fast
- The digital download market is growing geometrically â€“ in 2004 downloaded tracks
rose more than ten-fold to over 200 million in the US, UK and Germany combined
- Record companies have seen their first year of significant revenues from digital sales â€“ from practically zero to several hundred million dollars. Jupiter thinks this will double in 2005.
- Digital sales could rise to as much as 25% of total sales in five years, according to some record companies and third party analysts
- Consumer attitudes are changing â€“ the latest IFPI European survey shows increasing awareness of, use of, and intentions to use, legal download services
"iTunes really competes with piracy, not with the other services. Piracy is the
big enemy. Buying music online legally is good karma."
"The Sgt. Schultz defense for Grokster doesn't work," added RIAA Chief Executive Mitch Bainwol at a press conference on Tuesday. "'See nothing, hear nothing,' doesn't apply."
The draw of potentially influencing the Supreme Court also reportedly led the Christian Coalition, the Concerned Women for America, Morality in Media and others, to write that the lower-court decision relieving file-swapping companies of legal liability could lead to a "proliferation of anonymous, decentralized, unfiltered and untraceable peer-to-peer networks that facilitate crimes against children and that frustrate law enforcement efforts to detect and investigate these crimes."
Yet another group of Internet companies (including CNET Networks, publisher of News.com where these quotes appeared on January 26, 2005) reportedly wrote that they did not approve of copyright infringement on the file-swapping networks but asked the court to retain the Sony decision because it had led to considerable technological innovation over the years.
The massive MGM v. Grokster briefs themselves are available here, via the IP News Blog.
The IP News Blog wants you to become a copyright mythbuster. Anyone having similarly curious copyright issues that need some debunking should send them along to firstname.lastname@example.org.
updates for Wednesday, January 26, 2005
According to a January 25, 2005 press release from Lux Research, U.S. states poured more than $400 million into nanotechnology research, facilities, and business incubation programs in 2004 -- on top of greater than $1 billion in federal government spending -- making nanotech the largest publicly-funded science initiative since the space race.
"Multiple stakeholders -- including state and local officials, federal representatives, large corporations, start-ups, investors, and universities -- have a vested interest in making nanotechnology efforts succeed," "Biotechnology created more than 400,000 jobs from 1979 to 1999," said Lux Research Managing Director F. Mark Modzelewski. "Nanotechnology promises a far greater economic impact because it can affect not just biologically derived products, but all manufactured goods. Also, it's not just new jobs that are at risk from nanotech; existing ones in industries impacted by nanoscale science are on the line as well."
With the advent of the 1988 E.U. Trademark Directive and a growing body of interpretive European Court of Justice (ECJ) case law, it is much easier than in the past to make a comparison of E.U. and U.S. trademark law, including anti-dilution law. While the anti-dilution provisions of Articles 4(4)(a) and 5(2) of the E.U. Directive are optional, in fact, every pre-2004 E.U. nation has adopted them in its domestic law. In the United States, since the enactment of the 1996 federal anti-dilution Act, in theory there is a uniform law consistent throughout the nation.
Click here for more from J. Thomas McCarthy, Senior Professor of Law at University of San Francisco, Founding Director of the McCarthy Institute of Intellectual Property and Technology Law, as well as the author of McCarthy on Trademarks & Unfair Competition.
On January 21, 2005, the WHO reported that "laboratory results have confirmed avian influenza infection (H5 virus subtype) in two brothers in the northern part of Viet Nam." There have been nine reported deaths from avian flu in Vietnam during the last three weeks. Scientists monitoring the disease have also reported the first case of avian flu passing from person to person.
Proper cooking destroys the H5N1 virus. In general, the WHO recommends that poultry should be cooked until all parts reach an internal temperature of 70oC. No cases of H5N1 infection have been linked to the consumption of thoroughly cooked poultry and egg products. Click here for "Basic Information About Avian Influenza (Bird Flu)" from the U.S. Center for Disease Control.
updates for Tuesday, January 25, 2005
EUPolitix.com reported on January 24, 2005, that although ministers had been set to approve the EU "Computer Implemented Inventions Directive" at a Brussels meeting on Monday, the legislation failed to make it as an "A-point" on the agenda of a council of agriculture ministers after continued opposition from Poland. MEPs on the parliamentâ€™s legal affairs committee will reportedly meet next week to decide whether to restart the legislative process.
- What is patentable
- Who can be an inventor
- Who owns the patent
- What can we find out about competitors ptents and patent applications
- What is the impact of my company's expansion on our patent portfolio
1. Hand Tools Free Hands (101 views)
2. Tool grinding machine for railway hand cars (92 views)
3. Foodstuff Collating System and Method (45 views)
To be negotiated
4. GOLF PUTTER HEAD (41 views)
5. Wine conservation (25 views)
To be negotiated
6. Fence Sprinkler System (24 views)
7. FoodstuffCollating System and Method (21 views)
To be negotiated
In addition to asking, "What would people buy if we offered it for sale?" theShe goes on to describe a few folks who have figured how to sell people what they want to buy in a way that is "much more public-spirited, and ultimately more profitable as well."
owners of intellectual property should also ask, "What could we give away that
would increase sales of what we sell?"
Has she been reading I/P Updates?
updates for Monday, January 24, 2005
1/8W+(D-d) 3/8xTQ MxNA
where W is weather, D is debt, d is money due on January's payday, T is the time since Christmas, Q is the period since the failure to quit a bad habit, M stands for general motivational levels, and NA is the need to take action and do something about it.The result reveals that January 24 is the most depressing day, coincidentally a Monday for 2005.
According to doctors, one of the best ways to beat the winter blues is to get plenty of exercise. As far as CORDIS Express is concerned, however, "the only way of making the most depressing day of the year any worse would be by adding jogging into the equation."
Peruvian Purple Potato and "Potatisplockning" by Carl Larsson
According to the January 21, 2005 issue of Bridges TradeBioRes, six indigenous communities from Peru reached "a ground breaking agreement" with the Lima-based International Potato Center over the native potato strains and associated traditional knowledge. The agreement requires signatories to ensure that the genetic resources and knowledge remain in the custody of the communities and "not become subject to intellectual property rights" in any form. "These indigenous people are against patents," said Alejandro Argumedo from the Association for Nature and Sustainable Development which helped to broker the deal. "Patents represent a model of property that does not fit into their worldview."
IPC scientists and local farmers will also work to "repatriate" potato varieties from the Center's collection of specimens, and conserve them in a "potato park" that produces about 700 varieties of potato. "Potatoes are important for us as food but also as a cultural symbol,â€� Argumedo also said. â€�We have co-evolved with potatoes. Peru gave the potato to the world, they are so important in marriage and religious ceremonies. They mean so much in Andean culture and iconography that goes back thousands of years." In fact, some see a niche market for history's most important vegetable as Peru's best path out of poverty.
Click here for a different worldview from "Global Potato News."
In the 2004 "Special 301 Report" released on May 3, 2004, fifteen trading partners, including Taiwan, were placed on the Priority Watch List and thirty four trading partners, including Poland, were placed on the Watch List. The Report highlighted a series of continued concerns regarding the lack of adequate protection and enforcement of intellectual property in Poland and Taiwan.
The Trade Act of 1974 requires the Office of the US Trade Representative to identify annually those countries that deny adequate and effective protection for IPR or deny fair and equitable market access for persons that rely on intellectual property protection. Countries are placed into a hierarchy of categories, with the ranking of Priority Foreign Country reserved for the worst situations: (1) Priority Foreign Country; (2) Section 306 monitoring; (3) Priority Watch List; or (4) Watch List.
In the most serious cases, countries identified as Priority Foreign Countries can be subjected to a Section 301 investigation and face the possible threat of trade sanctions. These are countries that fail to enter into good faith negotiations or make significant progress in bilateral or multilateral negotiations to provide adequate and effective protection of IPR. Currently, one country (Ukraine) is designated to be in this category and remains subject to $75 million in sanctions. Countries that were previously designated a Priority Foreign Country but entered into good-faith negotiations and/or are making progress are placed under Section 306 monitoring; currently the People's Republic of China and Paraguay fall into this category.
Placement of a trading partner on the Priority Watch List or Watch List indicates that particular problems exist in that country with respect to IPR protection, enforcement, or market access for persons relying on intellectual property. Although the Special 301 review occurs annually each April, out-of-cycle reviews may be conducted at any time to evaluate changes and developments in particular countries.
In one of the new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," Coenraad J. Visser writes with regard to patents in "Making Intellectual Property Laws Work for Traditional Knowledge" that:
- Countries should use the (optional) morality requirement in the TRIPS Agreement to refuse the registration of a patent where the invention to which the application relates has special cultural or spiritual significance for indigenous or local communities, or where the application is likely to be considered culturally offensive to such communities.
- Patent statutes should provide that where an applicant for the revocation of a patent for lack of prior informed consent can prove that the invention uses or derives from a genetic resource found within its territory, or from traditional ecological knowledge held by a local or indigenous community in it, it is presumed that the patentee has taken such resource or knowledge without the prior informed consent of the relevant indigenous or local community. Also, instead of revocation, patent statutes can allow the transfer of the patent to the successful applicant, effective from the filing date of the patent application.
- Patent statutes should state that prior use by a local community of an invention that utilizes such communityâ€™s traditional technical knowledge does not anticipate (or destroy the novelty of) such invention.
Careful drafting of IP laws can prevent many problems from developing. In addition, sui generis protective systems are available to provide more comprehensive protection and protection adapted to the specific needs of a country. However, legislators have to be aware of the fact that "overprotection" can be detrimental to other cultural, social, or economic interests. IPRs should not be understood as a fixed set of rules, but merely as a toolbox from which the adequate tools can be chosen and combined. Finally, cultural disintegration is also about social and economic opportunities. An intangible cultural asset will be preserved only if the lifestyle embodying these assets provides valuable economic prospects. Eventually, commercialization of certain aspects of intangible cultural property can contribute to the preservation of cultural heritage as a whole. IP laws can contribute such opportunities in a limited way, but countries have to consider a holistic approach that combines prohibitive action with support initiatives. Capacity building and promoting understanding on IP issues, especially within indigenous and local communities, have to be a further important component of that policy.
The Globe and Mail is reporting that the five-page brief states that "Canada is especially concerned that the uncertainty resulting from the panel's decision, with its potential for being applied in an inappropriately extraterritorial or discriminatory fashion, may have the further troubling effect of chilling innovation by Canadian companies operating in key industry sectors in Canada, particularly the high-technology sector." The also quote AndrÃ© Lemay, a deputy director of the of the Department of International Trade, as saying "This is something that we take very seriously. So in so doing we decided that this is definitely a case where we could prepare an amicus curia brief." Click here for more from the Globe and Mail.
"We're concerned about the potential implications the decision could have on cross-border electronic, e-commerce and telecommunications services . . . essentially we're seeking clarification," Mr. Lemay reportedly told Reuters. "This potential extraterritorial application of U.S. law makes it very difficult for Canada to just stand on the sidelines."
updates for Friday, January 21, 2005
The World Legal Information Institute (WorldLII) is a free, independent and non-profit global legal research facility developed collaboratively by the following Legal Information Institutes and other organisations.
Australasian Legal Information Institute (AustLII)Over 270 databases from 48 jurisdictions in 20 countries are included in the initial release of WorldLII. Databases of case-law, legislation, treaties, law reform reports, law journals, and other materials include
British and Irish Legal Information Institute (BAILII)
Canadian Legal Information Institute (CanLII)
Hong Kong Legal Information Institute (HKLII)
Legal Information Institute (Cornell) (LII (Cornell))
Pacific Islands Legal Information Institute (PacLII)
Wits University School of Law (Wits Law School)
Case Law Law
Domain Name Decisions
According to a January 1, 2005 report from GovExec.com, via Be Spacific,
The Office of Management and Budget is working with an interagency project office to launch the new and improved Regulations.gov Web site. For the first time, citizens will be able not only to comment on proposed regulations using the Internet - as they do now on the site - but also will have access to supporting agency documents, every public comment and rules that are already in place.The Regulations.gov website is "the central online rulemaking portal of the United States government." It enables you to search, view, and comment on proposed Federal regulations from approximately 160 Federal Departments and Agencies through a single Web site. Each entry provides a quick link to a comment form so that visitors can type in their comments and submit them to the appropriate Department or Agency. The consolidated site enables visitors to easily move from one regulation to the next. "By providing electronic access to open rulemaking actions, Regulations.gov gives citizens a greater opportunity to provide their views."
Regulations for which comments are due today are listed here.
updates for Thursday, January 20, 2005
The Office is also revising 37 CFR Â§ 2.87(b) to provide that where a new separate application is created from a request to divide out some, but not all, of the goods or services in a class, the applicant must pay the fee for dividing the application and the applicable application filing fee as set forth in Â§ 2.6(a)(1). Currently division requests can only be filed on paper, so the applicable filing fee will be $375.00 per class. However, in the future it will be possible to file a request to divide through TEAS, and at that point, if the request to divide is filed through TEAS, the TEAS application filing fee will apply.
Click here for current USPTO fee information.
U.S. Patent No. 5,589,984
1. A mirror assembly, comprising:
(a) a mirror lens having a reflective outer surface and a non-reflective rear surface, the mirror lens comprising a mirror body which terminates in an oval perimetral edge, the edge surrounds the reflective surface and the non-reflective surface of the
mirror lens, the mirror body being a substantially convex ellipsoid
having a major axis and a minor axis which intersects with the major axis, the major axis having a varying radius of curvature, which radius
decreases from the intersection with the minor axis to the perimetral edge.
In Rosco v. Mirror Lite (Fed. Cir. January 19, 2005; not citable as precedent), Rosco alleged that various prior art oval mirrors with a constant radius of curvature in combination with any number of non-oval prior art mirrors having a decreasing radius of curvature rendered claims 1, 2, 3, 6, 7, and 8 of the â€™984 patent obvious. However, Rosco pointed to no specific evidence of motivation to combine. The Federal Circuit concluded that
In the absence of such evidence, Rosco has not carried its burden of establishing obviousness by clear and convincing evidence. . . . The decision of the district court is reversed and the case is remanded for further proceedings solely on the issue of infringement, the determination of which should be made on the existing trial record.Good Luck with the Request for Reexamination, Rosco . . . .
"Technology, Law and Insurance"
& Communications Technology Law" http://api.ingentaconnect.com/content/carfax/cict/latest
"International Journal of Law and Information Technology" http://ijlit.oupjournals.org/rss/current.xml
Review of Law, Computers & Technology" http://api.ingentaconnect.com/content/carfax/cirl/latest
"Technology, Law and Insurance" http://api.ingentaconnect.com/content/routledg/rtli/latest
Create a feed for your journal here.
On November 30, 2004, the Association of University Technology ManagersÂ® announced the release of the summary report of the AUTM Licensing Survey: FY 2003. Now in its 13th year of publication, the AUTM Licensing SurveyTM is the most comprehensive report of its kind, providing quantitative information about licensing activities at U.S. and Canadian universities, hospitals and research institutions. A record number of institutions â€” 236 â€” contributed data for the 2003 survey, which for the first time is presented in two separate reports, one for U.S. institutions and one for Canadian. In overview, U.S. data from fiscal year 2003 shows:
- U.S. establishments continue to experience increased investment in areas such as research funding, up 10.1 percent compared with fiscal year 2002; and staffing levels, up 8.2 percent to an average 4.2 licensing FTEs per office.
- In fiscal year 2003, U.S. offices also experienced growth in invention disclosures, up 7.7 percent; patent applications, up 8.2 percent; and license income, up 5.5 percent since 2002.
- These results indicate slower growth than in past years, perhaps caused by difficult economic conditions or the maturing of the technology transfer field. These factors also may contribute to a decrease in the rate of new startups formed, down 6.7 percent since fiscal year 2002.
- Time Cut-Offs
- Attorney-Client Privilege Claims
- Work Product Immunity Claims
- Aggressive Document Retention Policies
- Aggresive Discovery Objections
- Bifurcation of Liability and Damages
- Joint Defense Agreements
- Protective Orders
- Cost-Sharing Orders
- Proper Forum Selection
- Thorough Initial Document Searches to Avoid Follow-Up Searches
- Avoiding Third-Party Requests
updates for Wednesday, January 19, 2005
The "ERA" Email RSS Aggregator is a free, centralised RSS aggregator which automatically emails updated content to subscribers. Once you have a free ERA account, you can subscribe to any RSS feed. ERA will then monitor those feeds and email you with any changes. It's still in its infancy, and undergoing testing. However, there's an email interface working now.
To use the ERA email interface, send an email to email@example.com containing one of the following commands. You can send more than one command in each email, but each command needs to be on its own line and ERA won't respond unless it gets a valid command. ERA identifies you by your email address, so you always need to send commands from the same email address. ERA also likes plain text emails; HTML emails and other formatted emails might not work properly. For most commands, ERA will then send you an ID number, which you send back to confirm the commands so that someone else can't impersonate you.
The ERA Email Interface Commands
(Note: the stuff in brackets should be replaced by real URLs, usernames, etc. The brackets themselves shouldn't be in commands.)
- account [username]
Creates a new ERA account where
[username] is the username for your account that will be used once the web interface is functional
- subscribe [url] [hour, hour, ...]
Subscribes to an RSS feed where
[url] is the Uniform Resource Locator of the feed you want to subscribe to, and
[hour] is the list of hour(s) between 0 and 23 when you want to be emailed. If you don't specify any hours, you'll get mailed every hour. For example, after establisng an account (see above) the following command will cause you to receive daily I/P Updates at 6:00 am and 6:00 pm GMT:
To alter your subscription times, just send another subscription request with the new times - these will over-write your old times.
subscribe http://www.2rss.com/atom2rss.php?atom=http%3A//ip-updates.blogspot.com/atom.xml 6, 18
Returns an e-mail message with a list of feeds that you're subscribed to (no confirmation required)
Returns an e-mail message with descriptions of these commands (no confirmation required)
Here is a sample of today's ERA on I/P Updates, best viewed with your browser encoding set to Unicode (UTF-8):
Subject: I/P Updates (07:00-06:00)
To: William F. Heinze
Date: Wed, 19 Jan 2005 06:22:32 +0000 (GMT)
Where in the World is WIPO's Newest Member?
Union des Comores - Udzima wa Komori - Ø§Ù„Ø§ØªØØ§Ø¯ Ø§Ù„Ù‚Ù…Ø±
On January 3, 2005, the Director General of the World Intellectual Property Organization (WIPO) presented his compliments to the Minister for Foreign Affairs and had the honor to notify him of the deposit by the Government of the Union of the Comoros of its instrument of accession to the Convention Establishing the World Intellectual
First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00
The Economic Development Dimensions of IP
In "Intellectual Property Research and Development Lessons from Recent Economic Research," editors Carsten Fink and Keith E. Maskus conclude that developing countries should carefully assess whether the economic benefits of additional rules
for the protection of IPRs outweigh their costs. In their view, these costs encompass both the net fiscal expenditure of financing relevant government agencies
First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00
Off Patent, Open Source Model for Curing Tropical Disease
According to a January 16, 2005 article from Science Daily, Stephen Maurer, Arti Rai, and Andrej Sali have developed an open source model for curing tropical diseases called the "Tropical Disease Initiative." "As with current software collaborations, we propose a website where volunteers could search and annotate shared databases. Individual pages would host tasks such as searching for
First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00
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On January 3, 2005, the Director General of the World Intellectual Property Organization (WIPO) presented his compliments to the Minister for Foreign Affairs and had the honor to notify him of the deposit by the Government of the Union of the Comoros of its instrument of accession to the Convention Establishing the World Intellectual Property Organization.
Comoros is one of the poorest countries in the world, with a gross domestic product of $441 million (2002 est.) that is roughly equal to the yearly budget of WIPO. This small group of islands in the Indian Ocean is perhaps best known for the Coelacanth fish, once thought by western scientists to have been extinct for millions of years.
Over the centuries, the islands were invaded by a succession of diverse groups from the coast of Africa, the Persian Gulf, Indonesia, and Madagascar. Portuguese explorers visited the archipelago in 1505. "Shirazi" Arab migrants introduced Islam at about the same time. Between 1841 and 1912, France established colonial rule over Grande Comore, Anjouan, Mayotte, and Moheli and placed the islands under the administration of the governor general of Madagascar. Later, French settlers, French-owned companies, and wealthy Arab merchants established a plantation-based economy that now uses about one-third of the land for export crops. After World War II, the islands became a French overseas territory and were represented in France's National Assembly.
Internal political autonomy was granted in 1961. Agreement was reached with France in 1973 for Comoros to become independent in 1978. On July 6, 1975, however, the Comorian parliament passed a resolution declaring unilateral independence. The deputies of Mayotte abstained. As a result, the Comorian Government has effective control over only Grande Comore, Anjouan, and Moheli. Mayotte remains under French administration.
The political situation in Comoros has been extremely fluid since the country's independence in 1975, subject to the volatility of coups and political insurrection. Colonel Azali seized power in a bloodless coup in April 1999, overthrowing interim President Tadjiddine Ben Said Massounde, who himself had held the office since the death of democratically elected President Mohamed Taki Abdoulkarim in November 1998. In May 1999, Azali decreed a constitution that gave him both executive and legislative powers. Bowing somewhat to international criticism, Azali appointed a civilian Prime Minister, Bainrifi Tarmidi, in December 1999; however, Azali retained the mantle of head of state and army commander. In December 2000, Azali named a new civilian Prime Minister, Hamada Madi, and formed a new civilian cabinet.
When Azali took power he had pledged to step down in 2000 and relinquish control to a democratically elected president. Instead, in 2001, Azali resigned from the military and ran as a civilian candidate for the national presidency. He was elected in 2002 in flawed but fair elections. General elections were held in 2004, when Azali suffered a major setback by only winning 6 of the 18 seats in the National assembly, the other going to the supporters of the presidents of the semi-autonomous islands.
The Comorians inhabiting Grande Comore, Anjouan, and Moheli (86% of the population) share African-Arab origins. Islam is the dominant religion, and Koranic schools for children reinforce its influence. Although Arab culture is firmly established throughout the archipelago, a substantial minority of the citizens of Mayotte (the Mahorais) are Catholic and have been strongly influenced by French culture. About 57% of the population is literate with latin letters, more with arabian letters.
Although French , Arabic and malagasy are spoken, the most common language is Shikomor, a Swahili dialect. It is a close relative of Swahili with a very strong Arabic influence, and is one of the three official languages, next to French and Arabic. Each island has a slightly different dialect; that of Anjouan is called Shindzuani, that of Mohel Shimwali, that of Maore Shimaore, and that of Grand Comoro Shingadzija. No official alphabet existed in 1992, but Arabic and Latin scripts were both used. It is also the language of Udzima wa ya Masiwa, the national anthem of the moon islands ("al-qamar" is Arabic for "moon").
A Comorian style of Zanzibar's "taarab" music, called "twarab," is popular on the islands. Leading twarab bands include Sambeco and Belle LumiÃ¨re, as well as star singer Mohammed Hassan. Comorian instruments include the 'ud and violin, the most frequent accompaniment for twarab, as well as gabusi (a type of lute) and ndzendze. Sega music from nearby Mauritius and RÃ©union islands is also popular. Modern musicians like Abou Chihabi, who composed the Comorian national anthem and is known for his reggae-tinged pan-African variet music, and reggae/zouk/soukous fusionists like Maalesh and Salim Ali Amir.
Click here for a music sample.
The economic research presented in their book also suggests that there is an important development dimension to the protection of IPRs:
At the same time, in view of the various tradeoffs associated with alternative IPR standards, a "one size fits all" approach is unlikely to work. Developing countries may want to opt for different standards of protection than the ones that prevail in high income countries that have different technological and financial capabilities. Although the current international framework for the protection of intellectual property provides for some degree of harmonization of global IPR standards, TRIPS, in particular, still leaves important room to adjust IPR norms to domestic needs.
â€œCountries that sharply strengthen their IPR regime are unlikely to experience sudden boosts in inward Foreign Direct Investment,â€� says Maskus. â€œThey would be better advised to improve overall investment climate and business infrastructure.â€�
On the other hand, several studies in the book point to a significant development dimension to the protection of intellectual property. Interviews with firm managers in China show the negative effect of weak trademark protection on innovative Chinese enterprises. â€œInterestingly, there are strong regional disparities in the enforcements of IPRsâ€�, says Maskus, â€œwith the effect that firms are reluctant to expand into Chinaâ€™s poorer regions, where enforcement is comparatively weak.â€�
According to a January 16, 2005 article from Science Daily, Stephen Maurer, Arti Rai, and Andrej Sali have developed an open source model for curing tropical diseases called the "Tropical Disease Initiative."
"As with current software collaborations, we propose a website where volunteersThe key to TDI's success, they argue, is that any discovery would be off patent.
could search and annotate shared databases. Individual pages would host tasks
such as searching for new targets, finding chemicals to attack known targets,
and posting data from related chemistry and biology experiments. Volunteers
could use chat rooms and bulletin boards to announce discoveries and debate
future research directions. Over time, the most dedicated and proficient
volunteers would become leaders."
updates for Tuesday, January 18, 2005
"We need a new start for the software patents directive," Austrian Green MEP Eva Lichtenberger reportedly said. "The situation in Council is so confused that Parliament must again take the issue into its hands."
The Intellectual Property Owner's Association has issued a "Call for Nominations" for the 32nd annual National Inventor of the Year Award. To be eligible for the award, an invention (1) must have been patented or commercialized in the past four years, (2) must be patented in the U.S, and (3) must have originated in the U.S.
Nominations are invited from all interested persons BY THE DEADLINE OF MARCH 24.
Some corporations, such as General Electric Co., have set up offices in India to handle some of their legal work. Many others are using Indian law firms or technical shops that specialize in patent work. Some of the most prominent outfits include Evalueserve Inc. and IP Pro Inc., which draft patent applications, and Intellevate LLC, which does prior art searches, illustrations and proofreading of issued patents.
Click here for a less conventional way to publicize your mark.
Dissatisfaction All-Around on $6M Settlement for Japanese Blue LED Inventor
"I had no choice but to reach a court-arranged settlement. I am furious," said Shuji Nakamura, a professor at University of California at Santa Barbara, at a press conference on Wednesday regarding his settlement with his former employer over Japanese inventors rights to the blue light-emitting diode (LED). After the Tokyo District Court ordered his former employer, Nichia Corp., to pay him 20 billion yen as a reward for his invention, the Tokyo High Court set the settlement amount at some 608 million yen plus interest. "(Judges) proposed an ungrounded amount and told me to sign a settlement. I think that Japan's judicial system is corrupt," reportedly said Mr. Nakamure.
"The profits that Nakamura has generated for the company, I believe, are much higher (than he is set to receive). I have the impression that the court restricted the amount to avoid adversely affecting corporate activities," said Hidetoshi Masunaga, chief lawyer for the plaintiff.
University of Tokyo Professor Emeritus Hajime Nishimura said the settlement represents total defeat for Prof. Nakamura. "I estimate that Prof. Nakamura should receive 7 billion yen for the invention. If the company had agreed to pay 5 billion yen, it could be called a compromise, but the agreement represents a complete loss for the inventor," he said. "If Nakamura had shown an objective basis for calculating the amount of compensation, he would certainly have won the appeal trial. It's really regrettable."
"The reward amounting to 608.57 million yen is too high and we aren't satisfied with it. However, we chose to accept it to quickly settle the dispute with Mr. Nakamura and concentrate on our business activities," Nichia said in a statement. "Researchers interested in their work find pleasures in the fruits. I don't think many researchers gauge their inventions in financial terms."
The Japan Intellectual Property Association, of which about 1,000 companies are members, claims that the amount to be paid to Nakamura through the settlement is still too high. "It's still extraordinarily high as a reward for an invention that an individual made as part of his job working for an organization," said Hideo Doi, secretary-general of the association. "If the figure is taken for granted, it'll cause trouble in the industry."
A blue LED consists of a two-sided crystal such that the "sides" represent an n-type and a p-type semiconductor. The n-type conducts electrons, and the p-type conducts holes, which are the absence of electrons. The electrons flow along in one direction, and the holes in the other. The place in the crystal where the electrons fall into or are injected into the holes is called the junction, and that is where the photons--the particles of light--are emitted.
What Nakamura did was to figure out how to grow the crystal so that it would have the n and p semiconductor structure that would create "quantum wells" for the electrons at the junction. One key thing he did to create the wells was to add indium to the gallium nitride crystal. Without the indium, the gallium nitride crystal produces a higher frequency ultraviolet light, which is not visible. The addition of indium results in lowering the frequency of the emitted photons to visible blue, but the indium also creates the quantum well effect, so that electrons falling into the passing holes first fall into the well and therefore collect en mass before being injected into the holes. That massing in the well creates a more vigorous injection.
The development community needs to embrace the new challenge of uncovering the most effective ways in which to develop IP exports for maximum impact on poverty alleviation. The products exist and can be stimulated. The markets exist. The IP laws, although somewhat disadvantageous to developing countries, are available for enforcement in the developed markets. Fair trade interventions offer the needed model for market access and delivery systems that ensure that revenues from IP exports do alleviate poverty.
updates for Monday, January 17, 2005
by Guest Blogger, Chris Guinn
If I told you that a 19-year-old Harvard student is being sued by Apple Computer, Inc., you might think the case has to do with illegal music swapping using Apple's iTunes service. But, you might be surprised to learn that, instead, Apple is suing one of their biggest supporters for generating a little too much buzz about Apple's upcoming products.
The on-line edition of The Harvard Crimson reports that Nicholas M. Ciarelli, who has run the Think Secret web site since he was 13 years old, is apparently a party to a complaint filed by Apple Computer, Inc. in the Superior Court of California, County of Santa Clara last Tuesday. Apparently, Apple previously sent Ciarelli a letter ordering that the Think Secret website stop publishing Apple's trade secrets. For example, Think Secret recently published plans about the newest model to the Macintosh lineup, the Mac mini, more than two weeks before Apple publicly announced (with much fanfare) at the MacWorld Expo on January 11, 2005.
Apple apparently alleges that the Think Secret website includes solictitations for employees, and others under non-disclosure agreements, to anonymously disclose information which Apple considers confidential.
This case touches a number of legal issues, including the misappropriation of trade secrets and the ability for a reporter to keep sources confidential. For attorneys looking to hone their skills in these areas, Ciarelli is apparently still looking for counsel. Or you can just join the debate here.
Contact Chris via Chris.Guinn@tkhr.com
However, a new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," explores the "other side" -- the ground that TRIPS left uncharted -- by highlighting the knowledge that poor people can commercialize. According to the introduction, this book aims to expand the international discourse by:
- Calling attention to a broader range of knowledge that has commercial potential
in developing countries.
- Bringing an economic dimension into the discussion of traditional knowledge, where legal analysis has thus far been at the forefront.
- Bringing out the incentives for and concerns of poor people--which may be different from those of corporate research, Northern nongovernmental organizations (NGOs), or already successful entertainment stars.
- Demonstrating that the best answer is sometimes a commercial one, for example, providing musicians basic training in small business management or reform of regulations that burden small businesses, rather than obtaining formal patent or copyright protection.
- Calling attention to the many income-earning (rather than the income-using) dimensions of culture--to dispel the notion that culture and commerce are necessarily in opposition.
- Bringing out instances in which more or less standard legal approaches have been effective as an antidote to the general sense of conflict between traditional knowledge and normal legal conceptions so as to identify the problems in which legal innovationâ€”beyond diligent application--is really needed.
- Imbuing into the discourse a sense of the legal and commercial tasks needed to solve a developmental problem--away from â€œknowledgeâ€� as an isolated legal issue.
In Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1110-11 (Fed. Cir. 2001), the Federal Circuit held that only those disposable cameras (known as lens fitted film packages or "LFFPs," above) that were "sold under" Fuji's United States patent qualified for the repair exclusion to patent infringement under the "first-sale" exhaustion doctrine:
To invoke the protection of the first sale doctrine, the authorized first saleIn a parallel district court litigation, the lower court used this direction to hold that Jazz's importation, sale, and use of over forty million refurbished disposable cameras directly infringed Fuji's family of U.S. patents, and awarded total damages to Fuji in the amount of $29,765,280.60. Then, on January 14, 2005, the Federal Circuit affirmed that amount in Fuji Photo Film Co., LTD. v. Jazz Photo Corp., et al. noting that Jazz did not escape application of the exhaustion principle because Fuji or its licensees authorized the international first sale of some of the LFFPs:
must have occurred under the United States patent . . . . Our decision applies
only to LFFPs for which the United States patent right has been exhausted by
first sale in the United States. Imported LFFPs of solely foreign provenance are
not immunized from infringement of United States patents by the nature of their
Jazz also tried to argue that the district court's application of the this part of the exhaustion doctrine should have only prospective effect because the Federal Circuit's explanation decided a matter of first impression that was not clearly foreshadowed. However, the Federal Circuit concluded that it did not need to reach the merits of this "prospective effect" contention because Jazz had waived this argument by failing to raise it in a form that requested or required a decision from the district court.
[T]his court does not read the above language to limit the exhaustion principle to unauthorized sales. The patentee's authorization of an international first sale does not affect exhaustion of that patentee's rights in the United States. Jazz therefore does not escape application of the exhaustion principle because Fuji or its licensees authorized the international first sales of these LFFPs. The patentee's authorization of an international first sale does not affect exhaustion of that patentee's rights in the United States. Moreover, the "solely foreign provenance" language does not negate the exhaustion doctrine when either the patentee or its licensee sells the patented article abroad.
Read in full context, this court in [its previous decision] stated that only LFFPs sold within the United States under a United States patent qualify for the repair defense under the exhaustion doctrine. Moreover, Fuji's foreign sales can never occur under a United States patent because the United States patent system does not provide for extraterritorial effect. In [the previous decision], therefore, this court expressly limited first sales under the exhaustion doctrine to those occurring within the United States. Accordingly, the district court correctly applied this court's exhaustion precedent.
Jazz contends that it preserved this issue for appeal by moving for a stay pending
appeal: "It seems unlikely - and certainly unfair - that the Federal Circuit
could have intended [the 'exhaustion by first sale' issue], which was not even
raised by Fuji in the ITC or the Federal Circuit, to result in a holding with
devastating retroactive effect." A few phrases in a stay motion, however, are
not sufficient to apprise the district court that it must address another point
of law. Indeed, the district court in its extensive opinion did not address the
retroactive effect of the Jazz exhaustion doctrine. This court observes that the
district court provided a well reasoned and thorough analysis on a multitude of
important issues in this case. The absence of any discussion of retroactivity
strongly suggests that Jazz did not bring this issue to the trial court's
attention in a manner that requested or required analysis. The exhaustive
historical review of the repair/reconstruction doctrine is but one example of
the district court's special care to resolve issues presented by the parties.
Accordingly, this court declines Jazz's invitation to consider its retroactive
effect argument for the first time on appeal.