USPTO Announces New Reexamination Unit

In a press release issued on July 29, 2005, the United States Patent and Trademark Office (USPTO) announced that it has implemented a new process for handling reexamination proceedings. Under the new policy, "The USPTO's goal is that reexaminations that have been pending with an examiner more than two years now will be resolved by October 1, 2005. In addition, all future reexamination proceedings will be completed within a specific timeframe, which is expected to be less than two years."

More specifically, however, all reexaminations have been reassigned to a central reexamination unit, except for those where an initial decision has been made which will remain with the examiner originally assigned to the reexamination. The new, 20-examiner unit began operation earlier this week and is also receiving all new requests for reexamination. Prior to the new initiative, reexamination cases were assigned to examiners according to technology, and often went back to the same examiner that originally allowed the claims under reexamination. The USPTO hopes that using dedicated examiners who are assigned to the same unit will enhance the quality and reduce the time of reexaminations by allowing the USPTO to monitor reexamination operations more effectively.

In March 2005 there were over 420 reexaminations that had been pending more than two years and that number would have grown to over 600 by the end of September 2005. The announcement did not address whether reexaminations filed by a losing party (or their strawman) after a full trial on the merits would receive any special treatment.

TGIF for the Anonymous Patent Examiner Blog

Here are just some of the excellent insights from the "Just a Patent Examiner Blog."

On July 11, 2005 regarding "Motivation to Combine:"

. . . for a good paper on the myriad court decisions related to motivation, see Harold R. Brown III’s “Finding Motivation, Teaching or Suggestion in the Prior Art” in the October 2004 Journal of the Patent and Trademark Office Society . . . .

If you want the average examiner’s eyes to glaze over (or me to disregard your arguments), put 4 pages of arguments citing 10 different pieces of case law regarding the motivation to combine. I simply don’t have the time to research all of the case law you've cited to figure out which applies and which does not. I don't mind seeing responses like that, because suddenly I find that what I thought was a 6 page response consists of only two pages that actually need to be responded to.

If an attorney wants me to seriously consider their arguments that my motivation is no good, they need to pick one piece of case law, and please, tell me why it applies to the particular circumstances of this application. Then I’ll be happy to consider the arguments.

Please, only one piece of case law at a time. [Read the comments here.]

On July 20, 2005 regarding "The One-Hand Rule:"

Physics has the right-hand rule.

Patent examination has the one-hand rule.

The rule, as I've heard it stated, says that if a claim is longer than the length of the examiner's hand, it's allowable. I've heard it more than once, from more than one examiner. The thing is, it's a complete fallacy. I know of not a single examiner, not even the ones from whom I've heard it, who actually subscribe to it. . . .

An attorney filed an RCE, and canceled all of the 30-some claims except for
a few independent claims, into which they incorporated all of the dependent
limitations. The remaining independent claims were roughly analogous, and were
each about two pages long. The thing was, though, that they had failed to
incorporate anything new; all they did was incorporate existing limitations.
Sure, the claims were long, and they included a whole lot of limitations, but
they were the same limitations that I'd already previously rejected. In that
case, the attorney made it easy on me. All I had to do to was to combine the
rejections that I'd already written.

on May 10, 2005 regarding "Patent Examination vs. Patent Prosecution:"

Why am I not in law school?

As I said, when I had been at the Office for two years and was eligible to apply, I really didn't feel the need. First of all, attending law school at night while working a full-time job (especially one as demanding as patent examining) would certainly be no picnic. And you're stuck doing it for FOUR YEARS.

OK, suppose I finish law school and now I have my law degree. I could waive into the patent bar, having already worked at the Office for at least 4 years, so I'd be free to leave (after working off the debt to the Office) and go work in private practice. Instead of sending out the rejections, I'd be writing the applications and sending in the amendments.

Well, to be perfectly blunt, I'd rather be doing what I'm doing now. Yes, I make less money. But I get to work semi-normal hours with a semblance of a life away from work. But the real deciding factor is that I like the idea of working to protect the public interest, preventing crappy patents from issuing, rather than to having to try to get some examiner to issue my crappy patent because that's what my client is paying me to do. That's the bottom line.

I could always go to law school, get the degree and stay at the Office. It would certainly allow me to do my job better, and would open up options for jobs here at the Office that require a law degree. Maybe one of these days I'll decide that I want to do it. But not yet. I like what I'm doing. So, for now, I'm content to remain Just a Patent Examiner.

With a truly noble calling, no less.

Thank Goodness It's Friday (and hopefully the end of the Examiner's bi-week),

--Bill Heinze

Free Spyware/Adware and Junk Removal Tools

According to an October 2004 study by America Online and the National Cyber-Security Alliance, 80% of surveyed users' computers had some form of "spyware," with an average of 93 spyware components per computer. 89% of surveyed users with spyware reported that they did not know of its presence, and 95% reported that they had not given permission for it to be installed.

Your PC may well be similarly infested. But, don't panic. You can get free spyware/adware removal tools via ZDNet here and read PC Magazine's 2003 review of spyware removal tools here.

Once you get rid of the spyware, you can also get rid of all the other junk with CCleaner, and then obliterate what was left behind with Eraser.

BusinessWeek on Brand Equity

The July 27, 2005 issue of BusinessWeek Online has a section on Brand Equity Innovation and Design. They offer this advice for Creating an Effective Brand: "First, make sure your business fundamentals, product platform, and value proposition are well in place. Without that, branding won't help."

Control and Customer Awareness Critical to Experimental Use Exception

In order for a patent claim to be held invalid under the on-sale bar of 35 USC §102(b), the claimed invention must be (1) the subject of a commercial sale and (2) ready for patenting. In Electromotive Division of General Motors Corp. v. Transportation Systems Division of General Electric Co., et al. (Fed. Cir. July 27, 2005), there was no question as to whether EMD's bearing inventions were "ready for patenting" at the time of the alleged commercial sales. Thus, the relevant inquiry concerned only the first prong of the Pfaff test, and, in particular, "whether the circumstances surrounding a pre-critical date sale objectively show that it was primarily made for experimentation."

The court began by discussing its non-exclusive list of thirteen objective factors relevant to determining whether pre-critical date activities involving the patented invention --either publlic use or sale– were primarily experimental, and therefore not commercial. See Allen Eng’g, 299 F.3d at 1353 (citing EZ Dock, 276 F.3d at 1357 (J. Linn, concurring)). It then went on to "hold not only that customer awareness is among the experimentation factors, but also that it is critical" and to "conclude that control and customer awareness ordinarily must be proven if experimentation is to be found."

In March 1993, EMD approached Union Pacific railroad for permission to substitute its new planetary bearings for prior art bearings in an order for two locomotives that Union Pacific placed earlier in 1992. Union Pacific allegedly agreed. Nevertheless, it did not sign a confidentiality agreement or any other type of a contract consenting to participate in the field program. Union Pacific also was not placed under any restrictions or supervision regarding the use of the locomotives containing new planetary bearings. Nor was Union Pacific given any design details for the new planetary bearings or required to monitor or document its usage of the subject locomotives during the field program. On September 29, 1994, EMD filed a patent application for its new planetary bearings.

The court compared these facts to those in Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996):

The facts here are closely analogous to those in Lough, where, as noted
above, this court rejected an inventor’s claim that a pre-critical date public
use of his liquid seal assembly invention was made for experimentation. In
Lough, the inventor distributed six prototypes of his liquid seal assembly
invention to his friends for use in their boats. After distribution, the Lough
inventor did not maintain any supervision over his friends’ use of the liquid
seal assemblies or follow-up with them for comments as to the operability of the
liquid seal assemblies. Similarly, EMD allowed Union Pacific unsupervised use of
the new planetary bearings. EMD neither monitored the conditions under which
Union Pacific used the new planetary bearings nor solicited any feedback from
Union Pacific regarding the bearings’ performance. What is more, EMD, like the
inventor in Lough, did not maintain any records of the alleged testing or
require Union Pacific to do so. As we stated in Lough, "Lough’s failure to
monitor the use of his prototypes by his acquaintances, in addition to the lack
of records or reports from those acquaintances concerning the operability of the
devices, compel the conclusion that, as a matter of law, he did not engage in
experimental use." 86 F.3d at 1122. We are equally compelled to conclude as a
matter of law that EMD did not engage in any experimentation on its new
planetary bearings.

Professor Wegner has already commented that "This case is a grand synthesis of the law of experimental use insofar as § 102(b) is concerned. Surely, it will be regarded as a leading case. Electromotive Division takes a hard ball approach that limits the circumstances under which an 'experimental' use will be found."

U.S. Copyright Royalty Board Seeks Comments on Sound Recording Formats

The Interim Chief Copyright Royalty Judge has issued a supplemental request for comments regarding rules for the delivery and format of records of use of sound recordings for statutory licenses under sections 112 and 114 of the Copyright Act. The Board found that it would be very difficult to adopt final rules on the basis of the public comments received and hopes to induce interested parties to provide more specific information regarding the burdens of data submission in the webcasting industry.

For further information, go to the new Copyright Royalty Board website at http://www.loc.gov/crb.

New Registered Community Design Search Capabilities Coming Soon

According to the latest issue of Alicante News, European Registered Community Design records will soon be fully searchable based on the bibliographic data (filing date, RCD number, products, Locarno classification), verbal elements contained in the design, and figurative elements using the Vienna Classification. "RCD-Online will be soon be available at http://oami.eu.int/en/db.htm (in English only – other linguistic versions will be available later)."

This news is significant because the Community Design Bulletin is currently searchable with only simple text queries. Since it can not be searched by date or classification, it has not been particularly useful for prior art and/or infringement clearance investigations. Hopefully, this will change when RCD-Online becomes available.

Click here for more information from Europe's "OHIM" on "Design protection of brand symbols - a useful alternative to trade mark protection?"

Click here for more information on "Regulations to Amend Implementing Regulation and Fees Regulation for Community Trade Marks – Amendments Enter into Force on 25 July 2005."

Most Frequent PCT Users in 2004

The PCT World
According to the July 2005 PCT Newsletter, 235 applicants accounted for 37,217 (33.1%) of the 112,558 international applications published in 2004. Of these 235 applicants, 183 were from one of the following three countries: the United States of America (39.1% of the total), Japan (25.5%), and Germany (13.2%). There were also 97 applicants in each of whose names 100 or more international applications were published. Koninklijke Philips Electronics N.V. was, for the fourth consecutive year, the largest PCT user, with 2,697 international applications published,
followed by Matsushita Electric Industrial Co. Ltd. (1,415) and Siemens Aktiengesellschaft
(1,252).

Here are the 35 most frequent PCT users for 2004, listing applicant country of residence and
number of applications published:

1. Koninklijke Philips Electronics N.V. NL 2,697
2. Matsushita Electric
Industrial Co. Ltd. JP 1,415
3. Siemens Aktiengesellschaft DE 1,252
4. Fujitsu Ltd. JP 970
5. Robert Bosch GmbH DE 791
6. Sony Corp. JP 753
7. Nokia Oyj FI 733
8. Motorola, Inc. US 618
9. BASF Aktiengesellschaft DE 588
10. Bayer DE + others 548
11. 3M Innovative Properties Co. US 525
12. DaimlerChrysler AG DE 491
13. Infineon Technologies AG DE 461
14. Intel Corp. US 459
15. International Business Machines Corp. US 425
16. Qualcomm Inc. US 407
17. E.I. Du Pont de Nemours and Co. US 395
18. Thomson Licensing S.A. FR 392
19. Honeywell International Inc. US 380
20. Kimberly-Clark Worldwide, Inc. US 379
21. The Procter & Gamble Co. US 367
22. Telefonaktiebolaget LM Ericsson (publ) SE 364
23. Philips Intellectual Property & Standards GmbH DE 357
24. Mitsubishi Denki Kabushiki Kaisha JP 344
25. Sharp Kabushiki Kaisha JP 306
26. LG Electronics Inc. KR 305
27. Samsung Electronics Co. Ltd. KR 292
28. Scimed Life Systems, Inc. US 279
29. The Regents of the University of California US 278
30. Medtronic, Inc. US 264
31. AstraZeneca AB SE 254
32. Japan Science and Technology Agency JP 253
33. Tokyo Electron Ltd. JP 237
34. Canon Kabushiki Kaisha JP 222
35. NEC Corp. JP 221

WIPO Lauches New PCT Web Portal

WIPO has launched a new web portal for all patent and PCT-related services and activities. Information on PCT filing and all PCT services are available through the new portal. In addition, a PCT Online File Inspection System is available for testing and comments, along with sections on patent data, statistics and current issues.

An Incremental Cost-Benefit Analysis of Worldwide Patent Coverage

In "Patent Filing Strategies for Pharmaceutical Products: A Simple Cost-Benefit Analysis Based on Filing Costs and Pharmaceutical Sales," AIPLA QJ (Spring 2005), Robert Silverman, General Counsel at Millenium Pharmaceuticals, looks at what countries should be protected in order to get the most bang for the pharmaceutical patent buck. His analysis starts with a "Return Value Score," or RVS, that divides each country's pharmacetical sales by its patent filing cost. He then divides the 44 countries that he considered into 4 groups depending upon their RVS:

• Group A - all counries, average RVS=1.6 (99% market coverage, $283,000 filing cost)
• Group B - all countries with an RVS=10 or greater, RVS=138 (95%, $96,000)
• Group C - PCT member countries with an RVS=10 or greater, RVS=161 (93%, $81,000)
• Group D - All countries with an RVS of 20 or greater, RVS=206 (91%, $62,000)

These numbers, along with his estimated PCT national stage filing cost data, result in the following chart showing Percent Market Coverage and PCT National Stage Cost for each Group:

Mr. Silverman draws two conclusions from this chart. First, selecting option B over option D, increases filing costs about 35% in order to gain exclusivity in only about an extra 4% of the world market. Second, the cost of exclusity increases dramatically for anything over about 95% of the world market.

He goes on to explain why reducing translation cost (such as by reducing the number of pages in the speciification) is not likely to matter when the RVS for a particular country is well below a minimum RVS, such as 138 for Group B. However, when the analysis is focussed on just European Patent Convention members, the high translation costs for Sweden, Denmark, Hungary, and Finland, mean that "omission of these four countries might make sense in a European-lite strategy."

Furthermore, since most of the revenue attributable to a European pharmaceutical patent is produced during the period of the so-called "Supplementary Protection Certificate," patents in Denmark, Finland, Slovakia, Latvia, and Estonia can have a negative net present value. However, the NPV calculation can be highly sensitive to certain variables, especially in countries where the NPV is only slightly negative.

Nonetheless, there are still big differences in the patent strategies of pharmaceutical companies. Some companies routinely file patent applications in fifty to seventy countries while others file in over ninety countries.

Europe Publishes R&D Intensity Figures

The European Commission published its "Key Figures 2005 on science, technology and innovation" on July 19, 2005, revealing stagnation in research and development (R&D) investment in the EU and U.S.

In a presentation entitled "Wake-Up Call for Knowledge Europe," EU Science and Research Commissioner Janez Potocnik reportedly described the numbers as 'particularly worrying'. The figures show that EU R&D intensity, growth of R&D investment as a % of GDP, is close to stagnation. China's R&D intensity, on the other hand, has been growing at around 10 per cent annually since 1997. According to Potocnik, "If current trends for both China and the EU-25 hold on in the coming years, China will have caught up with the EU by 2010 in terms of the share of GDP allocated to R&D."

Europe devotes a much lower share of its wealth to R&D than the US and Japan (1.93% of GDP in the EU in 2003, as compared to 2.59% in the US and 3.15% in Japan). While China has lower R&D intensity (1.31% of GDP in 2003) it grew at about 10% per year between 1997 and 2002. If these trends in the EU and China continue, China will be spending the same amount of GDP on research as the EU in 2010 – about 2.2%.

Prosecution History Invokes Rule Against Recapture

In North American Container, Inc. v. Plastipak Packaging, Inc., et al. (Fed. Cir., July 14, 2005), the court invaildated reissue claims 29-42 of U.S. Reissue Patent 36,639 (left) for violating the rule against recapture.

During prosecution of the parent application, the originally-filed claims were rejected as obvious over Dechene (middle) in view of Jakobsen (right). In response to the original rejection, the applicant amended his claims by specifying that the shape of the inner walls in his invention was "generally convex." The applicant also distinguished the claimed invention from the prior art by making the following argument:

The independent Claims 15, 24 and 33 have been amended to refer to the convex
nature of the inner wall portions of the central re-entrant portion (i.e. those
wall portions disposed inwardly of the lowermost points of the base upon which
the container rests) . . . . The shape of the base as now defined in the claims
differs from those of both the Dechenne patent [middle], wherein the corresponding wall portions 3 are slightly concave . . . and the Jakobsen patent [right], wherein the
entire re-entrant portion is clearly concave in its entirety. This is also
generally true of all of the prior art known to the applicant and/or referred to
by the examiner.

During reissue, the applicant added new claims which deleted the claim language "inner wall portions are generally convex" because, according to the patentee, "the invention is not limited to such a structure." Protests were filed under 37 C.F.R. § 1.291(a) by manufacturers and
distributors of bottles against the newly added claims, alleging violation of the recapture rule on the ground that "subject matter which the reissue applicant has intentionally removed from the reissue claims . . . is the same subject matter that was introduced during prosecution of the original patent in order to distinguish over the prior art." However, the examiner rejected the protests, stating that the reissue claims "are considered to be of intermediate scope and the deleted language such as that directed to the convexity of the inner wall . . . are not considered to be critical limitations." ’ The examiner then allowed the newly added claims and U.S. Patent 5,072,841 patent was reissued as Reissue Patent 36,639.

Under the recapture rule, a patentee is precluded "from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims." The Federal Circuit applies the recapture rule as a three-step process:

1. first, determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
2. next, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
3. finally, determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

In applying that process in this case, the court did not give any deference to the Examiner's analysis of criticality:

The examiner’s basis for denying the protests filed against the reissue claims,
i.e., that the claims "are considered to be of intermediate scope and the
deleted language . . . directed to the convexity of the inner wall . . . are not
considered to be critical limitations," demonstrates the examiner’s inattention
to the rule against recapture. For the reasons set forth above, the deleted
language was critical in that it allowed the applicant to overcome the Dechenne
reference. Moreover, that the reissue claims, looked at as a whole, may be of
"intermediate scope" is irrelevant. As the district court recognized, the
recapture rule is applied on a limitation-by-limitation basis, and the
applicant’s deletion of the "generally convex" limitation clearly broadened the
"inner wall" limitation. Thus, reissue claims 29-42 are invalid for violating
the rule against recapture.

Three-Blade Propeller Design Patent Not Infringed by Four-Blade Configuration

In Hartco Engineering, Inc. v. Wang's International, Inc., et al. (Fed. Cir., July 25, 2005, non-precedential) the court concluded that no reasonable jury could have concluded that the overall visual appearance of the claimed design (above, left) is substantially similar to the accused design (right):

"Comparing the two designs, we disagree with the district court that the
jury verdict of design patent infringement was supported by substantial
evidence. The designs do not have to be identical to an accused device to be
protected, see OddzOn, 122 F.3d at 1405, but Hartco’s patented design is limited
to the design it claimed with the three-blades and four circular features.
Appellants’ four-blade product has a substantially different overall ornamental
appearance from the claimed three-blade product. See Elmer, 67 F.3d at 1577-78.
As no reasonable jury could have concluded that the overall visual appearance of
the claimed design is substantially similar to the accused design, we do not
need to employ the point of novelty test. See KeyStone Retaining Wall Sys., 997
F.2d at 1451. We thus reverse the district court’s denial of judgment of noninfringement as a matter of law, together with the award of damages for design patent infringement."

Although this decision is not citable as precedent under Fed. Cir. R. 47.6, the also court noted that the inclusion of blades, a nose, and a tongue "are part of the general propeller concept and not protected ornamental aspects independent of their unique configuration." Instead, only the number and shape of the blades, as well as the four circular features, were ornamental aspects, subject to patent protection.

EC Reports on Patenting of Biotechnology in Europe

As a follow-up to its first report in 2002, the European Commission has now adopted a second report (COM(2005)312) to the Council and European Parliament covering developments and implications of patent law in the field of biotechnology and genetic engineering. The latest report focuses on issues in the area of patents relating to gene sequences and the patentability of inventions relating to stem cells. It also reports on the implementation of Directive 98/44/EC on the legal protection of biotechnological inventions.

The report looks at whether patents on gene sequences (DNA sequences) should be allowed according to the classical model of patent claim, whereby a first inventor can claim an invention which covers possible future uses of that sequence, or whether the patent should be restricted so that only the specific use disclosed in the patent application can be claimed (“purpose-bound
protection”). It concludes that "the Commission does not at present intend to take a position on the validity of transposition according to the choice between classical and limited scope of
protection for gene sequences. The Commission will, nonetheless, continue to monitor
whether there are any economic consequences of possible divergences between Member
States’ legislation."

With regard to stem cells, the report notes a distinction between totipotent stem cells, which are capable of developing into a human being, and pluripotent stem cells, which are not:

The provisions of the Directive are clear in relation to totipotent stem cells, since each cell could develop into a human being on its own and under Article 5(1) the human body at the various stages of its formation and development cannot constitute a patentable invention. This principle has been reiterated in the practice notice issued by the UK patent office in April 2003.

For pluripotent embryonic stem cells the situation is more complex. The Group of Experts considered that the question of patenting was closely linked to the definition of what constitutes an embryo, and the scope of research allowed, which is determined by national legislation. As regards research funding under the European framework programmes, such funding may be available for projects involving human embryonic stem cell research on a case by case basis.

In the light of the clear divergences which currently exist between Member States as regards the acceptability of research relating to embryonic stem cells, the continuing and rapid developments in this field, and the fact that the Directive itself provides for Member States to refuse patents on grounds of public order or morality under Article 6(1), the Commission considers that it is premature to give further definition or provide for further harmonisation in this area. At the same time the Commission will monitor developments taking into account both the ethical aspects and the potential impact on competitiveness. It has launched a study looking at the ethical and legal aspects of stem cell patenting.

Click here for the European Commission's webpage on biotechnology inventions.

Post-Dated Items in U.S. Trademark Document Retrieval System

Anne Downey, of Downey & Downey, reports on the INTA Listserv that "Regarding post-dated Notices of Allowance, I was told by a PTO representative that the PTO is aware of the issue. The NOAs get printed in advance andsometimes are mailed out prior to the NOA date. They are not uploaded into the Trademark Document Retrieval ("TDR") database until the NOA date occurs."

The TDR system displays the electronic file wrapper of U.S. Trademark applications and applications for Extensions of Protection, as well as U.S. Trademark Registrations. It also displays information contained in the USPTO records regarding International Registrations and applications for International Registration filed under the Madrid system through the U.S. Currently, you can access almost all pending applications and all Madrid Protocol filings, and many registrations, via TDR.

The USPTO is in the process of converting all remaining registrations into a digital format, so as to permit future TDR access. This conversion process is expected to take several years. Please consult the frequently asked questions for more information regarding what is available in TDR.

MARQUES Unveils GI Legislation Database

According to the July 24, 2005 issue of Managing Intellectual Property, the MARQUES association of European trade mark owners, has launched a database of legislation covering geographical indications (GIs). The database reportedly includes information on international agreements, EU regulations, and national legislation on GIs in 22 European jurisdictions, and is available to MARQUES members online here.

Get a free trial of "Managing Intellectual Property" here.

.HK Registrar Offering Temporary Chinese-Language Domain Name Registrations

According to the July 24, 2005 issue of Managing Intellectual Property, the registrar for the .hk domain, is running a Chinese domain name trial until December 29 this year, and plans to launch the service properly next year.

"CDN" domain name registartions from Hong Kong Domain Name Registration must include at least one Chinese character, either traditional or simplified, and can also contain Roman characters. Anyone can apply for a Chinese character .hk domain during the trial period, and there is no charge. But all registrations will be deleted on December 29.

Unfortunately, so-called "internationalized domain names" still lack formal rules from ICANN.

Israel Named U.S. Intellectual Property Czar

On July 22, 2005, the U.S. Department of Commerce announced that Chris Israel has been tapped as the new Coordinator of International Intellectual Property Enforcement. Israel will head the international work of the National Intellectual Property Law Enforcement Coordination Council (NIPLECC) and coordinate and supervise international intellectual property protection plans among other agencies.

Since 2004, Israel has served as Deputy Chief of Staff for the Secretary of Commerce. Prior to becoming Deputy Chief of Staff, he was Deputy Assistant Secretary for Technology Policy at the Commerce Department. Before joining the Commerce Department, Israel was a public policy executive at Time Warner. He has also worked as legislative aide to Representatives Jan Meyers and Todd Tiahrt. Israel received his B.A. from the University of Kansas and his M.B.A. from the George Washington University.

The National Intellectual Property Law Enforcement Coordination Council's mission is to coordinate domestic and international intellectual property law enforcement among federal and foreign entities. The Council consists of the following seven officials: the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office; the Assistant Attorney General, Criminal Division; the Under Secretary of State for Economic, Business, and Agricultural Affairs; a Deputy United States Trade Representative; the Commissioner of Customs; the Under Secretary of Commerce for International Trade; and in a consulting capacity, the Register of Copyrights.

Webster U. Offers MA in Patent Agency

Webster University of St. Louis is offering a Master of Arts in Patent Agency. According to their program description, the global legal community is experiencing an increasing demand for intellectual property law services, thereby resulting in an increasing demand for patent agents knowledgeable in the field of intellectual property law. The patent agency program prepares students who have a science or engineering background to practice as patent agents before the United States Patent and Trademark Office in patent cases:

The program provides the theoretical and practical knowledge needed to
enter the field of patent agency well-prepared to prepare and prosecute patent
cases. [Since] the written portion of the Patent Agent Bar Examination has
recently been eliminated. . . many patent agents who pass the
examination could be entering the work force with virtually no preparation in
patent application drafting. A course of study that teaches students the art of
patent drafting, such as this one, will likely result in the student being more
competent, marketable, and hopefully, more highly compensated.

The 36 credit hours required for the M.A. degree include the following courses:

• LEGL 5000 Introduction to Legal Studies (Requisite Course)
• LEGL 5260 Methods of Legal Research and Writing I
• LEGL 5900 Foundations of Intellectual Property Law
• LEGL 5910 Patent Law
• LEGL 5920 Patent Drafting
• LEGL 5930 Patent Prosecution
• LEGL 5940 Patent Law Regulations, Procedures, and Ethics
• LEGL 5950 Patent Litigation in the Federal Circuit
• LEGL 6030 Integrated Practices in Patent Agency

Average Patent Application Backlog by USPTO Technology Center

Dennis Crouch at the Patently-O Blog has taken the USPTO's “average filing date of applications receiving a first office action” and calculated an average backlog, in months, for each technology center. The backlog ranges from a low of 10 months for plant patent applications in TC 1660 to a high of 40 months for multiplex communication patent applications in TC 2660. Dennis adds that

Although this is unconfirmed, I believe that these numbers are somewhat
skewed because they include continuing applications that generally have a
shorter delay before receiving a first office action. As such, the expected delay for a newly filed non-continuation may be greater than that listed. Nonetheless, the table is useful for providing a new applicant a better estimate of the expected timetable.

Dennis also notes that Stephen Nipper's Invent Blog has provided a concise explanation of how to use the pendency table here and John Doll, the PTO’s Acting Commissioner for Patents recently gave a presentation on this and other topics at the NAPP meeting here.

Nice blogging, guys.

U.S. and Brazil Square-Off on WIPO Development Agenda

According to a July 21, 2005 report from Intellectual Property Watch, "the United States put a political stake in the ground" at the start of day two of a meeting on reform of the World Intellectual Property Organisation by calling for the meeting to recommend moving development issues to an existing technical committee:

The U.S. proposal is in marked contrast to a proposal put forward on day one by Brazil on behalf of 14 countries referred to as the "Friends of Development." The original Friends of Development proposal was introduced at the 2004 WIPO General Assembly last Fall, which mandated that an Intersessional Intergovernmental Meeting (IIM) discuss the proposal and make a recommendation by the end of July for the 2005 General Assembly. The current 20-22 July IIM is the third and final three-day meeting since April.

The U.S. suggestion to move development issues to the Permanent Committee on Cooperation for Development Related to Intellectual Property (PCIPD) reflects a proposal put forward at the April IIM by the United Kingdom. Canada proposed at the last meeting of the PCIPD – which followed immediately after the April IIM – that the body be reorganised to address broader concepts.

Brazil, India and others have argued repeatedly that the fundamental changes they are calling for must reach beyond the PCIPD into a range of committees and procedures at WIPO. “I think the U.S. totally rejects anything that changes this organization’s modus operandi that helps developing countries,” a Brazilian delegate charged. “I hope I am not correct.”

The U.S. delegate assured Brazil that his government has expressed a “willingness to discuss” development issues and fully supports U.N. efforts. But he said the United States disagrees with the premises upon which Friends of Development proposal is based – that WIPO has not dealt with development issues, and that intellectual property rights have not been positive for innovation.

Another area of contention between the United States and Brazil was a proposal put forward by Brazil for WIPO to negotiate an “access to knowledge” treaty. Brazil said there is a problem of the appropriation of publicly funded “basic science” and research by private companies which has the effect of removing the knowledge from the public domain.

The access to knowledge treaty, sometimes referred to as the A2K treaty, would ensure this information remains public, feeding science and research, Brazil said. WIPO must address this problem, he said, adding, “We believe an access to knowledge treaty is the real power tool that WIPO should pursue.” Brazil’s delegate cited “worrisome” legislation in the United States that encourages the transfer of more research from universities to private sector, which he said would lead to more monopolies and less innovation.

The United States said it cannot support the proposal, and that it “strongly disagrees” with the principles underlying it and views it as “unnecessary.” Intellectual property has been a strong driver of innovation rather than an impediment, the U.S. said.

The European Union could be the wild-card in the debate, as the United Kingdom’s statement did not reject the access to knowledge treaty proposal, and said WIPO has a role in the debate. On Thursday, the European Union proposed that talks on a stronger development-oriented agenda for the World Intellectual Property Organisation be continued through 2006.

Intellectual Property Watch is a non-profit independent news service reporting on the interests and behind-the-scenes dynamics that influence the design and implementation of international intellectual property policies. They are funded through a combination of grants from private philanthropic foundations, individual donations and subscriptions and received start-up funding through the Center for International Environmental Law, supported by the Open Society Institute and the Rockefeller Foundation.

Click here to get free e-mail notifications for new reports from Intellectual Property Watch.

WIPO Offers On-Line ADR Document Facility

The Arbitration and Mediation Center of the World Intellectual Property Organization has launched a new WIPO Electronic Case Facility ("ECAF") for on-line documentation access.

Through its secure online docket function, WIPO ECAF facilitates submission of case filings and enhances access by concerned parties. As an alternative to dispatching heavy packages to multiple locations, parties may submit communications – documents of hundreds of pages, recorded witness statements, etc. – electronically into a secure online docket. This prompts the dispatch of an email alert to all other actors involved in the case. Parties may view this docket at any time from any location through the Internet. The search function of the online docket facilitates access to case documents and allows easy organization of the documents by chronology or by party. WIPO ECAF also provides, at a glance, core case information – case summary, overview of timelines, including in particular upcoming deadlines, contact information for all parties, and the financial status of the case.

Based in Geneva, Switzerland, the WIPO Arbitration and Mediation Center was established in 1994 to offer Alternative Dispute Resolution (ADR) options, in particular arbitration and mediation, for the resolution of international commercial disputes between private parties. Developed by leading experts in cross-border dispute settlement, the procedures offered by the Center are widely recognized as particularly appropriate for technology, entertainment and other disputes involving intellectual property.

Click here for more about the WIPO ADR procedures.

TGIF for Gerry Thomas, Creator of the TV Dinner

Gerry Thomas, creator of the "TV Dinner" more than a half-century ago, died at the age of 83 this week.

Neccesity was truly the mother of his invention. "After Thanksgiving, Swanson had ten refrigerated railroad cars -- each containing 520,000 pounds of unsold turkeys -- going back and forth across the country in refrigerated railroad box cars, because there was not enough storage in warehouses. We were challenged to come up with a way to get rid of the turkeys," Thomas reportedly said.

Making use of aluminum serving dishes, used also at that time to serve dinners on aircraft, he packaged the leftover turkey with cornbread dressing, frozen peas and sweet potatoes, each in its own compartment. The entire dinner could be removed from the outer packaging as a unit, the aluminum tray could then be heated directly in the oven without any extra baking dishes, and you could eat the meal directly out of the same tray. According to USA Today, he came up with a three-compartment tray because "I spent five years in the service, so I knew what a mess kit was. You could never tell what you were eating, because it was all mixed together."

The first production order for 5,000 dinners required about two dozen women armed with ice cream scoops filling the new trays at night. But the key to its sucess was on coming up with the name and packaging to match the market. Few consumers owned freezers back then, so the dinners were typically bought and prepared the very same day.

"We had the TV screen and the knobs pictured on the package. That was the real start of marketing," Thomas said. And perhaps the start of something else. The dinners initially drew hate mail from men who wanted their wives to cook from scratch like their mothers did.

Get the official history of the TV dinner from Swanson and learn to cook with "The Single Man's Guide to TV Dinners" from Ray Cole.

Thank Goodness It's Friday,

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

Overlooked Counterclaim Bounces Appeal and Costs Appellant

In Enzo Biochem, Inc. v. Gen-Probe, Inc., et al. (Fed. Cir., July 13, 2005), the trial judge concluded its hearing by asking the parties "if there is anything that I have missed in my rulings that I should rule upon." Both counsel responded that the court had covered all the issues raised, and Enzo’s counsel indicated that it would appeal the decision. The judge then stated that he would "enter a summary order . . . that will enable you to proceed with dispatch in the Federal Court of Appeals on your rights if I have erred" and the clerk of the district court entered judgment under Federal Rule of Civil Procedure 58 holding that all claims of the ’659 patent were invalid and that "the case was closed."

Gen-Probe moved to dismiss the appeal, arguing that its remaining unadjudicated counterclaim of unenforceability for inequitable conduct rendered the district court’s judgment nonfinal. The court agreed with Gen-Probe that its pending unenforceability counterclaim renders the district court’s judgment nonfinal for purposes of appeal:

Although it is true that the district court here did make a clear statement that the case was at an end, it was mistaken, because an unadjudicated counterclaim remained. Gen-Probe’s brief to this court, supported by the record, and unrefuted by Enzo, makes that clear. While it is, to say the least, regrettable that a party with a remaining counterclaim that it wishes to pursue, as well as its opponent, leaves a trial judge with the impression that no claims remain in the case, we have no choice
but to take cognizance of the nonfinality created by the unquestioned existence
of that counterclaim.

Notheless, after awarding costs, the court granted Enzo leave to seek remedial action in the district court and thereafter reinstate the appeal if and when the judgment becomes final.

Haven't these folks heard of the Take Your Adversary to Lunch program?

Foreign Software Replication No Defense to U.S. Patent Infringement

AT&T Corp. v. Microsoft Corp. (July 13, 2005) the U.S. Court of Appeals for the Federal Circuit affirmed a holding that Microsoft was liable for infringement of AT&T’s United States Reissue Patent 32,580 under 35 U.S.C. § 271(f) for copies of the Windows® operating system that had been replicated abroad from a master version sent from the United States.

Under § 271(f), "whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer." During the course of AT&T’s suit against Microsoft for patent infringement, Microsoft moved in limine to exclude evidence of purported liability under 35 U.S.C. § 271(f) arising from foreign sales of Windows®. Microsoft argued that even if the Windows® software were a "component," no actual components had been "supplied" from the United States as required by § 271(f) because the copies of Windows® installed on the foreign-assembled computers had all been made abroad.

However, the court was not persuaded:

Were we to hold that Microsoft’s supply by exportation of the master versions of the Windows® software—specifically for the purpose of foreign replication—avoids infringement, we would be subverting the remedial nature of §271(f), permitting a
technical avoidance of the statute by ignoring the advances in a field of technology—and its associated industry practices—that developed after the enactment of § 271(f). It would be unsound to construe a statutory provision that was originally enacted to encourage advances in technology by closing a loophole, in a manner that allows the very advances in technology thus encouraged to subvert that intent. Section 271(f), if it is to remain effective, must therefore be interpreted in a manner that is appropriate to the nature of the technology at issue.

For this reason, we find Microsoft’s lock-and-key hypothetical, in which a single master key is sent abroad for mass replication, to be unpersuasive and irrelevant to this case. A lock-and-key assembly is a different type of technology from software, with different uses, such that its mode of mass production and consequent manner of supply abroad could very well be different from the way Microsoft conveniently hypothesizes it to be. While it is clear that a software manufacturer would want several million exact copies of a specific software program generated abroad for
distribution, it is unclear why a lock-and-key manufacturer would want several
million exact copies of a specific key made, as the point of having a lock-and-key assembly is to allow access control by a few keys. We prefer an interpretation of § 271(f) that is informed by actual industry practices, not by hypothetical scenarios that have no bearing on the technical realities of the invention at issue.

One commentator has already suggested that the decision could provide extraterritorial patent protection for software in Europe and elswhere. In fact, in his dissent Judge Rader clearly poited out that the judgment turned on the meaning of "supplies."

This court purports to construe that term according to its "ordinary,
contemporary, common meaning." The ordinary meaning of "supplies," however, does not include "copying," "replicating," or "reproducing" – in effect "manufacturing." The act of supplying is separate and distinct from copying,
reproducing, or manufacturing. Thus, this court provides extraterritorial
expansion to U.S. law by punishing under U.S. law "copying" that occurs abroad.
While copying in Düsseldorf or Tokyo may indeed constitute infringement, that
infringement must find its remedy under German or Japanese law.

CRS Reports on Proposed Patent Reform Legislation

On July 15, 2005, the Congressional Research Service of the U.S. The Library of Congress published "Patent Reform: Innovation Issues" (Order Code RL32996). The report examines the Patent Act of 2005, H.R. 2795, introduced in June 2005, which would arguably work the most sweeping reforms to the U.S. patent system since the nineteenth century. Among the more notable of these changes are a shift to a first-inventor-to-file priority system; substantive and procedural modifications to the patent law doctrines of willful infringement and inequitable conduct; and adoption of post-issuance opposition proceedings, prior user rights, and pre-issuance publication of all pending applications.

The authors conclude that many of these proposals, such as pre-issuance publication, prior user rights, and oppositions, have already been implemented in U.S. law to a more limited extent.

These and other proposed modifications, such as the first-inventor-to-file priority system and elimination of the best mode requirement, also reflect the decades-old patent practices of Europe, Japan, and our other leading trading partners. As well, many of these changes enjoy the support of diverse institutions, including the Federal Trade Commission, National Academies, economists, industry representatives, attorneys, and legal academics.

Other knowledgeable observers are nonetheless concerned that certain of these proposals would weaken the patent right, thereby diminishing needed incentives for innovation. Some also believe that changes of this magnitude, occurring at the same time, do not present the most prudent course for the patent system. Patent reform therefore confronts Congress with difficult legal, practical, and policy issues, but also with the apparent possibility for altering and potentially improving the legal regime that has long been recognized as an engine of innovation within the U.S. economy.

Get a free copy the report via the Patently-O Blog, and get more information on "The Meaning and Implications of the 2005 Patent Reform Proposals" via the Association of Patent Law Firms.

Parts-Numbering Decisions Highlight Merger Doctrine

In the July 8, 2005 issue of the The National Law Journal, Lewis R. Clayton discusses the doctrine of "merger, where an idea and its expression are inseparable -- that is, the idea can effectively be expressed in only one way -- copyright protection will yield to the principle that ideas may not be monopolized."

In two circuit court decisions rendered over the past several months [Southco Inc. v. Kanebridge Corp., 390 F.3d 276 (3rd Cir. 2004) and ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005)], these issues played out in the mundane context of parts-numbering systems. In both decisions -- one an en banc ruling issued over a stiff dissent -- the courts denied copyright protection, finding that "idea" merged with "expression." While the subject matter is arcane, these cases illustrate inherent tensions among basic principles of copyright law.

However, the author notes that Southco and ATC did not disturb two earlier decisions that recognized copyright claims for similar works. The 7th Circuit, in American Dental Association v. Delta Dental Plans Assoc., 126 F.3d 977 (7th Cir. 1997), upheld copyright protection for a taxonomy that classified dental procedures into groups,assigning each procedure a number as well as a description. The second circuiut in CCC Information Servs. Inc. v. Maclean Hunter Market Reports Inc., 44 F.3d 61, 69 (2d Cir. 1994), the "Automobile Red Book," which featured
projections of the values of "average" examples of used cars sold in different regions of the country, breaking out values by make, model number, body style and engine type, was protectible. The article concludes that

It is unlikely that there will ever be a clear test to separate public domain "ideas" and protectable "expression." Courts will continue to be skeptical about copyright claims based on mechanical classification systems -- particularly when copyright arguably is used to inhibit competition and receptive to the argument that creativity should be rewarded with a copyright.

USPTO Announces New Interference Search Procedure

On July 19, 2005, the U.S. Patent and Trademark office announced a new procedure, effective June 21, 2005, for conducting "intereference searches" in order to ascertain whether any other applicant is claiming substantially the same subject matter as is being allowed in application being searched. Under the new procedure,

[w]hen an application is in condition for allowance, examiners will make an interference search by performing a text search of the U.S. patent application publication database directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to nucleotide or peptide sequence, an interference search of the sequence database will be made. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists.

If there is no interfering subject matter, then the examiner should prepare the application for issuance. A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed will be made of record in the application file. The results of the interference search will not be placed in the application file.

The new interference search procedure will be incorporated in the upcoming revision of the MPEP. The Office recognizes that for interference purposes, a text search should encompass the claims of all pending U.S. applications and recently issued U.S. patents within a certain range of effective filing dates. However, since the Image File Wrapper (IFW) system does not provide for a text-searchable database encompassing unpublished pending applications, examiners currently can only perform a text search of the PGPub database as set forth above.

It is expected that in the future, there will be a new system that will permit text searches of pending unpublished applications. Once the new system is fully implemented, the interference search procedure will be revised accordingly and notice will be given as to any changes made.

Under the old intereference search procedures, examiners merely inspected all the pending prints and drawings (or all the claims if the invention is not susceptible of illustration) in the "interference files" of the relevant subclasses of the class in which the application is classified, and all other pertinent classes, whether in his or her Technology Center (TC) or elsewhere. When any of the drawings or claims shows such a condition to be likely, the corresponding file was then reviewed.

The "first-to-invent" aspect of the U.S. patent system has long been a bone of contention for the international harmonization of the patent system. Under the current U.S. procedure, interferences will not be declared between pending applications if there is a difference of more than 3 months in the effective filing dates of the oldest and the next oldest applications, in the case of inventions of a simple character, or a difference of more than 6 months in the effective filing dates of the applications in other cases, except in exceptional situations, as determined and approved by the Director. One such exceptional situation would be where one application has the earliest effective filing date based on foreign priority and the other application has the earliest effective United States filing date.

Each of the interefering applications must contain a claim to the same patentable invention (as defined in 37 CFR 1.601(n)) and each of those claims must be clearly readable upon the disclosure of that party and allowable in its application. If the applications each contain at least one claim drawn to the same patentable invention (37 CFR 1.601(n)), the examiner proceeds to propose the interference; otherwise, "one or more claims must be suggested to some or all of the parties" under MPEP § 2305. However, since two applications do not have to contain an identical claim in order to be placed in interference, the suggestion of a claim is not normally necessary.

Once an interference is declared involving an application, ex parte prosecution of the application is suspended, and the applicant need not reply to any USPTO action outstanding as of the date the interference is declared.

Character Conversion in TEAS Plus U.S. Trademark Applications

For U.S. trademark applications filed via TEAS Plus (i.e., on or after July 18, 2005) that include certain characters, the "word mark" field displayed in the Office's various databases may reflect a slightly different mark than what you actually filed. This is because some standard characters must be converted to other characters, or slightly modified, to ensure proper communication across different databases.

Specifically, (1) the € symbol is converted to ‘Euro’; (2) the ‰ symbol is converted to ‘0/00’; (3) Œ is converted to ‘OE’; (4) œ is converted to ‘oe’; and (5) some characters having a diacritical mark (e.g., an umlaut, accent, or cedilla) are converted to remove the diacritical mark; e.g., Ú is converted to U, ÿ is converted to y, and ç is converted to c. " For a complete listing of characters requiring conversion, click here.

For searching purposes, the U.S. patent and Trademark Office is warning that you "should not rely on the word mark field if any of those specific characters are part of the mark (It is not a problem for the characters identified at (5), above)." According to their latest searching instructions, only the following characters are searchable on TESS:

! # $ % & * + - . / 0 1 2 3 4 5 6 7 8 9 : < = > ? @ A B C D E F G H I J K L M N
O P Q R S T U V W X Y Z ^ ` a b c d e f g h i j k l m n o p q r s t u v w x y z
~ € ‚ ƒ „ … † ‡ ˆ ‰ Š ‹ Œ • – — ™ š › œ Ÿ ¡ ¢ £ ¤ ¥ ¦ § ¨ © ª " ¬ ® ¯ ° ± ² ³ ´
µ ¶ · ¸ ¹ º " ¼ Ç È É Ê Ë Ì Í Î Ï Ð Ñ Ò Ó Ô Õ Ö × Ø Ù Ú Û Ü Ý Þ ß à á â ã ä å æ
ç è é ê ë ì í î ï ð ñ ò ó ô õ ö ù ú û ü ý þ ÿ

However, some of these searchable characters have special meanings on TESS. For example, the asterisk is a truncation character for the BI and TI indexes. For searches, enclose in quotes any characters that have special meanings to TESS. For example, to search for all marks containing the asterisk character in the word mark, the search *"*"*[BI] can be performed. Similarly, the search *"?"*[BI] will retrieve all marks containing the question mark.

Not all characters can be searched on TESS. The following characters cannot be searched on TESS. Search strings that include these characters, will provide undesirable results:

" ' ( ) , ; [ \ ] _ { } ‘ ’ " " ˜

Other formatting characters that cannot be printed, such as the line feed, tab, and backspace characters, also cannot be searched on TESS.

TESS is not case sensitive. UPPER CASE characters are equivalent to lower case characters for searching. Either UPPER CASE or lower case characters may be used for your search terms.

USPTO Launches Site for Small Business

Report IP Theft
The first step in protecting your business from IP theft is to protect your IP - both in the United States and in other countries where you do business and source products. The STOP! hotline provides a one-stop-shop for businesses to protect their intellectual property at home and abroad. Callers on the hotline (1-866-999-HALT) receive information from USPTO IP attorneys with regional expertise on how to protect and enforce patents, trademarks, copyrights, and trade secrets in domestic and overseas markets.

Click here for answers to frequently asked questions, and more, for small business, including "What is the Bush Administration doing to address this problem?"

USCO Studying Satellite Statutory Licensing

The Copyright Office is soliciting comments from interested parties in connection with a study that will examine select portions of the section 119 (satellite) statutory license and determine what, if any, impact sections 119 and 122 of Title 17 have had on copyright owners whose programming is retransmitted by satellite carriers.

Comments are due by August 22, 2005. Click here for more informtaion.

The satellite carrier statutory license in section 119 of the Copyright Act, 17 U.S.C. § 119, permits a satellite carrier to retransmit distant over-the-air television broadcast stations (but not radio stations) to its subscribers for private home viewing. The license provides a means for satellite carriers to clear the rights to over-the-air television broadcast programming (but not radio) upon semi-annual payment of royalty fees to the Copyright Office. The license has a significant restriction, however, with respect to the retransmission of network television stations. Satellite carriers may only retransmit distant network stations to subscribers who reside in "unserved households.''

The unserved household limitation contains a number of involved and complex provisions and is about to be complicated further. All of the existing provisions and definitions were crafted in the era of analog broadcast television. Broadcasters are now switching their transmissions from analog to digital, and it is anticipated that the "digital transition'' will soon be completed. The Grade B signal intensity standard, which has been the centerpiece for defining when an individual household is "unserved" under section 119, does not apply to these digital transmissions.

IP Justice Sponsors NGO Group Statement on WIPO Development Agenda

"We, the undersigned public interest non-governmental organizations support the adoption of the proposal submitted by the Group of Friends of Development (FoD) for a Development Agenda at the World Intellectual Property Organization (WIPO)." --from an NGO Group Statement Supporting the Friends of Development Proposal by IP Justice ("To sign on to this statement, pleasee mail Robin Gross at IP Justice, at robin@ipjustice.org byTuesday, 19 July 2005.")

Read the Principles of IP Justice:

1. We reserve the right to control our individual experience of intellectual property.
2. Creators deserve to be compensated.
3. We reserve our right to make private copies of lawfully acquired intellectual property.
4. Technology and information that enable the exercise of rights should be lawful.
5. "Copy Rights" come with "Copy Responsibilities.

Learn more from Intellectual Property Watch . . .

Internationalized Domain Names Still Lack Formal Rules

According to Wired News on July 16, 2005 the formal expansion of Internet domain names to include non-English characters is likely to be delayed in light of this conclusion from the United Nations' June 2005 Report of the Working Group on Internet Governance:

27. Multilingualism

Insufficient progress has been made towards multilingualization. Unresolved
issues include standards for multilingual TLDs, e-mail addresses and keyword
lookup, as well as insufficient multilingual local content. There is a lack of
international coordination.

"In some of the early tests ... it became clear we had opened up the opportunity for registering very misleading names," Vint Cerf, head of the Internet Corporation for Assigned Names and Numbers, reportedly said in a conference call wrapping up ICANN's meetings lasts week in Luxembourg. Nonetheless, these, these, these ,and other registrars continue to offer multilingual domain name registration services.

Because IDN allows websites to use full Unicode names, it also makes it much easier to create a spoofed web site that looks exactly like another, including domain name and security certificate, but in fact is controlled by someone attempting to steal private information. These spoofing attacks potentially open users up to phishing attacks.

These attacks are not due to technical deficiencies in either the Unicode or IDNA specifications, but due to the fact that different characters in different languages can look the same, depending on the font used. For example, Unicode character U+0430, Cyrillic small letter a ("?"), can look identical to Unicode character U+0061, Latin small letter a, ("a") which is the lowercase "a" used in English. Technically, characters that look alike in this way are known as homographs.

Although a computer may display visually identical or very similar glyphs for two different characters, these differences are still significant (to the computer, but not the user) when locating the web sites or validating certificates. Thus, the user's assumption of a one-to-one correspondence between the visual appearance of a name, and the named entity, breaks down.
For example, someone could register a domain name that appears identical to an existing domain but goes somewhere else.

For example, the spoofed domain "p?ypal.com" contains a Cyrillic a, not a Latin a. In many ways, this is not a new thing. Even staying within the old character set of A-Z, 0-9 and hyphen, G00GLE.COM is easily confused with GOOGLE.COM, for example. What was new was that the expansion of the character repertoire from a few dozen characters in a single alphabet to many thousands of characters in many scripts greatly increased the scope for homograph attacks. In general, this kind of attack is known as a "homograph spoofing attack."

On February 7, 2005, Slashdot reported that this exploit was disclosed at the hacker conference Schmoocon with an example available at http://www.shmoo.com/idn/. On browsers supporting IDNA, the URL "http://www.p?ypal.com/" (the Cyrillic ?) appears to lead to paypal.com but instead leads to a spoofed PayPal web site that says "Meeow." Mozilla Firefox, which supports IDNA, shows the page as being at the paypal.com and with a verified security certificate. Firefox displays no warnings of any sort.

Learn more about IDNs here.

It's not the size of the boat that matters. . .

This photo says it all about the recent defeat of the European software patentability directive.

Europe's Patent Failure?

When Andy Reinhardt of BusinessWeek offers his analysis of the failed European Directive on Computer-Implemented Inventions ("Europe's Patent on Failure," July 13, 2005), he sees special interests' sabotage of good intentions, philosophical objections leading to vague and contradictory amendments, a broad brush approach where confusion triumphed, and no gain whatsoever for the EU:

"The outcome in Europe entrenches a system that, like many national laws on
the Continent, is increasingly out of step with global realities. The people who
killed smart patent rules may have had noble intentions. But instead of scoring
a hit for the little guy, they've actually put their compatriots at a
disadvantage on the global stage. That hardly looks like progress."

On the other hand, the Foundation for a Free Information Infrastructure (FFII) welcomed the outcome:

"This is a great victory for those who have campaigned to ensure that European innovation and competitiveness is protected from monopolisation of software functionalities and business methods. It marks the end of an attempt by the European Commission and governmental patent officials to impose detrimental and legally questionable practises of the European Patent Office (EPO) on the member states."

European I/P Import Exclusion for Dummies

HMRC Public Notice 34 (July 2004) explains how the UK Customes service operates the European Community (EC) legislation on:

• Counterfeit and pirated goods;
• Patent infringing goods;
• National or Community plant variety rights infringing goods;
• Designations of origin or geographical indications infringing goods;
• Geographical designations infringing goods; and
• UK legislation on customs action in relation to goods infringing trade marks and copyright.

It also includes information on how to apply with form C1340 (Intellectual Property Rights Application) and form C1340A (Community Intellectual Property Rights Application).

TGIF for "Peer-To-Patent" Taming of the Application Backlog

According to a July 14, 2005 article in Wired Magazine, Beth Noveck, director of New York Law School's Institute for Information Law and Policy, aims to relieve the current system, in which the U.S. Patent and Trademark Office has a backlog of half a million cases. Noveck's plan would reportedly turn the review process over to tens or hundreds of thousands of experts in various fields who would collectively decide an application's fate via a massive rating system not unlike that of eBay.

"It's an interesting idea, and an interesting perspective," Acting Patent Commissioner Doll reportedly said. So-called "peer-to-patent review" is something "that could be done right now, and I'm a little surprised that somebody hasn't started a blog (for that purpose)," said Doll.

Perhaps Professor Novek could jump start the process by offering a free course on the Manual of Patent Examining Procedure. Chapter 2100 on "Patentability" alone contains 234 pages of the most fascinating information that you could ever want to know. Of course, once you add a few examinations, some hands-on training, and an apprenticeship supervisory program, the whole thing starts to look a lot like the Patent Acadamy program at the USPTO.

Besides, didn't Professor Wegner already suggest a voluntary, adjunct examination corp drawn from registered practitioners and former Examiners like himself?

Thank Goodness It's Friday,

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

European Commission Proposes New I/P Directive

On 12 July 2005, the European Commission proposed a new directive on "criminal measures aimed at ensuring the enforcement of intellectual property rights." Under the proposed directive, all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements are treated as criminal offences. The proposal for a framework decision also sets a threshold for criminal penalties including at least four years' imprisonment if the offence involves a criminal organisation or if it jeopardises public health and safety. The applicable fine must be at least EUR 100 000 to EUR 300 000 for cases involving criminal organisations or posing a risk to public health and safety. However, the proposal allows Member States to apply tougher penalties.

According to the press release by the EC, "the Commission hopes that this clear political signal reflecting the determination to combat piracy and counterfeiting will be supported by concerted, long-term information campaigns by national and regional authorities and other interested parties to raise awareness, not only among key players in the fight against counterfeiting and piracy but also amongst the wider public as a whole."

Click here for a primer on European Union law.

USPTO Anti-Piracy Seminar in Phoenix on July 18

Under Secretary of Commerce for Intellectual Property Jon Dudas will open a two-day conference for small businesses on the “Global Intellectual Property Marketplace” on Monday, July 18, 2005 at the Hyatt Regency in Phoenix, AZ. During the two-day seminar, patent, trademark and copyright experts and lawyers from the USPTO will provide small- and medium-sized businesses, entrepreneurs, and independent inventors interested in manufacturing or selling their products abroad with specific details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

There is no charge for the conference, but seating is limited. For more information and to register, visit Phoenix Conference Registration.

EPO Responds to Defeat of EU Software Patentability Directicve

According to a statement by the President of the EPO, Alain Pompidoua, following lasts week's defeat of the European Directive on Computer-Implemented Inventions, "The European Patent Convention provides the general legal basis for the grant of European patents, whereas the objective of the directive would have been to harmonise the EU member states' rules on CII and the relevant provisions of the EPC. The EPC also governs our work in the field of CII, together with the case law of our judiciary, the Boards of Appeal of the EPO."

The press release issued on July 6, 2005 goes on to emphasize that "As with all inventions, CII are only patentable if they have technical character, are new and involve an inventive technical contribution to the prior art. Moreover, the EPO does not grant "software patents": computer programs claimed as such, algorithms or computer-implemented business methods that make no technical contribution are not considered patentable inventions under the EPC. In this respect, the practice of the EPO differs significantly from that of the United States Patent & Trademark Office."

In other words Dr. Pompidouia, the definition of "technical contribution" excludes business methods. . . .

For more thoughts along these lines, check out "A Technical Critique of Fifty (European) Software Patents," where the authors conclude that

. . . for the set of patents examined here: they are not too obvious in
general; the level of disclosure is often less than optimal, indicating the need
for reform; they are almost all for real innovations; some are too broad
technically but most are not; they do last too long, but this has little to no
apparent impact on the industry; and some software inventions need both patent
and copyright protection. Taken altogether, software patent critics do have some
valid points (especially regarding disclosure), but the accusations that they
are generally obvious, trivial, and impede progress do not stand up to scrutiny.

USPTO Launches Pre-Appeal Brief Conference Pilot Program

On July 12, 2005, the USPTO formally announced and implemented its new, Pre-Appeal Brief Conference Pilot Program. Effective immediately, the USPTO is offering applicants an optional procedure to review the examiner's rejection prior to the actual filing of an appeal brief. The pilot program will run for at least six months and the Office may extend, terminate, revise or otherwise take appropriate action after evaluating its effectiveness at the end of that period. If the program is to be made permanent, the Office will promulgate the appropriate changes to title 37 of the Code of Federal Regulations.

Under the new procedure, any applicant may file a request, with the filing of a notice of appeal and before the filing of an appeal brief, for a panel of experienced examiners to perform a detailed review of appealable (not petitionable) issues. No extensions of time are available for filing the request for review and the process does not apply to reexamination proceedings. Upon receipt of a properly filed request, a Technology Center Art Unitsupervisor will designate a panel of examiners experienced in the field oftechnology to review the applicant's remarks and the examiner's rejections. The panel will include at least a supervisor and the examiner of record. The panel will then decide if an issue for appeal is, in fact, present in the record.

A sample request form has been created and is available on the USPTO forms page, as PTO/SB/33. The request may not be more than five (5) pages total and "the remarks should be drafted with the expectation that for a clear error in fact or other deficiency, a long detailed explanation is not needed." No supplemental requests or arguments will be accepted. Applicants are therefore encouraged to refer to arguments already of record rather than repeating them in the request. This may be done by simply referring to a prior submission by paper number and the relevant portions thereof (e.g., see paper number 3 at pages 4 to 6). However, "references such as 'see the arguments of record' or 'see paper number X' are not helpful and will just obfuscate the real issues for review."

Any actual issues lacking factual basis, including interpretations of the prior art teachings or claim scope as contrasted with clear error infacts, are appropriate for the traditional appeal process and submissionof the appeal brief. For grounds where a clear issue on proper interpreta-tion exists, applicant is advised to proceed to appeal with the timelyfiling of the appeal brief. This program "is not intended to be, and is not, an alternative for filing an appeal."

The applicant will not be permitted to attend the review and no interviews will be granted prior to issuance of the panel's decision. The Office "should mail a decision within 45 days of receipt of a properly filed request" which will state one of the following "findings:"

1. The application remains under appeal because there is at least one actual issue for appeal.
2. Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
3. The application is allowed on the existing claims and prosecution remains closed.
4. The request fails to comply with the submission requirements and is dismissed.

The decision will also summarize the status of the pending claims (still rejected, withdrawn rejections, objected to or allowable claims). The decision will not contain any additional grounds of rejection or any restatement of previously made rejections.

A pre-appeal brief conference panel decision that the application remains under appeal is not final agency action for purposes of court review. A decision by a panel to withdraw the rejections of any or all of the claims on appeal is not a decision by apanel of the Board of Patent Appeals and Interferences, and, as such, would not result in any patent term extension of adjustment under 35 U.S.C. Sec. 154(b) (37 CFR 1.701(a)(3) and 1.702(e)). An applicant dissatisfied with the result of the appeal conference must pursue the appeal before the Board of Patent Appeals and Interferences.

However, following a panel review under this pilot program, the examiner retains the option to reopen prosecution or to allow an application after the filing of an appeal brief. This unlikely situation might arise, for example, where new arguments or evidence are presented in the appeal brief.

The period of time for filing the appeal brief will be the later of the two-month period set in 37 CFR 41.37(a) or one month from the mail date of the decision on the request. If a request for a pre-appeal brief conference is filed with a notice of appeal, the time period set in 37 CFR 41.37(a)(1) is waived so that an appeal will not stand dismissed if an appeal brief is not filed within two months of the filing date of a notice of appeal, but is filed within one month of the decision on the request. To the extent that any other existing USPTO rule is inconsistent with this pilot program, the rule is waived until regulations directed to pre-appeal brief conferences are promulgated, or the pilot program is ended.

Under this pilot program, the request must be filed with the notice ofappeal. However, the Office is considering, as part of a more permanent implementation of the pre-appeal brief conference program, permitting applicants to file the request within two months (non-extendable) of the receipt of the notice of appeal for a fee ($130.00), in which case the period for filing an appeal brief would simply be the two-month period set in 37 CFR 41.37(a)(i.e., the mailing of a decision on the request would notprovide any new time period for filing the appeal brief).

En Banc Decision Minimizes Role of Dictionaries in Patent Claim Construction

In Phillips v. AWH Corp. (Fed. Cir., en banc, July 12, 2005), the principal issue presented to the Court was the extent to which it should resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its claims:

This is hardly a new question. The role of the specification in claim construction has been an issue in patent law decisions in this country for nearly two centuries. We addressed the relationship between the specification and the claims at some length in our en banc opinion in Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). We again summarized the applicable principles in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), and more recently in Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004). What we said in those cases bears restating, for the basic principles of claim construction outlined there are still applicable, and we reaffirm them today. We have also previously considered the use of dictionaries in claim construction. What we have said in that regard requires clarification.

With regard to dictionaries, the court began by noting that the methodology in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) "placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history." The Texas Digital approach improperly restricts the role of the specification in claim construction because it "limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal. "

The court went on to state that the purpose underlying the Texas Digital line of cases—to avoid the danger of reading limitations from the specification into the claim—is sound. However, the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice. Nonetheless, "the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms."

In the end, there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature. While that task may present difficulties in some cases, we nonetheless believe that attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification.

In Vitronics, this court grappled with the same problem and set forth guidelines for reaching the correct claim construction and not imposing improper limitations on claims. 90 F.3d at 1582. The underlying goal of our decision in Vitronics was to increase the likelihood that a court will comprehend how a person of ordinary skill in the art would understand the claim terms. See id. at 1584. In that process, we recognized that there is no magic formula or catechism for conducting claim construction. Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. See id. at 1583-84; Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003). For example, a judge who encounters a claim term while reading a patent might consult a general purpose or specialized dictionary to begin to understand the meaning of the term, before reviewing the remainder of the patent to determine how the patentee has used the term. The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law. Vitronics, 90 F.3d at 1582. In Vitronics, we
did not attempt to provide a rigid algorithm for claim construction, but simply
attempted to explain why, in general, certain types of evidence are more
valuable than others. Today, we adhere to that approach and reaffirm the
approach to claim construction outlined in that case, in Markman and in Innova.

The court also cautioned against applying the maxim that "claims should be construed to preserve their validity" where a claim term in not ambiguous.

Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still mbiguous.” Liebel-Flarsheim, 358 F.3d at 911; see also Generation II Orthonics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed. Cir. 1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.

. . .The applicability of the doctrine in a particular case therefore depends on the strength of the inference that the PTO would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.

In this case, unlike in Klein and other cases in which the doctrine of construing claims to preserve their validity has been invoked, the claim term at issue is not ambiguous. Thus, it can be construed without the need to consider whether one possible construction would render the claim invalid while the other would not. The doctrine of construing claims to preserve their validity, a doctrine of limited utility in any event, therefore has no applicability here.

Finally, the court chose not to address the issue of to what extent it is appropriate to accord any deference to any aspect of trial court claim construction rulings: "We therefore leave undisturbed our prior en banc decision in Cybor."

The critical language of claim 1 of U.S. Patent No. 4,677,798 (above) was "further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls." The court concluded that this phrase imposed three clear requirements with respect to the baffles. First, the baffles must be made of steel. Second, they must be part of the load-bearing means for the wall section. Third, they must be pointed inward from the walls.

According to the couurt, the fact that the written description of the patent set forth multiple objectives to be served by the baffles recited in the claims confirms that the term “baffles” should not be read restrictively to require that the baffles in each case serve all of the recited functions.

Although deflecting projectiles is one of the advantages of the baffles of the ’798 patent, the patent does not require that the inward extending structures always be capable of performing that function. Accordingly, we conclude that a person of skill in the art would not interpret the disclosure and claims of the ’798 patent to mean that a structure extending inward from one of the wall faces is a “baffle” if it is at an acute or obtuse angle, but is not a “baffle” if it is disposed at a right angle. . . . Because we disagree with the district court’s claim construction, we reverse the summary judgment of noninfringement.

In their IP Law Bulletin for July 13, 2005, the attorneys at Foley and Lardner have already concluded that the "opinion does not represent a substantial change in the law regarding claim construction, but provides a useful and important summary of 10 years of claim construction precedent. Due to the Court’s emphasis on the specification and prosecution history, patent applicants seeking broad protection need to invest in careful patent prosecution. The effect of things said or left unsaid during preparation of the patent application and in responses to the PTO will be very difficult to change when it becomes time to enforce the resulting patent."

For more comentary on the decision, check out "Federal Circuit Orders Courts to Rely on Patent Language" by Brenda Sandburg in The Recorder on July 14, 2005.

USPTO Still Expanding

Growth in patent applications has been greater than anticipated and USPTO officials who planned the agency’s 2.4 million-square-foot new headquarters complex in Alexandria, Va. 10 years ago and now find that it is not big enough. According to FWC.com July 11, 2005, they have already had to lease additional office space near the five-building complex into which more than 7,000 employees and contractors finished their move this month.

"The government budget process does not allow you to build a building in anticipation of what might come down the road,” USPTO sokesperson Brigid Quinn explained. "We’re hiring about 900 patent examiners this year. In fiscal year 2006, we’re anticipating having the resourcesto hire an additional 900, give or take.”

"Copyright Ownership and Rights" by Richard Stim

"Copyright Ownership and Rights" by Attorney Richard Stim is a Nolo "BizBrief" that explains in plain English why the person who creates a work is not necessarily the copyright owner. Other topics include

• When Someone Else Owns the Copyright
• Copyright Ownership in Joint Works
• Rights Belonging to the Copyright Owner
• Transfer of Copyright Owner's Rights

Various other free publications on copyrights are available from the U.S. Copyright Office at http://www.copyright.gov/circs/.

USPTO Electronic Assignment Recordation Update

The USPTO's Office of Public Records strongly encourages customers to use the following online systems to submit Assignments for FASTER processing of Assignment Recordations:

Electronic Patent Assignment System (EPAS) at http://epas.uspto.gov,
Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov

Assignments submitted through the online systems are generally processed within 48-72 hours.

Using these systems, you create and submit an Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as TIFF of PDF (no color please) for submission via the Internet. Assignment information provided by the user will be recorded as provided and will not be verified or modified by the USPTO.

The latest features include:

• PDF attachments - Legal supporting documentation may now be of either a TIFF, or a PDF file. Documents must be black and white. You may attach more than one file in more than one format.
• Saved Submission - When all assignment data screens are completed, prior to proceeding to the payment screen (or submit process - if no fee is due) the current submission can be temporarily saved to a USPTO server. A URL link will be provided via a display on the screen and by email that identifies the link that permits access to the saved submission. To save a submission use the 'Advanced' button on the Validation screen and choose the 'Save Submission' button on the following screen. The URL link is valid for 4 days.
• Create Template Data - from a submission, namely: correspondence information, conveying party(s), receiving party(s) and property(s) can be downloaded to your workstation as a template to re-use in future submissions. To download a template use the 'Advanced' button on the Validation screen and choose the 'Customize Template' button on the following screen. Using the template To start a new assignment filing from the downloaded template, use the 'Start from Template' button shown below on this screen.

No Estoppel from Unrebutted Reasons for Allowance

In Salazar v. Procter & Gamble Company (Fed. Cir.; July 8, 2005), the court held that unilateral statements of an examiner in the reasons for allowance can not give rise to prosecution history estoppel for U.S. Patent No. 5,535,474 (left).

In the Notice of Allowance, the examiner made the following remarks in the Examiner’s Statement of Reasons for Allowance:

Claim 7 now incorporates previously held allowable subject matter . . . .
Although the patent to Clemens appears to have the recited structure, Clemens’
"rods" 22 are made of nylon, which is not considered "elastic". Obviously the
"rods" of Clemens are flexible, but are not considered to be "elastic" as
recited by the claim.

Based upon this portion of the file history, the district court construed the term “elastic” as “any material other than nylon, capable of returning to an initial state or form after deformation.” The district court then granted summary judgment of no infringement because Mr. Salazar did not present sufficient evidence to raise an issue of fact about the elasticity of the stimulator and polishing rods in the accused products. It also also found that the doctrine of prosecution history estoppel barred Mr. Salazar from asserting infringement of the "elastic" limitation under the doctrine of equivalents.

The Federal Circuit vacated district court’s grant of summary judgment of no literal infringement and no infringement under the doctrine of equivalents:

This court has recognized that an Examiner’s Statement of Reasons for
Allowance "will not necessarily limit a claim." ACCO Brands, Inc. v. Micro Sec.
Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003). Consequently, an
applicant’s silence regarding statements made by the examiner during
prosecution, without more, cannot amount to a "clear and unmistakable disavowal"
of claim scope. See 3M Innovative Props., 350 F.3d at 1373-74 ("‘Prosecution
history . . . cannot be used to limit the scope of a claim unless the applicant
took a position before the PTO.’ Schwing GmbH v. Putzmeister Aktiengesellschaft,
305 F.3d 1318, 1324-25 (Fed. Cir. 2002) (emphasis added). An applicant’s silence
in response to an examiner’s characterization of a claim does not reflect the
applicant’s clear and unmistakable acquiescence to that characterization if the
claim is eventually allowed on grounds unrelated to the examiner’s unrebutted
characterization."). After all, the applicant has disavowed nothing.

* * *

Because such statements do not amount to a clear disavowal of claim scope
by the applicant, this court vacates the portion of the district court’s claim
construction excluding nylon from falling within the scope of the "elastic"
element. This court affirms the remaining portion of the district court’s claim
construction that "elastic" means "capable of returning to an initial state or
form after deformation." Whether the accused products satisfy the "elastic"
limitation in the asserted claims is a factual matter that this court leaves for
the district court to resolve in the first instance.

Practitioners will recall that under 37 CFR 1.104(e), "The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication."

§112 Seperatists, Fusionists, and Clarificationists at the CAFC

According to Meredith Martin Addy, Jeffery M. Duncan and C. Noel Kaman writing in The National Law Journal on June 28, 2005, Judges at the Federal Circuit can be divided into "seperatists," "fusionists," and "clarificationists" when it comes to the first pragraph of 35 USC §112:

Separatists, and some clarificationists, read this sntence as requiring the specification of a patent application to set forth both a "written description of the invention" (written description) and a description with enough detail to "enable" a person of skill in the art to practice the invention (enablement). The separatists currently form the majority and have precedent on their side. This precedent mandates separate analyses for determining whether each requirement is satisfied. Hence, it is possible to enable an invention but not describe it, and vice versa. See, e.g., In re DeLione, 436 F.2d 1404, 1405 (CCPA 1971) (a specification that discusses only compound A and does not contain any broadening language might enable one skilled in the art to make and use compounds B and C; yet the genus consisting of A, B and C is not described).

Fusionists, on the other hand, interpret this same sentence of §112 to include a single requirement. These judges believe that the words "written description" are used merely to explain how one should provide the enabling disclosure: "The specification shall contain a written description of the invention in such ... terms as to enable." Under this interpretation, if the specification is enabling, the written description is necessarily adequate. See, e.g., Enzo Biochem v. Gen-Probe Inc., 323 F.3d 956, 976 (Fed. Cir. 2003) (Rader, J., dissenting from denial of rehearing en banc).

Finally, clarificationists, the third and growing group of judges, believe the Federal Circuit should clarify the proper interpretation of the written-description requirement.

According to the authors, the Federal Circuit "seperatists" include Michel, Mayer, Lourie, Clevenger, Schall and Prost, while "fusionist" judges include Rader, Gajarsa, and Linn. Newman, Bryson, and Dyk "simply want the issue clarified."

Review of Markman Issues at the Federal Circuit

This 112-page report by the Litigation Committee of the Intellectual Property Law Association of Chicago (IPLAC) reviews the substantive and procedural law developed in the Federal Circuit during 2004 concerning patent claim construction of U.S. Court of Appeals for
the Federal Circuit for 2004.

ITC ALJ Orders $1 Million Sanction

On June 28, 2005, U.S. International Trade Commission Administrative Law Judge Robert Barton issued a $1 Million sanction, payable within 10 days, jointly and serverally, by Verve LLC and its attorneys who were found to have conducted an inadequate investigation prior to filing a "Section 337" unfair import complaint and to have made unsupported factual representations during the course of the proceedings.

The order can be viewed here.

Fabio Perini Files Section 337 Complaint Against Chan Li

On July 8, 2005, Fabio Perini North America Inc.filed a "Section 337" complaint at the U.S International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Tissue Converting Machinery, Including Rewinders, Tail Sealers, Trim Movers, and Components Thereof." Such complaints typically include allegations of infringement of a U.S. intellectual property right.

The proposed respondents is Chan Li Machinery Company , LTD, Taiwan. The complaint has been designated as confidential and assigned Docket No. 2439 for indexing in the Commission's database.

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

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

Beresford Named Commissioner for U.S. Trademarks

On July 8, 2005, U.S. Secretary of Commerce Carlos M. Gutierrez named Lynne G. Beresford to be Commissioner for Trademarks at the Commerce Department’s U.S. Patent and Trademark Office (USPTO). As Commissioner for Trademarks, Beresford is responsible for the productivity and quality of the work done by more than 300 examining attorneys, paralegals and other support professionals. She also oversees budget and trademark-related information technology (IT) decisions.

Beresford has been acting Commissioner for Trademarks since September 1, 2004. In response to the appointment, Under Secretary of Commerce for Intellectual Property Jon Dudas noted, “Lynne Beresford has a track-record of excellence and achievement, both as a manager and as a trademark expert. The Secretary’s appointment ensures continuity of our successful trademark operations.”

Beresford began her career at the USPTO in 1979 as a trademark examining attorney. She has held a variety of management positions throughout her career, including managing attorney, trademark legal administrator, deputy commissioner for trademark examination policy, and acting deputy commissioner for trademark operations. Beresford also served as a senior attorney in the USPTO’s Office of International Relations.

In 1989 Beresford managed the computer aspects of the implementation of the Trademark Law Revision Act of 1988. She chaired every meeting of the World Intellectual Property Organization’s Standing Committee on Trademarks, Industrial Designs and Geographical Indications from its inception in 1997 until late 2001 and was instrumental in drafting the legislation to implement the Madrid Protocol and the Trademark Law Treaty.

Other Upcoming TEAS Enhancements

In addition to the "TEAS-Plus Form" debuting on July 18, 2005, here are some other Trademark Electronic Application System ("TEAS") enhancements that are also in the works at the U.S. Patent and Trademark Office:

Expanded Image File Types

Currently, the USPTO's Trademark Electronic Application System ("TEAS") will only accept the attachment of image files that are in the JPG format. In response to customer requests, the Office of the Chief Information Officer is continuing to explore possible future technical changes to the TEAS environment, which would allow for the attachment of other image files types, e.g., PDF files. However, should this prove possible, other file types would be acceptable only for 1) specimens; 2) evidence; 3) foreign registration certificates; and 4) consents. Mark images would still be accepted only as a JPG file. Also, submission of an overall, entire response as, e.g., a PDF file, would not be permitted.

Response to Office Action Form and Suspensions

Edits on the Response to Office Action (ROA) form had been preventing use of this TEAS form to respond either to a Suspension letter or a Suspension Inquiry letter. These edits have now been removed from the ROA form, so applicants can now file a TEAS ROA, either to submit a jpg image file of the foreign registration certificate, or to notify the examining attorney that the foreign registration certificate has not yet issued, or the proceeding has not yet concluded (or, whatever is the basis for the suspension), and that the examining attorney should, once again, suspend the application.

Sound Marks and Electronic Filing

Although the filing of sounds marks electronically does require some "exception processing," these can be done through TEAS. The sound mark specimen, consisting of a WAV file or MP3 file, can be sent as an e-mail attachment directly to the TEAS Support Team, at teas@uspto.gov. However, because the TEAS form will require a JPG attachment for the specimen, the applicant must still create a JPG file for this purpose; but, it will merely consist of a statement that "A WAV file (or MP3 file) has been sent directly to the TEAS Support Team for processing." For easier association of the WAV (or MP3) file with the proper application, the applicant should submit the actual application first, and then reference in the e-mail to the TEAS Support Team the assigned serial number and an indication that this is a "new application." All other filings (e.g., an Allegation of Use, a Section 8, etc.) should be done in the same manner, with the serial number or registration number referenced in the e-mail, and a clear indication of the type of filing.

European Commission Proposes Copyright Collective for On-Line Music

The European Commission has published a study on how copyright for musical works is licensed for use on the Internet. The study concludes that entirely new structures for cross-border collective management of copyright are required, and that the most effective model for achieving this is to enable right-holders to authorise a collecting society of their choice to manage their works across the entire EU.

Internal Market and Services Commissioner Charlie McCreevy said: “We have to improve the licensing of music copyright on the Internet. The absence of pan-European copyright licenses makes it difficult for new European-based online services to take off. This is why we are proposing the creation of Europe-wide copyrights clearance. Central clearance is not about making content available on the cheap. It offers a model whereby Europe’s creative community will get the lion’s share in revenues achieved online.”

Click here for more information from the Commission on central copyright clearance for online use across the EU.

Europe Moving Toward "Section-337-Style" Import Exclusion Regime

On July 22, 2003, the European Union ("EU") adopted council regulations on customs action against goods suspected of infringing intellectual property.

Council Regulation (EC) No 1383/2003 will replace the existing customs regime under Regulation Nos. 3295/94 and 241/1999 when it comes into force in July 2004. Like Section 337 of the U.S. Tariff Act of 1930, the European regulation sets out the conditions for action by the customs authorities when goods are suspected of infringing an intellectual property right and fixes the measures to be taken by authorities when goods are found to infringe. In Europe, those rights include patents, supplementary protection certificates, national plant varieties, protected designations of origin, protected geographical designations, and moulds or matrices which are specifically designed for the manufacture of infringing goods.

While most U.S. import exclusion investigations for rights other than trademarks and copyrights are resolved by the U.S. International Trade Commission in about 12-18 months, European Member States will have to decide rights holders' applications for action against infringing goods within 30 days. However, in exchange for such speedy resolution, European applicants will have to agree accept liability to indemnify the importer in the event that 1) an exclusion procedure is discontinued due to an act or omission by the right-holder, or 2) the goods in question are subsequently found not to infringe. Infringement determinations will be made under the national law of Member State where the goods are entered or found.

Unlike U.S. law, which provides only for exclusion and/or and cease and desist orders, goods found to infringe in Europe will not be allowed entry into the Community customs territory, release for circulation or removal from the Community customs territory, export, or re-export. Allegedly infringing importers in Europe may also obtain release of their goods upon provision of a security that is sufficient to protect the interests of the right-holder. In contrast, U.S. rights-holders may be required to post a bond as a prerequisite to obtaining preliminary relief during the investigation, while infringing importers in the U.S. may be required to post a bond if they wish to continue their importation during the 60-day Presidential review period following a final decision of the Commission.

More information about how European rights holders can protect themselves from counterfeiting and piracy is available here.

More information about how stop unfair import practices in the U.S. is available here, or by contacting the author, Bill Heinze (BillHeinze@tkhr.com) at Thomas, Kayden, Horstemeyer and Risley in Atlanta, Georgia USA.

EPO Providing Patentability Opinions with Search Reports

For European patent applications filed on or after 1 July 2005, the search report will include an initial EPO opinion on the claimed invention's patentability.

Under the new EPC Rule 44, "the European search report [is] accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the European Patent Convention." This new "extended European search report" or "EESR," is obligatory. Applicants can no longer opt out, and the new procedure also applies to the supplementary European search report under Article 157(2)(a) EPC. The opinion is not part of the European search report, and therefore is not published with it under Article 93(2) EPC. Nonetheless, once the EESR is issued to the applicant, it is part of the file and open to file inspection once the application has been published (Article 128(4) EPC).

The implementation of EESRs for all European patent applications follows a successful pilot project for European first filings which started in July 2003. According to the official press release, the new procedure "gives applicants a very early opportunity to manage their patenting risks. At the same time, it also ensures more information and procedural transparency for the public, who will have access to the EESR, via (electronic) file inspection, as soon as the EPO publishes the application. "

To cover the extra work which the EESR involves, the Administrative Council of the European Patent Organisation has increased the European search fee from EUR 690 to EUR 960. To counterbalance that, the examination fee payable on applications with an EESR has been reduced from EUR 1 430 to EUR 1 280.

Click here for more details. . .

TGIF for Student Inventors

"Inventions and Patents" is the first of World Intellectual Property Organization's "Learn from the Past, Create the Future!" series of publications aimed at young students.

According to the Teacher Notes section, the publication can be used to supplement science curricula, especially in relation to science fair projects. The "Think about it" sections can be a starting point for class discussions on the subject of inventions and patents, while the "Patent Journey" game was designed as a fun way for
groups of students to review what they have learned. It may also be freely photocopied for classroom use.

For older students, check out the Collegiate Inventors Competition, and learn what you get when you combine a zebra with a numbering stamp.

Thank Goodness It's Friday,

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

HP Requests Unfair Import Investigation Against Gateway and eMachines

On July 6, 2005, Hewlett Packard Company filed a "Section 337" complaint at the U.S International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Personal Computers." Such complaints typically include allegations of infringement of a U.S. intellectual property right.

The proposed respondents are Gateway, Inc. (Irvine, CA) and eMachines, Inc. (Irvine, CA). The complaint has been designated as confidential and assigned Docket No. 2438 for indexing in the Commission's database.

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

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

Reduced Filing Fees for "TEAS Plus" Trademark Applications Start July 18

Effective July 18, 2005, the United States Patent and Trademark Office (Office) is reducing trademark filing fees under certain circumstances when the applicant uses the Trademark Electronic Application System ("TEAS") to file an application for registration on the Principal Register under section 1 and/or section 44 of the Trademark Act. The reduced fee option will not apply to applications filed pursuant to section 66(a) of the Act, because they cannot be filed through TEAS.

In order to qualify for the reduced filing fee,

1. The application must meet certain filing requirements (discussed below) in addition to those required in order to obtain a filing date;
2. The applicant must file certain communications(discussed below) regarding the application through TEAS; and
3. The applicant must agree to receive communications concerning the application by e-mail.

The applicant will also be required to pay an additional processing fee if, at any time during examination of the application, the Office determines that those conditions are not met. The new fees will be

(i) For filing an application on paper, per class—$375.00,

(ii) For filing an application through TEAS, per class—$325.00,

(iii) For filing a TEAS Plus application, per class—$275.00, and

(iv) If required, additional processing fee, per class—$50.00.

TEAS applications that qualify for the reduced fee option will be referred to as ‘‘TEAS Plus’’ applications. The requirements for TEAS Plus applications include:

(1) The applicant’s name and address;
(2) The applicant’s legal entity;
(3) The citizenship of an individual applicant, or the state or country of incorporation or organization of a juristic applicant;
(4) If the applicant is a partnership, the names and citizenship of the applicant’s general partners;
(5) A name and address for correspondence;
(6) An e-mail address for correspondence, and an authorization for the Office to send correspondence concerning the application to the applicant or applicant’s attorney by email;
(7) One or more bases for filing. If more than one basis is set forth, the applicant must comply with the requirements for each asserted basis;
(8) Correctly classified goods and/or services, with an identification of goods
and/or services from the Office’s Acceptable Identification of Goods and Services Manual, available through the TEAS Plus form and at http://www.uspto.gov. In an application based on section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;
(9) If the application contains goods and/or services in more than one class, compliance with § 2.86;
(10) A filing fee for each class of goods and/or services;
(11) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the applicant;
(12) A clear drawing of the mark. If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark in .jpg format. If the mark includes color, the drawing must show the mark in color;
(13) If the mark is in standard characters, a mark comprised of only characters in the Office’s standard character set, currently available at http://www.uspto.gov, typed in the appropriate field of the TEAS Plus form;
(14) If the mark includes color, a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark;
(15) If the mark is not in standard characters, a description of the mark;
(16) If the mark includes non-English wording, an English translation of that
wording;
(17) If the mark includes non-Latin characters, a transliteration of those characters;
(18) If the mark includes an individual’s name or portrait, either (i) a statement
that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (ii) a statement that the name or portrait does not identify a living individual;
(19) If the applicant owns one or more registrations for the same mark, a claim of ownership of the registration(s) identified by the registration number(s), pursuant to § 2.36; and
(20) If the application is a concurrent use application, compliance with § 2.42.

TEAS Plus applicants must file the following communications through TEAS:

• Responses to Office actions (except notices of appeal under section 20 of the
  Trademark Act);
• Requests to change the correspondence address and owner’s address;
• Appointment and/or revocation of power of attorney;
• Appointment and/or revocation of domestic representative;
• Preliminary amendments;
• Amendments to allege use under section 1(c) of the Act or statements of use under section 1(d) of the Act;
• Request(s) for extensions of time to file a statement of use under section 1(d) of the Act; and
• Request(s) to delete a section 1(b) basis.

Copyright Office Orphan Works Roundtable Schedule

The U.S. Copyright Office will hold public roundtable discussions regarding so-called "orphan works" (copyrighted works whose owners are difficult or even impossible to locate) in Washington, D.C., on July 26-27, and in Berkeley, California, on August 2. The Office has identified several general topic areas for discussion during the roundtables, and has organized a preliminary agenda according to these issue areas. Persons wishing to participate in the roundtables must submit a request to participate to the Copyright Office by 5:00 p.m., E.D.T. on July 15, 2005.

Further information on the topic areas and the preliminary agenda and on how to submit a request to participate is now available on the Office's orphan works webpage at www.copyright.gov/orphan.

Portfolio Requests Investigation of Condoms Imported from India

On July 5, 2005, Portfolio Technologies, Inc. filed a "Section 337" complaint at the U.S International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Male Prophylactic Devices." Such complaints typically include allegations of infringement of a U.S. intellectual property right.

The proposed respondents are Church & Dwight Co., Inc., Princeton, NJ; Reddy Medtech, Ltd., Tamil Nadu, India; and Intellx, Inc., Petoskey, MI. The complaint has been designated as confidential and assigned Docket No. 2437 for indexing in the Commission's database.

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

Click here for more information on the importance of monitoring these ITC investigations, and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."

For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

WIPO Launches Electronic PCT Processing

On July 6, 2005 , the World Intellectual Property Organization announced that PCT applications filed in the Republic of Korea and Finland will now be processed in a fully electronic manner. Electronic processing means that no paper file will be established at WIPO. Record copies and all subsequent documents for these applications will either be scanned on receipt (if received on paper) or loaded directly into an electronic dossier (E-dossier) if received electronically.

WIPO intends to gradually deploy full electronic processing of applications received from other PCT receiving offices in the coming months.

European Parliament Finally Kills Software Patentability Directive

According to a July 6, 2005 report from Bloomburg, the European Parliament voted 648 to 14 againt the proposed "Directive on the Patentability of Computer-Implemented Inventions." Without the directive, "patents for computer-implemented inventions will continue to be issued by national patent offices and the European Patent Office," E.U. Commissioner Benita Ferrero-Waldner reportedly said to the IDG News Service. According to EC spokesman Oliver Drewes, the Commission has no intention of submitting a new software-patents proposal. "This means that patents on computer-implemented inventions continue to be validly granted by Patent Offices and enforced by the competent Authorities under the respective applicable national or supra-national laws," writes European Patent Attorney Axel Horns at his IPJUR Blog.

U.S. Copyright Office Corrects Nonsubstantive Regulation Errors

The U.S. Copyright Office has now conducted its annual review of its regulations and made various technical amendments to correct nonsubstantive errors in the text of the regulations. For further information, go to the CopyrightOffice website at http://www.copyright.gov/fedreg/2005/70fr38022.html

Chemical Drawing Freeware Upgrade

Advanced Chemistry Development, Inc., (ACD/Labs) has recently made available a new version of their freeware chemical drawing software, ACD/ChemSketch.

The new ACD/ChemSketch 8.0 Freeware matches many of the features present in the commercial version 8.0, which delivers extended capabilities for the chemical structure representation of both inorganics and polymers as well as its renowned existing support of organic structures. And, as of June 1, 2005, both the freeware and commercial versions include a fully-implemented IUPAC International Chemical Identifier (InChITM) protocol.

Visit http://www.acdlabs.com/download/chemsk.html to learn more about ACD/ChemSketch 8.0 Freeware.

2d Cir.: WhenU Pop-Up Ads Not Trademark Use

On June 27, 2005, the U.S. Court of Appeals for the Second Circuit rejected a trademark infringement action against WhenU.com for causing competitors pop-up ads to appear on the 1-800 Contacts.com website:

We hold that, as a matter of law, WhenU does not “use” 1-800’s trademarks
within the meaning of the Lanham Act, 15 U.S.C. § 1127, when it (1) includes 1-800’s website address, which is almost identical to 1-800’s trademark, in an unpublished directory of terms that trigger delivery of WhenU’s contextually relevant advertising to C-users; or (2) causes separate, branded pop-up ads to appear on a C-user’s computer screen either above, below, or along the bottom edge of the 1-800 website window. Accordingly, we reverse the district court’s entry of a preliminary injunction and remand with instructions to (1) dismiss with prejudice 1-800’s trademark infringement claims against WhenU, and (2) proceed with 1-800’s remaining claims.

As discussed by Mark Hamblett in the New York Law Journal on July 1, 2005, the decision reverses that of Southern District of New York Judge Deborah A. Batts, who had granted a preliminary injunction against WhenU.com, an Internet marketing company that uses a propriety software that monitors a computer user's Internet activity and then delivers advertising compatible with that activity. According to the appellate court,

The primary issue to be resolved by this appeal is whether the placement of pop-up ads on a computer user's (“C-user's”) screen contemporaneously with either the 1-800 website or a list of search results obtained by the C-user’s input of the 1-800
website address constitutes “use” under the Lanham Act, 15 U.S.C. §§1114(1), 1125(a). The district court reasoned that WhenU, by “causing pop-up advertisements for Defendant Vision Direct to appear when SaveNow users have specifically attempted to access [1-800]’s website, . . . [is] displaying [1-800]’s mark in the . . . advertising of . . . Vision Direct’s services.”

The fatal flaw with this holding is that WhenU’s pop-up ads do not display the
1-800 trademark. The district court’s holding, however, appears to have been
based on the court’s acceptance of 1-800’s claim that WhenU’s pop-up ads appear
“on” and affect 1-800’s website. As we explained above, the WhenU pop-up ads appear in a separate window that is prominently branded with the WhenU mark; they have has absolutely no tangible effect on the appearance or functionality of the 1-800 website.

More important, the appearance of WhenU’s pop-up ad is not contingent upon or related to 1-800’s trademark, the trademark’s appearance on 1-800’s website, or
the mark’s similarity to 1-800’s website address. Rather, the contemporaneous display of the ads and trademarks is the result of the happenstance that 1-800 chose to use a mark similar to its trademark as the address to its web page and to place its trademark on its website. The pop-up ad, which is triggered by the C-user’s input of
1-800’s website address, would appear even if 1-800’s trademarks were not displayed on its website. A pop-up ad could also appear if the C-user typed the 1-800 website address, not as an address, but as a search term in the browser’s search engine, and then accessed 1-800’s website by using the hyperlink that
appeared in the list of search results.

In addition, 1-800’s website address is not the only term in the SaveNow directory that could trigger a Vision Direct ad to “pop up” on 1-800’s website. For example, an ad could be triggered by a C-user’s search for “contacts” or “eye care,” both terms contained in the directory, and then clicked on the listed hyperlink to 1-800’s website. . . .

Significantly, WhenU’s activities do not alter or affect 1-800’s website in any way. Nor do they divert or misdirect C-users away from 1-800’s website, or alter in any way the results a C-user will obtain when searching with the 1-800 trademark or website address. . . . In addition, unlike several other internet advertising companies, WhenU does not “sell” keyword trademarks to its customers or otherwise manipulate which category-related advertisement will pop up in response to any particular terms on the internal directory. In other words, WhenU does
not link trademarks to any particular competitor’s ads, and a customer cannot pay to have its pop-up ad appear on any specific website or in connection with any particular trademark. Instead, the SaveNow directory terms trigger categorical associations (e.g., www.1800Contacts.com might trigger the category of “eye care”), at which point, the software will randomly select one of the pop-up ads contained in the eye-care category to send to the C-user’s desktop.

Reverse Whois Services List

The following list of Reverse Whois Service Providers was recently posted by the Domain Name Blog: DNS Stuff- Whois Source- Name.com- MarkMonitor- Marksmen- Cogent IPC

Unilin Challenges Laminated Floor Panel Imports from China

On July 1, 2005, Unilin Beheer B.V., Flooring Industries Ltd. and Unilin Flooring N.C.
filed a "Section 337" unfair import complaint at the U.S. International Trade Commission. The complaint requests that an unfair import investigation be instituted involving "Certain Laminated Floor Panels." Such complaints typically include allegations of infringement of a U.S. patent.

The proposed respondents are 3E Business Enterprises Ltd., Canada; AMZ (Ghangzhou) Wooden Industrial Co., Ltd., China; Changzhou Dongjia Decorative Materials Co., Ltd., China; Changzhou Saili Wood Co., Ltd., China; Changzhou Wujin Zhongxin Wood Co., Ltd., China; China Floors Co. Ltd., China; Dalton Carpet Liquidators, Inc. d/b/a Dalton Flooring Liquidators, AL; Fujian Yongan Forestry (Group) Joint Stock Co., Ltd., China; HFC Horizon Flooring Ltd., OH; Huzhou Yongji Wooden Co., Ltd., China; Inter Source Trading Corporation, China and Canada; Jiangsu Lodgi Woods Industry Co. Ltd., China; Lodgi North America, Inc., Canada; Pacific Flooring Manufacture, Inc., CA; P.J. Flooring Distributor, CA; Power Dekor Group Co., Ltd., China; Quality Craft, Ltd., Canada; R.A.H. Carpet Supplies, Inc., NJ; Salvage Building Material, Inc., NC; Shanghai Dekorman Flooring Co., Ltd., China; Shanghai Zhengrun Industry Development Co., Ltd., China; Shengda Flooring Corp., China; Stalheim Industries Sdn Bhd, Malaysia; Stalheim (USA), Inc., CA; Tsailin Floorings, Inc., China; Universal Floor Covering, Inc., CA; Vegas Laminate Hardwood Floors LLC, NV; Vohringer Wood Product (Shanghai) Co., Ltd., China; Yekalon Industry, Inc., China and Yingbin (Shunde-Foshan) Wood Industry Co., Ltd., China.

The complaint has been designated as confidential and assigned Docket No. 337-2435 for indexing in the Commission's database.

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

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

USPTO Fee Diversion Not Unconstitutional

In Figueroa v. United States (June 28, 2005), the Court of Federal Claims concluded that Congress’ practice of using money generated from patent application fees paid to the United States Patent and Trademark Office (“USPTO”) for purposes other than supporting USPTO operations did not violate the Intellectual Property Clause of the Constitution.

According to the opinion, inventor Miquel Figueroa's central point of argument is his claim that charging inventors fees that are not entirely used solely for the purpose of supporting the operations of the patent system is an irrational, unconstitutional burden on innovation that does not promote the progress of useful arts. However, the court was not persuaded:

In sum, during the past fourteen fiscal years, USPTO has taken in billions of dollars cumulatively in fees and has provided billions of dollars worth of services, most of which involved issuing more than 2 million patents. USPTO appropriations have increased by a factor of thirteen during that timespan. Congress is, thus, funding
USPTO operations, and funding them generously, with money assessed in the form of patent fees, although Congress has not dedicated all of the fees to that particular purpose, choosing instead to spend 4.4 percent of those fees on other priorities.
Congress’ determination of federal spending priorities and how the patent system
fits into national economic development goals is an eminently rational exercise of its
power.

Congress is entitled to great deference under the Necessary and Proper Clause when it legislates under its Intellectual Property power. Any intellectual property law Congress passes need only survive the limited scrutiny of the rational basis test as to
whether it promotes the progress of science and the useful arts. Plaintiff may well be
correct that the current patent fee regime is misguided and creates the wrong incentives, but such policy determinations are for Congress, and not the courts, to make. Plaintiff has not carried his burden of showing that Congress has behaved irrationally.

The United States Patent and Trademark Fee Modernization Act of 2005 (HR
2791) which is now before the House Committee on the Judiciary would create a "Patent and Trademark Fee Reserve Fund" for reunding excess fee collections to persons who paid patent or trademark fees during that fiscal year.

USPTO Completes Move to Virginia

On July 1, 2005, the United States Patent and Trademark Office announced that it has completed its move to the new, consolidated headquarters in Alexandria, Virginia. The complex offers a host of public amenities, including the popular Patent and Trademark Office Museum -- which will reopen on July 13 -- a full-service cafeteria, an auditorium, and Dulany Gardens, a landscaped two-acre park located at the center of the facility featuring benches, brick walkways, and a water fountain.

Puzzled about the Great European Software Patent Debate?

Then the IPKat recommends reading an article from the June 30, 2005 Financial Times. The author, James Boyle, is William Neal Reynolds Professor of Law at Duke Law School.

Intermec Requests Exclusion of Symbol's Mobile Computing Devices from Mexico

On June 30, 2005, Intermec Technologies Corporation filed a "Section 337" unfair import complaint at the U.S. International Trade Commission. The complaint requests that an unfair import investigation be instituted involving "Certain Hand-Held Mobile Computing Devices." Such complaints typically include allegations of infringement of a U.S. patent and request that the infringing goods be excluded from entry into the U.S. market.

The proposed respondents are Symbol Technologies, Inc., Holtsville, NewYork, and Symbol de Mexico, Sociedad De R.L. de C.V., Reynosa , Tambulipas Mexico. The complaint has been designated as confidential and assigned Docket No. 337-2434 for indexing in the Commission's database.

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

Click here for more information on the importance of monitoring these ITC investigations and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."

For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

TGIF for Fourth of July Headgear

U.S. Patent No. D503516 for "Cap with Integral Bottle Opener"issued to James Wysopal on April 5, 2005(via the Patently Silly Blog)

Effectiveness of Multiactive Inhibitors Insufficient to Support Utility of Selective Inhibitor for Fighting Cancer

In Rasmusson, et al. v. Smithkline Beecham Corporation (Fed Cir.; June 27, 2005), the claims related to a method of treating prostate cancer by using finasteride as a selective 5?R inhibitor. Both parties agreed that a person of ordinary skill in the art at the time of Rasmusson’s applications would have recognized that finasteride was a selective 5?R inhibitor. However, the parties disagreed as to whether a person of ordinary skill in the art would have believed, before June 27, 1990, that finasteride would be effective in treating prostate cancer

The court noted that there were various references demonstrating that multi-active 5?R inhibitors were effective in treating prostate cancer. However, it still required proof as of the filing date of the application regarding the utility of selective 5?R inhibitors in fighting cancer:

Rasmusson did not make any contrary showing that a person of ordinary skill in
the art as of the filing date of the third application would have recognized
that a selective 5?R inhibitor in general, or finasteride in particular, would
be effective in treating prostate cancer. In particular, the evidence cited by
Rasmusson on appeal does not contravene the Board’s finding, because that
evidence is either dated too late with respect to the respective filing dates of
the applications or pertains only to the use of multi-active inhibitors to treat
prostate cancer.

In order to obtain a priority date earlier than June 27, 1990, Rasmusson needed to provide experimental proof that his invention could be effective in treating cancer. Because Rasmusson failed to do so and obtained a priority date only as of the filing date of his ’296 application, the Board was correct to find that all applications prior to that application were not enabled, and that Rasmusson is not entitled to a priority date earlier than the priority date of SmithKline’s ’310 and ’553 patents and the corresponding reissue applications.

Rasmusson argues that the enablement requirement of section 112 does not mandate a showing of utility or, if it does, it mandates only a showing that it is "not implausible" that the invention will work for its intended purpose. As we have explained, we have required a greater measure of proof, and for good reason. If mere plausibility were the test for enablement under section 112, applicants could obtain patent rights to "inventions" consisting of little more than respectable guesses as to
the likelihood of their success. When one of the guesses later proved true, the
"inventor" would be rewarded the spoils instead of the party who demonstrated
that the method actually worked. That scenario is not consistent with the
statutory requirement that the inventor enable an invention rather than merely
proposing an unproved hypothesis. Because we have upheld the Board’s
determination of priority due to lack of enablement, it is unnecessary for us to
address the Board’s ruling regarding lack of adequate written description.

Grokster Web Conference July 12

In a free web conference on Tuesday, July 12, 2005 12:30 p.m. – 2:00 p.m. Eastern, Russell Beck and Mark J. Diliberti of Foley & Lardner will discuss Grokster and its practical implications for developed and developing technologies and copyright holders, including:

• The line between copyright protection and permissible innovation
• The Supreme Court's “inducement” theory of copyright liability and what constitutes unlawful conduct
• The state of contributory and vicarious liability theories for copyright infringement
• The effects of the Grokster decision on existing copyrights and technological innovation
• Traps for unwary developers and distributors of new technologies and how to avoid them
• Best practices for the protection of intellectual property in the wake of Grokster so please

Register here.