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Archived updates for Wednesday, November 30, 2005

Get .EU Domain Names without a European Facility

According to my colleague Harold Marquis, it may still be possible to register a .EU domain name even if the owner of the corresponding trademark in the U.S. does not have a European trademark registration, or a physical presence or licensee in Europe.

EC Regulation No 733/2002 states that only the following categories of companies, organisations and individuals will be able to register a .eu domain:
  1. undertakings having their registered office, central administration or principal place of business within the European Community;
  2. organisations established within the European Community without prejudice to the application of national law; and
  3. natural persons resident within the European Community.
However, according to Section 12(2) of the 2004 Public Policy Rules, "During the first part of phased registration [starting december 7], only registered national and Community trademarks, geographical indications, and the names and acronyms referred to in Article 10(3), may be applied for as domain names by holders or licensees of prior rights and by the public bodies mentioned in Article 10(1)."

In order to comply with these rules, at least one European law firm has established a licensing subsidiary with a physical presence in Europe that is ethically and legally bound to preserve domain name registrations for their non-European clients. Various firms have also pointed out that they can often obtain a trademark registration through the Benelux Trademark Office within about 48 hours.

More information on the .EU sunrise period beginning December 7, 2005 is available here.
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Translation and Transliteration in Chinese Trademarks

According to Bo Yu at the About Intellectual Property Blog, there are basically three ways to choose a Chinese trademark, by translation (meaning), by transliteration (sound), or a mix of the two (sound+meaning):

Microsoft’s Chinese name is a good example of translation. It is pronounced "Wei Ruan", which sounds totally different from the English word “Microsoft,” but those two Chinese characters together mean micro soft.

DELL’s Chinese name "Dai Er" is an exact transliteration, since there it has no meaning as a Chinese sir name. Foreign companies need to pay close attention when choosing Chinese transliterations becuase different Chinese words with the same pronunciation may have different meanings.

Most foreign companies choosing a Chinese trademark mix translation with transliteration. For example, Bloomberg’s Chinese mark is pronunced “Peng Bo,” sounding somewhat similar to Bloomberg and meaning "wide coverage," which is very suitable for Bloomberg's product and service.

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Patent Market Power Presumption Up for Grabs at S.Ct. Oral Argument

According to Tony Mauro writing for the Legal Times on November 29, 2005, U.S. Supreme Court Justices responding to oral arguments in Illinois Tool Works v. Independent Ink seemed to be moving away from earlier decisions that a patent creates a presumption of market power within a nationwide market for the product itself in antitrust disputes. However, his summary of the Justice's comments may not convince everyone:

Chief Justice John Roberts Jr. said the presumption puts the “heavy
lifting” in litigation on the patent holder. And Justice Ruth Bader Ginsburg,
noting that the presumption was a creation of the Supreme Court in the first
place, asked, “Why isn’t it the Court’s role to fix it up?”

Justice Stephen Breyer also expressed concern that without the presumption, “everything gets mixed up in the war of experts.”

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Descendible Rights of Publicity in the U.S.

In "Rights of Publicity and Entertainment Licensing" (Practising Law Institute), Edward H. Rosenthal explains, among other things, that many U.S. states now recognize a descendible right of publicity, by explicit statute or under common law:
    • California - 70 years after death. California also provides for registration by the heirs. Cal. Civ. Code § 3344.1 (d), formerly codified at §990(d). (Also a common law right, according to the Federal Courts).
    • Connecticut - common law (Federal Court).
    • Florida - 40 years. But only if spouse, issue or bequest. S.A. § 540.08.
    • Georgia - common law.
    • Illinois - 50 years. 765 Ill. Comp. Stat. § 1075/1.
    • Indiana - 100 years. (Without regard to where estate is located, statute includes distinctive appearance, gestures and mannerisms). Code § 32-12-1 and
      32-13-1-1.
    • Kentucky - 50 years. R.S. § 391.170.
    • Nebraska - no stated limit. R.S.A. §§ 20-208, 202.
    • Nevada - 50 years (without regard to where estate is located). R.S.A. § 598.984(i).
    • New Jersey - common law (Federal Court).
    • Ohio - 60 years. Rev. Code § 2741.
    • Oklahoma - 100 years. Stat. Tit. 12 § 1448(G).
    • Tennessee - (Elvis Presley) statute extends for 10 years, and, if used during
      that 10-year period, extends indefinitely until 2 years of non-use. Code § 47-25-1104.
    • Texas - 50 years. Prop. Code § 26.012(d).
    • Utah - common law (Federal Court).
    • Virginia - 20 years. Code § 8.01-40.
    • Washington - 10 for all; 75 for persons whose identity has “commercial value”
The author also notes that the following states have rejected claims for a descendible right of publicity: Mass., N.Y., R.I. and Wis. by statute; Pa. by Federal Court decision;
and Ariz., La. and Wash. by defeating legislation proposing to enact it.
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Archived updates for Tuesday, November 29, 2005

A Concise Guide to Asian Patent Information

The European Patent Office's new "Frequently asked questions (FAQ) on Japan, China and Korea" webpage provides answers to common questions about industrial property in Japan, China, and Korea. For cases where your question is not answered there, you can also write to them via a webform. If your question is of general interest, and if you agree, they will add it, together with their answer, to the FAQ site. Otherwise all information will be treated confidentially.

Among other things, the site provides an explanation of the Japanese patent numbering system, including how to convert the listed Japanese Imperial Years to Western Years:


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Teleseminar on Comparative Patent Enablement

Date: January 18, 2006
Time: 12:30 PM Eastern
Duration: 1 Hour
Contact Info@aplf.org for the dial-in number

"Patent Enablement and Written Description: A View from the United States, Europe and Canada"

Outline of Talk:
It is a basic tenet of patent law that a patent provide a comprehensive description of the invention and that the invention be "enabled". However, there exists a thicket of confusing and sometimes contradictory case law on this requirement. While this topic is of particular relevance to pharmaceutical and biotechnology patents, it is certainly not limited to these fields. It is critical to thoroughly understand what these requirements mean in practice and to keep abreast of recent cases. Europe, United States and Canada all apply subtly different approaches to the issue. We will discuss recent decisions on this topic and summarize the current state of the laws in these jurisdictions. We will also consider whether the laws in these jurisdictions are converging or diverging in this area, and practical steps that practitioners can take to ensure that these requirement are met.

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

Presenters:
Adrian Zahl [azahl@ridoutmaybee.com] from Ridout & Maybee LLP

Dr. Dirk Bühler [Buehler@maiwald.de] from Maiwald Patentanwalts GmbH

Michael R. Dzwonczyk [mdzwonczyk@sughrue.com] from Sughrue Mion, PLLC

Martin Huenges [Huenges@maiwald.de] from Maiwald Patentanwalts GmbH
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ANDA Time Limit Expiration Did Not Foreclose Preliminary Injunction

In Pfizer, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al (Fed. Cir.; November 22, 2005), the court affirmed the grant of the preliminary injunction against Teva and Ranaxby, finding that Ranbaxy failed to rebut the presumption of irreparable harm.

On December 27, 2002, Ranbaxy sought FDA approval to market its own generic version of Accupril® by filing its own ANDA and certifying that its product would not infringe the ’450 patent. Ranbaxy sent Warner-Lambert a paragraph IV certification letter on April 7, 2003, explaining why Ranbaxy believed its product would not infringe the ’450 patent. Ranbaxy’s letter indicated that it had adopted and relied upon the construction of "saccharide" Warner-Lambert had previously stipulated to in its case against Teva. Warner-Lambert did not respond to Ranbaxy’s letter or sue Ranbaxy within forty-five days of receiving the letter, which would have triggered a thirty-month stay of approval of Ranbaxy’s ANDA. See 21 U.S.C. § 355(j)(5)(B)(iii) (2000).

According to the appellate court, the district court did not abuse its discretion by not faulting co-plaintiff Warner-Lambert for its decision not to bring suit within forty-five days of receiving Ranbaxy’s paragraph IV certification letter.

Ranbaxy is correct to point out that evidence that a patent owner unduly
delays in bringing suit against an alleged infringer negates the idea of
irreparability. And Ranbaxy is also correct that the relevant statutory
provisions would have triggered the thirty-month stay of FDA approval of
Ranbaxy’s ANDA had Warner-Lambert sued. But there is no requirement that a
patent owner take advantage of the statutory carrot of a thirty-month stay, and
certainly no statutory stick for choosing not to. Moreover, Teva, as the first
party to file an ANDA, held exclusive generic rights. There was therefore no
immediate need for Warner-Lambert to sue Ranbaxy. And the fact that
Warner-Lambert filed suit against Ranbaxy within two months of the launch of
Ranbaxy’s quinapril formulation supports the district court’s rejection of the
idea that Warner-Lambert unduly delayed in bringing suit against Ranbaxy. Thus,
the district court did not clearly err or otherwise abuse its discretion in determining
that Ranbaxy did not meet its burden of rebutting the presumption of irreparable
harm.

For the reasons discussed, we conclude that the district court did not abuse its discretion in its analysis of the harm to Warner-Lambert.

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Archived updates for Monday, November 28, 2005

Combined Apparatus/Method Claim Indefinite

In IPXL Holdings, L.L.C. v. Amazon.com, Inc. (Fed. Cir.; November 21, 2005), the court held that "Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2."

Claim 25 recited:

The system of claim 2 [including an input means] wherein the predicted
transaction information comprises both a transaction type and transaction
parameters associated with that transaction type, and the user uses the input
means to either change the predicted transaction information or accept the
displayed transaction type and transaction parameters.

According to the court, it was unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. According to the court:
Whether a single claim covering both an apparatus and a method of use of
that apparatus is invalid is an issue of first impression in this court. The
Board of Patent Appeals and Interferences ("Board") of the PTO, however, has
made it clear that reciting both an apparatus and a method of using that
apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte
Lyell
, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, "the statutory
class of invention is important in determining patentability and infringement."
Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v.
Goodyear
, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as a
result of the combination of two separate statutory classes of invention, a
manufacturer or seller of the claimed apparatus would not know from the claim
whether it might also be liable for contributory infringement because a buyer or
user of the apparatus later performs the claimed method of using the apparatus.
Id. Thus, such a claim "is not sufficiently precise to provide competitors with
an accurate determination of the 'metes and bounds' of protection involved" and
is "ambiguous and properly rejected" under section 112, paragraph 2. Id. at
1550-51. This rule is well recognized and has been incorporated into the PTO's
Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) ("A single claim
which claims both an apparatus and the method steps of using the apparatus is
indefinite under 35 U.S.C. 112, second paragraph."); see also Robert C. Faber,
Landis on Mechanics of Patent Claim Drafting § 60A (2001) ("Never mix claim
types to different classes of invention in a single claim.").
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Intent to Appropriate Goodwill Required for Willfulness

In WESTERN DIVERSIFIED SERVICES, INC v.HYUNDAI MOTOR AMERICA, INC. (10th Cir.; November 1, 2005) , the court held that the willfulness required to support an award of profits or attorney fees under the Trademark Act typically requires an intent to appropriate the goodwill of another's mark:

"However, the standard we adopt today does not categorically preclude all
other possibilities. Because an award of profits under the Lanham Act is
grounded in equity, there may be other situations that constitute willful
infringement even though the defendant does not intend to derive any benefit
from the plaintiff's goodwill or reputation. For example, if the defendant
deceives the plaintiff into thinking he has ceased infringing the trademark when
in fact the illegal action continues, a finding of willfulness might be
appropriate. Similarly, misrepresentation to the courts might constitute willful
infringement. Finally, if the wrongdoer uses its own economic muscle to weaken a
plaintiff who has threatened an infringement action, a finding of willfulness
might be justified. At the end of the day, courts must be guided by familiar
principles of equity, but we believe that situations such as those described
above may be exceptions rather than the rule. However, those situations are not
before us, so we do not need to explore the parameters of such possibilities. In
the typical case, the willfulness required to support an award of profits in the
absence of actual damages is the intent to benefit from the goodwill or
reputation of another."

". . . In our trademark cases dealing with the likelihood of confusion, we have held that the "deliberate adoption of a similar mark may lead to an inference of an intent to pass off goods as those of another . . . ." Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 927 (10th Cir. 1986); see also Universal Money Ctrs., 22 F.3d at 1532. As the non-moving party, Western is entitled to the benefit of this presumption. Matsushita Elec. Indus. Co., 475 U.S. at 587. Even though we established this presumption in a likelihood-of-confusion case, we conclude that it is appropriate to apply the presumption here, particularly because our intent inquiry is the same in both situations."

. . . Here, the evidence indicates that Hyundai appropriated not one, but two of Western's marks, "THE ADVANTAGE" and "THE ADVANTAGE PLUS." Furthermore, Hyundai's marks were not only similar to Western's, they were identical and referred to substantially similar products aimed at the same group of consumers, i.e. automobile purchasers.

Considering the larger factual context of the case in conjunction with the factual dispute over Hyundai's knowledge, we are compelled to presume that Hyundai's deliberate adoption of two similar marks could lead to an inference that it intended to benefit from Western's goodwill.

But we do not hold as a matter of law that Hyundai actually possessed such an intent. Like almost every presumption in the law, the one we apply today may be rebutted by competent evidence in front of a jury. Hyundai argues that its initial selection of the "Bumper-to-Bumper" name for its extended warranty and the prominence of its corporate logo on the warranty brochures shows that it did not have the requisite intent for willful infringement. These arguments are not without merit, and it may well be that they will win the day when considered by the jury. But at this point in the proceedings, all that can be said is that the parties have established a genuine factual dispute over the intent required for willful infringement. Under Fed. R. Civ. P. 56, nothing else need be shown for the plaintiff to avoid summary judgment.

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Archived updates for Friday, November 25, 2005

TGIF for Adjustable Pants


U.S. Patnet No. 5,575,010 to Chung Chin-Fu

"A pair of pants in which a plurality of snaps are mounted around the waistband for adjusting its size, and hook & loop materials are fastened to the inside of the legs for adjusting their length."

Thank Goodness It's (the) Friday (after Thanksgiving),

--Bill Heinze
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Damages Theory Properly Excluded by Evidentiary Rulings

In Microstrategy, Inc. v. Business Objects, S.A., et al. (Fed. Cir. November 17, 2005) the court found no abuse of discretion in the district court’s exclusion of MicroStrategy’s expert reports, expert testimony, and additional non-expert damage theories which disposed of much of the dispute with various evidentiary rulings.

MicroStrategy’s business tort case relied heavily on the presentation of its damages expert, David E. Yurkerwich, managing director and chairman of InteCap, Inc., and his three expert reports. These three expert reports, however, were excluded primarily due to a flawed methodology that did not consider relevant factors in its damages analysis, while the non-expert damage theories were excluded due to a failure to timely supplement discovery interrogatories.

During the "dot com" bubble burst of the late 1990s, MicroStrategy began to suffer severe financial problems and a major accounting error required a downward readjustment of its 1997, 1998, and 1999 earnings reports. In the aftermath, MicroStrategy’s stock plummeted 62% in one day, eventually falling from a high of $313 per share to a low of 49 cents per share. The company also faced a U.S. Securities & Exchange Commission (SEC) investigation and a series of class action law suits. As MicroStrategy fought to remain solvent, it laid off two thirds of its workforce and cut its sales and marketing budget in half. MicroStrategy’s chief executive officer (CEO) summed up this period in three words: "It was painful."

According to the decision:

Confronted first with the initial expert report, the district court properly concluded that, despite the rather obvious role that MicroStrategy’s financial instability played in the company’s ongoing struggles, Yurkerwich attributed all of the company’s post 2000 losses solely to the alleged tortious conduct by Business Objects. No wonder that the district court found that the expert report did not link a single misconduct to a specific injury.

In this case, the record shows that the excluded expert report did not link a single loss to a specific misconduct and ignored significant factors that might have excluded the torts as the reason for the losses. For these reasons, the district court was well within its discretion to exclude it. . . . As to the supplement and revised report, the district court also excluded these reports because they both suffered from the same flawed methodology as the initial expert report.

The district court also acted within its discretion in preventing Yurkerwich from testifying at trial. . . . In this case, the district court determined that Rule 702 was not satisfied, in part, because Yurkerwich’s principles and methods, as disclosed in his three expert reports, were speculative and unreliable. For this reason alone, the district court was well within its discretion to prevent Yurkerwich from testifying.

The district court also acted within its discretion in excluding MicroStrategy’s non-expert damages theories for failure to supplement discovery interrogatories. Specifically, during the discovery process, Business Objects served an interrogatory on MicroStrategy that required MicroStrategy to identify its damages theories and the factual basis and methodology for its calculations. At trial, MicroStrategy sought to introduce evidence of damages not disclosed in response to that interrogatory.

[MicroStrategy acknowledged that] no supplements incorporating the non-expert damages evidence were ever filed. Specifically, MicroStrategy sought to excuse its failure to supplement because they had relied on their expert report which the district court excluded on the eve of trial and left no time to supplement the interrogatory responses again:

THE COURT: You made reference to the [expert] report . . . which is no longer relevant to this particular case
Mr. MOLL: Hm-hmm
THE COURT: You never supplemented your answers
Mr. MOLL: No, we didn’t, because again, the procedural posture of this was, the [expert] report had been submitted at the time
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Study Identifies Flaws In Internet Take-Down Process

Laura Quilter and Jennifer Urban at the University of Southern California, have released a summary report of findings from their study of takedown notices entitled "Efficient Process or 'Chilling Effects'? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act." Section 512 grants safe harbor from secondary copyright liability to online service providers as long as they respond to cease-and-desist letters from copyright complainants by pulling their users’ information—web pages, forum postings, blog entries, and the like—off the Internet. Among the authors' conclusions:
  • Thirty percent of notices demanded takedown for claims that presented an obvious question for a court (a clear fair use argument, complaints about uncopyrightable material, and the like);
  • Notices to traditional ISP’s included a substantial number of demands to remove files from peer-to-peer networks (which are not actually covered under the takedown statute, and which an OSP can only honor by terminating the target’s Internet access entirely); and
  • One out of 11 included significant statutory flaws that render the notice unusable (for example, failing to adequately identify infringing material).
  • Over half—57%—of notices sent to Google to demand removal of links in the index were sent by businesses targeting apparent competitors;
  • Over a third—37%—of the notices sent to Google targeted sites apparently outside the United States.

"The surprising number of questionable takedowns we observed," write the authors, "taken in conjunction with the ex ante removal of content, the minimal remedies for abuse of the process, and the lack of knowledge about the counternotice procedures, suggest that few are well-served by the current Section 512 process, and some or many individuals, as well as public discourse and the Internet’s value as an expressive platform, may be harmed."

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Archived updates for Wednesday, November 23, 2005

Krause Cancels Registration by Former Employer, Krause Publications

In a citeable decision that John Welch at the TTABlog calls "as rare as a White Sox fan in Boston," the U.S. Trademark Trial and Appeal Board granted Chester L. "Chet" Krause's petition to cancel a registration under section 2(c) for the mark KRAUSE PUBLICATIONS in connection with various goods and services relating to coin collecting, antique autos, and other topics in Krause v. Krause Publications, Inc. , Cancellation No. 92041171 (November 18, 2005).

Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), prohibits registration of a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent. A name is considered to "identify" a particular living individual for purposes of Section 2(c) only if the "individual bearing the name in question will be associated with the mark as used on the goods [or services], either because the person is so well known that the public would reasonably assume the connection, or because the individual is publicly connected with the business in which the mark is used."

Mr. Krause founded a periodical called "Numismatic News" in October 1952 and was later involved in founding the registering company, Krause Publications Publications, Inc. For nearly fifty years, Mr. Krause was associated with Krause Publications as its president and/or chairman of the board and subsequently as an employee. Although he did not demonstrate that he is so well known by the public in general that persons would assume a connection between petitioner and the mark KRAUSE PUBLICATIONS, the Board did find that
"There is sufficient evidence to establish that petitioner is publicly connected, at the very least, with the fields of numismatics, car collecting, and publishing activities related thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by people who have an interest in these fields."
With regard to whether Mr. Krause had consented to allowing the corporation to use his name, the Board also noted that

In the present case, the incorporation of petitioner’s business is not akin to the "buy out" agreement in Kaplan. There is no evidence that petitioner expressly stated that the mark KRAUSE PUBLICATIONS is the property of respondent. Neither did petitioner agree to refrain from use of the name Krause in any subsequent business. Petitioner’s mere incorporation of his business does not constitute his written consent to that business’s (i.e., respondent’s) registration of the mark KRAUSE PUBLICATIONS. . . . Respondent has pointed to no provisions (and we have found none) in the financing documents made of record where petitioner stated that the mark KRAUSE PUBLICATIONS is the property of respondent.

There is a distinction between the right to use a name and the right to register one. A person may give express or implied consent to the use of his name, but that does not necessarily mean that he consents to the registration of it. Thus, even if we were to find that petitioner had impliedly consented to respondent’s use of his name in connection with the business as it was conducted at the time petitioner was involved with respondent, such consent would not constitute a consent to register petitioner’s name as a trademark. On the other hand, a consent to register a name as a trademark, even without a specific reference to a consent to use, would impliedly constitute a consent to use the name, since a federal registration may not be obtained (with an exception not relevant here) or maintained without use.

Krause also argued that given its decades long use of the mark KRAUSE PUBLICATIONS and petitioner’s silent acquiescence in that use, Mr. Krause should be estopped from challenging respondent’s registration. However, here again,the Board noted a difference between acquiescence to registration or use. Citing James Burrough, Ltd. v. La Joie, 462 F.2d 570, 174 USPQ 329 (CCPA 1972), the Board concluded that it is clear "that the equitable defense of acquiescence in an opposition or cancellation proceeding does not begin to run until the mark is published for opposition."
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Who Wins in First-to-Invent Patent System?

In "Competition, Innovation and Racing for Priority at the U.S. Patent and Trademark Office," Linda R. Cohen and Jun Ishii, of the Department of Economics at UC Irvine, analyzed a random
sample of patent interferences to investigate the impact of patent policies on innovation
strategies, and found that

Like other critics, we do not find evidence that the system works to the benefit of
small inventors or firms. Small firms rarely avail themselves of the interference process. But if we assume that the winner of an interference is the first-to-invent, the results suggest that small inventors do not suffer from a filing disability. Alternatively, there is some indication that other groups do have such problems - both the u.s. government and u.s. universities, for example, are far more likely to enter our sample as junior parties, yet they win a reasonable share of cases, which suggests that both institutions systematically take longer to fie patent applications than do private firms and individuals. However, we need more data to establish the trend statistically.

In any event, the authors' data appears to support the argument that the first-to-file "Senior Party" usually wins the interference anyway:

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Archived updates for Tuesday, November 22, 2005

UN Interprets Covenent on Author's Rights

According to William New, writing for Intellectual Property Watch on November 21, 2005, the United Nations Committee on Economic, Social and Cultural Rights has adopted a General Comment interpreting Article 15.1.c of the International Covenant on Economic, Social and Cultural Rights regarding protection of authors of written, music, art and other works.

The Committee on Economic, Social and Cultural Rights (CESCR) is the body of independent experts that monitors implementation of the covenant by its States parties. All States parties are obliged to submit regular reports to the Committee on how the rights are being implemented. States must report initially within two years of accepting the Covenant and thereafter every five years. The Committee examines each report and addresses its concerns and recommendations to the State party in the form of “concluding observations”.

Article 15.1.c requires "The States Parties to the present Covenant recognize the right of everyone to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author." The new General Comment concludes that
The Committee considers of fundamental importance the integration of
international human rights norms into the enactment and interpretation of
intellectual property law. Consequently, States parties should guarantee the
social dimensions of intellectual property, in accordance with international
human rights obligations to which they have committed themselves. An explicit
commitment to do so and the establishment of a mechanism for a human rights
review of intellectual property systems are important steps towards that goal.

Lead drafter Eibe Riedel, a law professor at the University of Mannheim, Germany, reportedly said “The significance of this interpretation is that states, when they have to report to our committee once every five years, will have to report on [Article 15.1.c], which had never been done before.” Riedel also said it likely would fall to non-governmental organisations to inform committee members of violations in countries before the governments report to the committee. “Now if NGOs are clever, they will use this,” he said. Victims may be entitled to compensation or satisfaction.
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Pressure Growing on Ireland's "Harmful Tax Competition" for High Tech Companies

According to a November 20, 2005 article in Ireland's the Sunday Business Post Online, the emerald isle is facing a threat to its tax revenues from the European Union and the United States as international concerns grow about the attractiveness of Ireland's low-tax regime for high-tech companies.

"The European Commission has published proposals for the harmonisation of
the European corporation tax base, effectively standardising the way tax is
calculated across Europe, which Ireland's EU Commissioner Charlie McCreevy has
described as tax harmonisation 'by the back door.' Now pressure is also
growing on the US government following news stories which have shown that US
companies such as Microsoft and Google are avoiding hundreds of millions of
dollars in US taxes by paying the lower rates of corporate tax in
Ireland. . . . Although the commission's plans to harmonise the tax base are being vociferously opposed by McCreevy, EU tax commissioner Laszlo Kovacs identified harmonisation of the tax base as one of his two main priorities.The commission's tax directorate has also said it intends “to continue the fight against harmful tax competition'‘."
A November 21, 2005 article by FinFacts Ireland also quotes these statistics from Deloitte & Touche, 2005 regarding percentage increase in profit required to achieve the same distributable income available in Ireland:
Germany 46%
USA 45%
Spain 35%
Netherlands 34%
France 33%
Belgium 33%
UK 25%
Estonia 18.24%
Cyprus 2.94%
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Summary of U.S. Congressional Hearing on Fair Use

Cathy Kirkman at the Silicon Valley Media Law Blog has posted an excellent summary of the hearing on November 16,2005 by the House Committee on Energy and Commerce concerning "Fair Use: Its Effect on Consumers and Industry." She notes in her introduction that "Predictably, the witnesses represented opposite ends of the spectrum in their viewpoints on the appropriate scope and public policy justifcations for fair use under the copyright law."
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Esp@cenet Offers Full Patent Downloads in PDF Format

Thanks to Axel Horn at IPJUR for pointing out that The European Patent Office's
Esp@cenet worldwide patent database now offers full document downloading in PDF format for single patents. Just choose the "Mosaics" or "Original document" tabs and then click on the red "Save Full Document" link above the PDF viewerat the top of the page. You'll be prompted to complete a word verification screen in order to start the download.

For dowloading multiple patent documents, check out the resources described in Stephen Nipper's "Guide to Downloading Patent Copies on the Internet."
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Happy Anniversary to Inside Opinions Legal Blog Watch

Congratulations to my fellow Law.com blog affiliates and affiliates emeriti for a fantastic first year as the pioneering Law.com Blog Network. Inside Opinions Editor Lisa Stone forged a path for the viral syndication unit you see on the right hand side of this page (yes, the "fat-boy" or "@!#$%!!!" ad, as it's known) and then provided the just the right stuff to keep it all going. I can't thank her, or American Lawyer Media's Jennifer Collins, enough for recognizing the potential of these (and other) blogs:
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Archived updates for Monday, November 21, 2005

USPTO Continuing Application Trends

At the USPTO's Biotechnology and Pharmaceutical Customer Partnership Meeting on November 10, 2005, Commissioner for Patents John Doll presented the following information on patent application pendancy as of October 1, 2005:



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USPTO Biotech and Pharma Pendency and Projections

At the USPTO's Biotechnology and Pharmaceutical Customer Partnership Meeting on November 10, 2005, Commissioner for Patents John Doll presented the following information on patent application pendancy as of October 1, 2005:



And here are the USPTO's pendency projections under various scenarios:

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Cited References in U.S. Patent Applications

Source: Presentation by Commissioner John Doll at USPTO's Biotechnology and Pharmaceutical Customer Partnership Meeting on November 10, 2005.
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USPTO Claim Distribution Data

At the USPTO's Biotechnology and Pharmaceutical Customer Partnership Meeting on November 10, 2005, Commissioner for Patents John Doll presented the following information on patent claim distribution:




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Counterfeit Drug Rate Estimates Reach 10% Worldwide

Reporting on the Second Global Congress Combating Counterfeiting and Piracy, Tove Iren S. Gerhardsen of Intellectual Property Watch wrotes on November 15, 2005 that the WHO estimates that counterfeit drugs account for 10 percent of all pharmaceuticals globally, rising to 25 percent in developing countries according to Interpol. In fact, a survey of Nigeria indicated that 80 percent of the drugs distributed in major pharmacies in the capital city of Lagos were counterfeit according to Interpol conference data. The situation often gets worse in cases of emergency (such as the tsunami in Asia), said Eric McIntosh, chief investigator of the surveillance unit of the Australian Therapeutic Goods Administration.

Chris Israel, coordinator for international intellectual property enforcement at the US Department of Commerce, reportedly told Intellectual Property Watch that one could not help seeing the issue of counterfeit medicines as having more of a human impact than other counterfeit issues:

However, he noted that this issue was “part of a larger environment” and the issue was linked with other counterfeit issues. Thus they all had to be fought with “equal energy,” he said. Critics have charged that industry and government have at times held up incidents in the pharmaceutical and airplane parts industries to win public
sympathy for an overall anti-counterfeit agenda.

The issue of whether lower prices in general would reduce the amount of counterfeits was not discussed at the conference but when asked about the issue, Israel replied that “those are market decisions.” He said that his unit’s focus was to create an environment to confront stolen intellectual property, while the companies’ role was to produce the best products possible. “Our primary focus should be on enforcement,” Israel said.

For more information on counterfeit drugs, visit www.safemedicines.org.
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Archived updates for Friday, November 18, 2005

USPTO Issues Performance and Accountability Report for 2005

Here are a few of the graphics from the USPTO Performance and Accountability Report for 2005:






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Unenfrceability for Prosecution Laches Extended to All Claims in Patents

In a decision that the Intellectual Property Owners Association gives four stars for its impact on patent & trademark law, the court in Symbol Technologies, Inc. v. Lemelson Foundation (Fed. Cir.; November 16, 2005) expanded its finding of unenforceability for prosecution laches to all 76 claims in the 14 Lemelson patents at issue:

"Although the district court did not make its resolution of the laches
issue applicable to the remaining claims, holding that the question would be
decided only if it later became necessary to do so, in our view, the more
appropriate course of action is to apply the laches holding to all of the claims
in the 14 asserted patents. Lemelson does not provide any persuasive reason why
that should not be so.

All of the claims were in issue in this lawsuit, and all were held invalid and not infringed. Moreover, all of the claims are purportedly supported by the same specification with the same effective filing dates. Thus, all of the subject matter in the patents in suit was pending for an unreasonably long period of time, and the delays in prosecution to issuance of the asserted 76 claims applied to all of the remaining claims. Accordingly, in this exceptional case, prejudice to the public as a whole has been shown here in the long period of time during which parties, including the plaintiffs, have invested in the technology described in the delayed patents. These are sufficient bases to extend the district court’s laches holding of
unenforceability of the 76 asserted claims to all of the claims of the asserted
patents. Thus, we hold that all of the claims of the 14 asserted patents are
unenforceable under the doctrine of prosecution laches.

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IP Industries Driving U.S. Economic Growth

In "Engines of Growth: Economic Contributions of the U.S. Intellectual Property Industries," Stephen E. Siwek of Economists Incorporated, presents a variety of statistical measures that quantify the economic contributions of these industries to the U.S. private sector and to the U.S. economy as awhole. Here some of his findings:
  • The IP industries are major growth drivers of the current U.S. economy,
    contributing nearly 40% of total growth today, significantly outpacing the
    country’s overall growth rate.
  • GDP 10-year growth estimates would be approximately 30% lower than current
    predictions without the contributions of the IP industries.
  • In 2003 IP Industries comprised nearly 20% of the U.S. private industry’s total contribution to GDP and nearly 40% of the GDP of U.S. exportable products and services.
  • The IP industries are among the largest employers in the country, with nearly
    18 million workers. Also, the IP industries pay a significantly higher wage to
    its employees than most other industries.
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TGIF for Perpetual Motion Patents

Why The IPKat likes patents for perpetual motion machines:
"They shouldn't need to be expensive to examine once you rumble the concept, so the patent office should get good income from them. The inventor is happy because he's got his patent. The patent agent is happy because he gets his fees. Other manufacturers sleep soundly because, if the invention is contrary to the laws of nature, there's not much risk of infringing it. Merpel adds, there's not much sympathy for investors. They're prepared to sink a lot of money each year into patents that don't work even if they're not contrary to the laws of nature; if they don't do their due diligence, it's their own fault."
In the meantime, I/P Updates certainly won't lose any sleep over which form to use when submitting a client's working model to the USPTO.
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Archived updates for Thursday, November 17, 2005

UKPO Consultation on Patent Forms

The U.K. Patent Office is undertaking a review of its statutory forms with a view to reducing the administrative burden on external users. They also want to make more forms available for electronic filing and case file management as part of the Office’s e-Business and Information Systems Strategy. For example, they have proposed merging the respective forms covering identical actions for patents, trade marks and registered designs to improve processing efficiency.

Responses are welcome from anyone interested in the intellectual property system in the UK, but especially those who have been or expect to be users of the system. Comments from anyone who regularly completes Patent Office forms would be particularly useful to us. The response deadline is Wednesday, February 1, 2006.
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CAFC Construes "Hand-Grip Size Case"

In Kapusta v. Gale Corp. (Fed. Cir., November 15 2005, not citeable as precedent), the court considered a claim to a portable test instrument including a "hand-grip size case" represented by element 72 in U.S. Patent No. 6043663 (left). The court noted that although the term may be of a nonspecific size and shape, it is not ambiguous. Therefore, "The [lower] court should have given the term "hand-grip size case" its ordinary and customary meaning. . . . The ordinary and customary meaning of 'hand-grip size case' is a case of a size that can be gripped in a normal hand. . . . "

The limitation was added after the Board of Patent Appeals and Interferences ("BPAI") rejected the applicant’s broad argument that the invention is distinguishable over the prior art because it is "portable." But the BPAI also pointed ot that "there is no teaching or suggestion in [the references cited upon which the rejection was made] of a hand grip size case and therefore we will not sustain this rejection . . . ."

According to Circuit Judge Lourie, the district court incorrectly established the size dimensions of the "hand-grip size case" from a preferred embodiment described in the specifications and shown in the drawings. He then remanded the case for a determination of just what "can be gripped in a normal hand:"
While we might, on the basis of that meaning, make our own judgment on the question of infringement, based on the record, the better practice is to have the district court make that factual determination on remand. We therefore remand for the court to redetermine whether Gale’s Products meet the limitation as we have construed it.
If it doesn't fit, you must acquit. . . .
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Invent Now and Win $25000

The United States Patent and Trademark Office is joining the National Inventors Hall of Fame and the History Channel in sponsoring the Modern Marvels Invent Now Challenge. Twenty-five semi-finalists will have the opportunity to be recognized, have their invention exhibited and receive valuable information to help them realize the full potential of their invention. The most remarkable invention submitted will be named the 2006 “Modern Marvel of the Year” and the inventor will win $25,000.

The deadline for entry is December 31.
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Introducing the Patent Commons Project

The Open Source Development Labs (OSDL) has launched an "online patent commons reference library" at patentcommons.org with searchable databases containing "promises, pledges, covenants and other legal undertakings made by contributors" to benefit open source software and standards. According to their website:
"This Project addresses one part of the many challenges facing software
developers and users. With the support of companies and individuals who
recognize and value the innovative opportunities that open software and open
standards create, we offer an easy way for people to navigate and understand
what is available through The Commons. We invite you to join us. The Patent
Commons Project helps reduce risks for developers and users of open source software and standards, by documenting the boundaries of The Commons to
facilitate their use by developers and users, and encouraging companies and
individuals to pledge or contribute software patents they hold in support of
open source software and standards."
Learn more about how to contribute to The Commons.
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Archived updates for Wednesday, November 16, 2005

U.S. to China: Move Faster on IPR Protection

The following was excerpted from the Remarks by Ambassador Rob Portman, United States Trade Representative, at the Conference on China-U.S. Relations: Trade, Diplomacy and Research in Beijing, China on November 14, 2005:
. . . Finally, perhaps the most common and sometimes most frustrating
response I hear from the Chinese is that the government is working on the
problem but it will take lots of time. We have heard it with currency and we
also hear this very often in regard to the protection of intellectual property
rights. Sometimes the argument is made that the United States took over a
century to develop its intellectual property protection system, and that China
to date has only had a couple of decades.

It is hard to develop a full and thorough system for the protection of
IPR. But China is not building this system from scratch, and Chinese companies
seem to understand these concepts pretty well when they invest in other
countries. We have been working intensely with China on intellectual property
protection for more than a decade – beginning in the early 1990s. We have had
several agreements and there has been significant improvement in some areas - in
the development of IP laws.

We remain eager to work with the Chinese to help them improve their
system. Just last week, for example, we had excellent meetings here in Beijing
with representatives from both of our governments to discuss this problem and
practical solutions. To date, though, the problem of intellectual property
protection is not being solved quickly enough. There are obvious areas in which
China can and should act immediately.

For example, China should roll up the illegal distribution networks
that are known to bring millions of fake DVDs and CDs to market. Fakes on every
street corner are an unbecoming symbol for a world power such as China.
Likewise, government offices and government-controlled firms should be not use
fake software.

Last September, when they met in New York, President Hu told President
Bush that he was taking a personal interest in solving the IPR issues. This was
an important and welcome statement.

And the Chinese government has good reason to crack down on piracy
themselves. While U.S. firms suffer huge losses from IP piracy and
counterfeiting and while this is a disproportionate impact on US knowledge based
exports, the losses faced by Chinese firms and by Chinese entrepreneurs and the
Chinese economy are even greater. Well-known Chinese marks such as Haier, for
example, suffer from copycat productions of their goods. Chinese musicians,
movie studios, and authors lose profits from their own efforts because they
cannot enforce their own legal rights throughout the country.

This problem needs to be fixed sooner rather than later, because U.S.
knowledge-based exports are disproportionately affected. It is important for the
bilateral U.S.-China relationship, and it is important for China's own economic
development. . . .
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Japan Proposes Counterfeit Non-Proliferation Treaty

According to the November 15, 2005 issue of Intellectual Property Watch, international reactions were mixed in response to Japan's proposal for a Treaty on Non-Proliferation of Counterfeits and Pirated Goods at the second “Global Congress on Combating Counterfeiting and Piracy.”

Hisamitsu Arai, Secretary General of the intellectual property strategy headquarters cabinet secretariat in Tokyo said the treaty was not unique in its focus on the import, export and transshipment of illegal goods. The treaty would reportedly introduce legal obligations to ensure countermeasures against piracy were taken at the borders of the exporting countries. Enforcement agencies would also co-operate and share “process of measures” data, meaning their respective processes of seizures, confiscation and destruction and removal of manufacturing equipment.

Many of the participants said it was too early to comment on the potential of the treaty proposed by Japan, while others questioned it. Lawrence S. P. Wong, deputy commissioner of Hong Kong Customs and Excise Department, told Intellectual Property Watch that they already do everything that is proposed in the treaty. He said that “action is much more important” than words.
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Motorola Moves I/P Work to the Suburbs

According to an October 31, 2005 article in The Lawyer, Motorola has slashed its legal budget by $200m (£112m) and halved the number of law firms it uses:
"Motorola went through some difficult times about five years ago. We've taken a very sharp pencil to our patent-generation costs and developed a number of low-cost sources for our legal work," said Motorola global general counsel Peter Lawson

The company has outsourced its in-house patent-generating work to small Indian firms and is increasingly hiring regional firms such as Hammonds and Osborne Clarke. The company produces around 1,000 new patents a year.

UK head of legal Palwinder Hare was promoted to head the Europe, Middle East and Africa department last week. He said the company did not consider City firms to provide "value for money". Hare claimed: "We don't go straight for the big City firms because we don't feel their fees are justified."
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Public Comments on U.S. Restriction Practice

Thanks to ReThink IP for pointing out that the USPTO has now posted the public comments that it received in response to its Request for Comments on Green Paper Concerning Restriction Practice, first published in the Federal Register at 70 Fed. Reg. 32761 (June 6, 2005) and then published in the Official Gazette at 1295 Off. Gaz. Pat. Office 146 (June 28, 2005), and published to announce an extension of the comment period in the Federal Register at 70 Fed. Reg. 45370 (August 5, 2005).

A. Intellectual Property Organizations

Bar Association of the District of Columbia, Patent, Trademark & Copyright Section
Biotechnology Industry Association (BIO) [PDF]
FédérationInternationale des Conseils en Propriété Industrielle [PDF]
JapanIntellectual Property Association (JIPA) [PDF]
NationalAssociation of Patent Practitioners (NAPP) [PDF]

B. Government Agencies

National Institutes of Health, Department of Health & Human Services (NIH) [PDF]

C. Corporations

Genentech, Inc. [PDF]
IBM Corporation [PDF]

D. Individuals

Henry, Jon [PDF]
Johnson,Robert T. [PDF]
Juneau, Todd L. [PDF]
Lindeen,Gordon [PDF]
Lindon, James [PDF]
Morgan,Paul F. [PDF]
Parker, Raymond S., III and Knight, Julie Anne [PDF]
Webster,Robert J. [PDF]

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Archived updates for Tuesday, November 15, 2005

About I/P Updates

The I/P Updates news service offers daily and weekly e-mail subscriptions here. You can also get the latest news and information for intellectual property practitioners via our RSS feed, our Atom feed, or simply by visiting our website at www.ip-updates.com. You can even search the I/P Updates archives here.

I/P Updates is written and published by William F. ("Bill") Heinze (e-mail, v-card, resume), an intellectual property attorney in Atlanta, Georgia USA.

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Wegner Updates his "Top Ten Supreme Court Patent Cases"

"Not since the Supreme Court granted certiorari in seven patent cases in 1965 has there been as much patent law activity at the Court as today," writes Professor Wegner in the prelude to his update on the Top Ten Supreme Court Patent Cases. "In all likelihood four or more cases in the Top Ten list will be heard or will have certiorari granted this term:"

  1. The Metabolite Patent-Eligibility Case: Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., Supreme Court No. 04­607: Briefing schedule through January 2005; hearing February-April 2006; decision by June 2006.
  2. The Schering-Plough Reverse Payments Antitrust Case: Federal Trade Comm’n v. Schering-Plough Corp., Supreme Court No. 05­273: Order outstanding asking the Solicitor General for the opinion of the United States whether to grant certiorari. The recent 2005 Second Circuit Tamoxifen opinion adds fuel to the certiorari fire.
  3. The KSR Obviousness Case: KSR Intern. Co. v. Teleflex Inc., Supreme Court No. 04-1350: Order outstanding asking the Solicitor General for the opinion of the United States whether to grant certiorari.
  4. The eBay Injunctive Relief Case: eBay, Inc. v. MercExchange, LLC, Supreme Court No. 05-130: Already thrice scheduled for a conference, a decision whether to grant certiorari may be forthcoming as early as November 14, 2005.
  5. The Illinois Tool Market Share Case: Illinois Tool Works, Inc. v. Independent Ink, Inc., Supreme Court No. 04-1329: Argument is scheduled for November 29, 2005; a decision is likely by the end of January 2006 (but in any event by June 2006).
  6. Unitherm Sufficiency of the Evidence Case: Unitherm Food Systems, Inc. v. Swift Eckrich, Inc., Supreme Court No. 04-597: A decision is expected before the end of 2005. (Oral argument took place on November 2, 2005).
  7. SmithKline Paroxetine Case: SmithKline Beecham Corp. v. Apotex Corp., No. 05-489. Briefing stage for certiorari.
  8. Phillips Claim .Construction Case: AWH Corp. v. Phillips, No. 05A292. Briefing stage for certiorari.
  9. BlackBerry Extraterritoriality Case [future]: Research In Motion, Ltd. v. NTP, Inc., certiorari petition due January 5, 2006, opinion below, NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005).
  10. Tamoxifen Reverse Payments Antitrust Case [future]: In re Tamoxifen Citrate Antitrust Litigation, __ F.3d __, 2005 WL 2l 864654 (2nd Cir. 2005

Get The Good Professor's latest comments on these cases here, via IPCentral.info

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Aussie Commission Recommends Experimental Use Infringement Exemption

The Australian Advisory Council on Intellectual Property (ACIP) has released its report on Patents and Experimental Use which reccommends a patent infringement exception for
"Acts done for experimental purposes relating to the subject matter of the invention" which include:
  • determining how the invention works;
  • determining the scope of the invention;
  • determining the validity of the claims; and
  • seeking an improvement to the invention.
According to the report,

Under current Australian law it is not clear whether experimental acts regarding
a patented invention constitute infringement, due to an absence of both statute and case law on the subject. The greatest need expressed in submissions was for Australian law to be clarified so that both patent owners and non-owners alike would have certaintyregarding their activities. Current practice in Australia appears to be that many researchers are largely unaware of patent laws or deliberately disregard them. Correspondingly, there appears to be a convention in Australian industry, at least until recently, of not pursuing possible infringements for experimental purposes.

Although there is some anecdotal evidence, there is no strong empirical evidence that the current situation is adversely affecting the balance between the incentives
to innovate and the ability to use innovations for research and development. However, ACIP considers that this situation will change. There is evidence that more assertive IP practices are developing in Australia. Without clarification of the law, this would increase inefficiencies and lost opportunities. Also, new case law may determine the category of allowable uses of a patented invention to be very narrow. ACIP therefore considers that, if an experimental use provision can be drafted into patent legislation which prevents a damaging situation without introducing an even
greater set of costs, then it should be introduced.

The Advisory Coucil is an independent body appointed by the government, and advises the Federal Minister for Industry, Tourism and Resources on intellectual property matters and the strategic administration of IP Australia. The Council was established in 1994. The Council's membership reflects a cross section of industry involved with the intellectual property system, and includes individuals from both large and small businesses, the legal and attorney professions and academia.
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Archived updates for Monday, November 14, 2005

Patent Practitioners Per Capita in Japan and the U.S.



= 48 per million
= 2.7 per million

= 25 per million
= 82 per million



Sources: JPO Annual for 2005 and Factmonster
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JPO Moving to "Dialogue-Type" Outsourced Search Reporting


According to the Japanese Patent Office's 2005 Annual Report, "the JPO has been gradually shifting the method of delivery from the "Report -type" which is traditional style that the search organization delivers its search result to the JPO by reports in documents to the "Dialog-type" which searchers explain the search results directly to examiners and receive advices on search techniques in the face-to-face meeting. The JPO will further pursue its efforts toward shifting the method of report delivery from the Report-type to the Dialog type to enhance efficiency and quality of search outsourcing."
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Highlights of the JPO Annual Report for 2005

According to the 2005 Annual Report of the Japanese Patent Office, "because the amount of requests for examination exceeds that of the first actions, the number of applications waiting for patent examination continues to increase. In particular, the number of requests for examination in 2004 drastically increased to 330,000 (left) with the effect of the "bump of request", and as a result, the number of applications waiting for patent examination exceeded 600,000, and the waiting period for patent examination reached to be 26 months (below, left). The "bump of request" is expected to continue until 2008, and further extension of the waiting period is inevitable until then."

Meanwhile, of the domestic applications, the rate of decisions to grant a patent for basic application of the priority claims that aim for acquisition of rights outside Japan show a high value of close to 10 percent over the rate of decisions to grant a patent for all applications (bottom, center). Applications filed outside Japan are costly compared to domestic applications, as these involve other considerable expenses such as for translation services. Therefore, with regards to basic application of the priority claims, applicants most likely carefully studies whether there was a necessity to obtain rights and files only applications for important cases that truly required the grant of rights. This indicates that applicants possess the potential ability to judge whether an application really needs to be requested for examination or not. There is therefore a need to ask users to cooperate in doing with domestic applications as they would do with basic application of the priority claims, which is to file applications or request for examination only after having carefully assessed the necessity of receiving patent rights. "


In fact, according to the Intellectual Property Owerners Association, Japanese nationals filed 64,812 patent applications in the U.S. in 2004 while U.S. nationals filed 22,995 applications in Japan. "If true "patent worksharing" were implemented only between Japan and the United States," notes Professor Wegner, where all "home country" applications were examined at home, "this would result in saving the U.S. PTO the examination of nearly 65,000 patent applications per year."
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Archived updates for Friday, November 11, 2005

"Authorized Generic" Drugs Under Scrutiny

According to a November 10, 2005 report for Bloomburg.com, generic drug makers are lobbying for new laws to stop expiring patent holders from receiving the 180-day Hatch-Waxman exclusivity period given to the first company to win approval for drugs that are going off patent.

The issue of so-called "authorized generic" copies has reportedly split the generic drug industry as companies such as Apotex and Mylan have refused to cooperate with big pharmaceutical companies, while others, such as Par and Watson Pharmaceuticals, reportedly do collaborate.

Still, none of the genric-makers wants to scrap the the exclusivity period. "The Hatch-Waxman law struck a balance between competition and innovation, and that was the backbone of the generic industry,'' says Heather Bresch, a spokeswoman for Mylan. Stephen Mock, a spokesman for Par, also told Bloomburg that generic drug companies can generate about 80 percent of first-year sales and profit from during the exclusivity period.

According to a press release by the Generic Pharmaceutical Association (GPhA) on November 9, 2005, the FTC has said that it will look into the circumstances under which innovator companies launch authorized generics; examine competition during the 180-day exclusivity period; and further examine the long-term effect of generic drug entry on prescription drug prices.

Learn more about "The FDA Process for Approving Generic Drugs" and the "Abbreviated New Drug Application (ANDA) Process for Generic Drugs."
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When to Get Your Expert Witness

During an interview for the November 2005 issue of "Bullseye-the Experts Rag," Al Jacobs of Greenburg, Traurig explained to Bob Ambrogi that he always tries to get the expert on board in a patent case as quickly as possible. "I want to discuss with the expert his or her views on infringement or noninfringement and validity or invalidity,' says Jacobs. I have my own ideas about the case, but I'm not hiring an expert to read from a script."

However, Jacobs also cautions lawyers to remember that, once they identify an expert as one who will testify, they lose any privilege attached to your prior conversations. "Keep that in mind when working with an expert at the beginning of a case. Don't discuss strategy in detail, because that will be discoverable," he warns.

On the other hand, don't keep your expert in the dark. Laura J. Borrelli, an expert in residential mortgage lending who has testified at many trials, still finds it helpful to understand the lawyer's view of a case's principal theme. Discussing this up front avoids misunderstandings later, when time is tight, she says. Experts also need time to determine if they can support your position, and to set aside time for you from their other professional activities.

Besides, sometimes a lawyer just needs someone to talk to. For those accasions, Jacobs sometimes also hires consulting experts in addition to testifying experts. "You may find someone with a lot of experience in the technology who can provide useful scientific information, but who would not make a good witness or who would not want to testify." With a consulting expert, you retain the attorney/client privilege and are able to discuss the case more thoroughly, Jacobs notes.

And that's one less expert to help the opposing counse, because engaging top-caliber experts early precludes your adversary from doing so. "This is especially important if the expertise is difficult to find," notes on expert referral agency website.
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Self-Archiving for Dummies

For many years, the folks at ePrints.org have been helping researchers and their institutions to provide free online access to their research output (documents, multimedia and data) through "self-archiving." According to their website,

The purpose of self-archiving is to make the full text of the peer-reviewed research
output of scholars/scientists and their institutions visible, accessible, harvestable, searchable and useable by any potential user with access to the Internet. The purpose of thus maximizing public access to research findings online is that this in turn maximizes its visibility, usage and impact -- which in turn not only maximizes its benefits to researchers and their institution in terms of prestige, prizes, salary, and grant revenue but it also maximizes its benefits to research itself (and hence to the society that funds it) in terms of research dissemination, application and growth, hence research productivity and progress. This is why open access is both optimal and inevitable.

To self-archive is to deposit a digital document in a publicly accessible website, preferably an OAI-compliant Eprint Archive. Depositing involves a simple web interface where the depositer copy/pastes in the "metadata" (date, author-name, title, journal-name, etc.) and then attaches the full-text document. Self-archiving takes only about 10 minutes for the first paper and even less time
for all subsequent papers.
Some institutions even offer a proxy self-archiving
service
, to do the keystrokes on behalf of their researchers. Software is
also being developed to allow documents to be self-archived in bulk, rather than
just one by one.

An Eprint Archive is a collection of digital documents. OAI-compliant Eprint Archives share the same metadata, making their contents interoperable with one another. Their metadata can then be harvested into global "virtual" archives, such as OAIster, that are seamlessly navigable by any user (just as a commercial index or abstract database is navigable, but with full-text access). The Open Archives Initiative (OAI) has designed a shared code for metadata tags (e.g., "date," "author," "title," "journal" etc.). See the OAI FAQ. The full-text documents may be in different formats and locations, but if they use the same metadata tags they become "interoperable." Their metadata can be "harvested " and all the documents can then be jointly searched and retrieved as if they were all in one global collection, accessible to everyone.

Free Eprints software (itself using only free software) has been designed so institutions or even individuals can create their own OAI-compliant Eprint Archives . Setting up the archive only needs some space on a web server. Installing the Eprints software is relatively easy, and being made easier with each successive release of the software. It requires a little webmaster time to set up, and a little webmaster time to maintain. This investment is very small. The real challenge is not creating or maintaining an Eprint Archive, but ensuring that it is promptly filled with its target contents, which, for the BOAI, consists of pre-peer-review preprints and peer-reviewed, accepted postprints.

See the Institutional Archives Registry and List as well as the Registry of Institutional Self-Archiving Policies

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Introducing Science Commons

The good folks at Creative Commons have launched a new service called Science Commons in order "to encourage stakeholders to create areas of free access and inquiry using standardized licenses and other means; a 'Science Commons' built out of voluntary private agreements." The are currently working on the problems of "inaccessible journal articles, tools locked up behind complex contracts, socially irresponsible patent licensing, and data obscured by technology or end-user licensing agreements."

The Science Commons "Publishing Project" hopes to reduce the legal and logistical effort involved in managing copyrighted scientific publications. Our work includes an exploration of the unique needs of peer-reviewed literature, technical methods to encourage greater legally permissible information sharing, and the construction of a resource library for all stakeholders: commercial publishers, science and medical society publishers, universities, libraries and individual researchers.

The Science Commons "Licensing Project" is working with foundations, universities, corporations, non-profit institutes, and inventors on standard legal terms, educational materials and curricula, organizational designs (technology trusts, patent pools) and bringing together stakeholders. For example, although “standard” material transfer agreements exist (the Uniform Biological Material Transfer Agreement, or UBMTA, was developed in 1995) the licensing of materials remains a problem. A complex set of interlocking licenses covering dozens of different materials imposes significant transaction costs simply to gain the opportunity to begin research.

The Science Commons "Data Project" is exploring ways to assure broad access to scientific data. They see a wasteful data economy evolving in which raw data are not made accessible; scientists are either leery of the risks of losing control over their data or subject to institutional requirements that mandate a closed approach. Implicit in data sets are answers to questions the researcher perhaps did not specify - answers that are a consequence of the throughput of the experiment.

Click here to get involved in the Science Commons.
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TGIF for "Jesus Juice" Merlot

The trademark specimen shown here was recently filed with the statement of use in U.S. Trademark Application No. 78360553 for JESUS JUICE in connection with wine. The mark is the reported to be the brainchild of Dawn Westlake and her husband Bruce Rheins, the veteran CBS Evening News producer who headed the network's coverage of the Michael Jackson child molestation case.

Unfortunately, 2005 may not turn out to be such a great year for the Rheins-Westlake Wineries merlot. Jackson's spokeswoman, Raymone Bain, reportedly told AFP news that the plan to use the name "Jesus Juice" and the image depicting a Jackson-esque Christ figure was "outrageous and offensive" and may trigger legal action by the singer. "I think it's outrageous and offensive and Mr Jackson's attorneys are looking into the matter," she said.

Needless to say, all of us in the intellectual property community are waiting to see if Jack-O claims prior rights to the mark through his earlier use, and if so, what he thinks is a reasonable zone of expansion for his commonlaw rights.

Lucky for all of us, CBS appears to have a better sense of humor about the whole situation. According to their PublicEye Blog:
Whether or not Rheins’ apology is accepted is up to you but this is a difficult
issue for Public Eye to address. Correspondents, producers, editors, camera
operators and everyone else who works for CBS News or any news organization have private lives as well. They’re even allowed to have senses of humor, whims, dumb
ideas and practical jokes. While there are standards of behavior for nearly any
profession, this particular story falls outside of them. As long as there was no
attempt at making money off of a story being covered or use of CBS connections
to profit and no clear conflict of interest that would bias the coverage, what
employees do on their own time should not be controlled
However, Matthew Sheffield at NewsBusters claims to have preserved two of the pages from Westlake's virtual store at CafePress.com. Click here to see the JJ clock, here to see the JJ t-shirt and here to see Rheins posing with a JJ mug and t-shirt. Who will be crucified next?
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Archived updates for Thursday, November 10, 2005

USPTO Declares Postal Service Interruption for Hurricane Wilma

On November 8, 2005, the United States Patent and Trademark Offce (USPTO) announced that it is designating the interrption in servce of the United States Postal Service (USPS) in the areas affected by Hurcane Wilma in Florida on October 24, 2005, as a postal servce interrption and an emergency within the meang of35 U.8.C. § 21(a) and 37 CFR 1.10(i) and 2. 195(e).

Correspondence covered by 37 CFR 1.10 that would have been filed with the USPTO under 37
CFR 1.10 during ths USPS servce interrption, but which was not filed due to the USPS service
interrption, should be filed promptly afer the termation of the USPS service interrption with
a petition in accordance with 37 CFR 1.10(i) using ''Express Mail" servce in accordance with 37
CFR 1.10.

Under 37 CFR 2. 195(e) and 2.198, any person attemptig to file correspondence by ''Express
Mail Post Office to Addressee" servce that was unable to be deposited with the USPS due to the
interrption or emergency in ''Express Mail" servce in the area designated in this notice may
petition the Director to consider such correspondence as filed on a parcular date in the Offce.

According to the notice "As soon as the USPTO receives fuher information from the USPS as to when postal servces in the affected areas wil be resumed, the USPTO will post updated inormation regardig ths situaton on the USPTO Web site (htt://ww.usto.gov) and in the Offcial Gazette."
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