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Archived updates for Tuesday, February 28, 2006

Injunction Decision Postponed in RIM v. NTP

"I must say I am surprised, absolutely surprised, that you have left this incredibly important and significant decision to the court." -- Judge James Spencer of the Eastern District of Virginia as quoted in Managing Intellectual Property magazine addressing counsel regarding his plan to issue a decision on the requested injunction "as soon as reasonably possible."

Click here to read a transcript of the hearing from the AIPLA.

Click here for Russell Shaw's possible timetable for the next series of events in this "seemingly endless battle of wills between stubborn foes Research In Motion and NTP."
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China Changes UDRP for .CN Domain Names

According to a February 27, 2006 article in Managing Intellectual Property, China issued a new uniform dispute resolution policy ("UDRP") for .CN domain names on February 14 that becomes effective on March 17. The changes reportedly include:
  • .CN domain name complaints can be filed in only Chinese civil courts once the registration at issue is two-years old.
  • The scope of the bad faith adoption requirement has been narrowed from including "assigning to obtain unjustified benefits" to "assigning to the civil right owner or to their competitors to obtain unjustified benefits."
  • The good faith use requirement has been broadened to include providing goods or services, even if they have not obtained trade marks but have acquired a certain reputation through use, or they have legitimately used the domain name for commercial or non-commercial purposes without intending to mislead the public.

Thanks to Yu Bo for pointing to an english version of this new UDRP on CNNIC's website at http://www.cnnic.cn/html/Dir/2003/12/12/1977.htm.

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Archived updates for Monday, February 27, 2006

Asian Licensing Negotiating Tips

At the Winter Meeting of the Licensing Executives Society (LES) in Pasadena, California, a panel of international experts offered their perspectives on licensing deals in Asia. The discussion was led by Larry W. Evans, past president of LES USA and Canada and LES International, and the panelists included Eun-Sub Jung, managing partner of the AJU International Law Group; Akiko Futamura, Ph.D., executive vice president, Science & Technology/Business Development for SC Biosciences USA, Inc.; and Dave Palella, president of BioScience Ventures.

The panelists agreed that personal relationships are extremely important in negotiating business deals, and in many cases, the relationship established during the initial meeting can be relied on to solve problems that may come up later in the negotiations. Evans cited an example where once the Chinese leader with whom he had conducted the original negotiation entered the room after two days of difficult negotiations, the disagreement was resolved within an hour.
Jung offered several points of advice on dealing with Korean business executives, including:
  • Larger Korean companies have negotiators fluent in foreign languages.
  • Koreans with advanced writing skills are not always fluent oral communicators.
  • Korean negotiators often work to reach an equilibrium point between the positions of two parties
  • Most Korean companies are highly centralized and most agreements have to be approved by the president. The president will be influenced by the thoughts and opinions of the other employees.
  • Take advantage of lunch or dinner opportunities – Koreans enjoy "hanging out"
  • Some Korean companies are staring to insist on including all important terms in the written agreement – this is a change from past practices, where some terms were not documented
  • Do not threaten litigation as a negotiating tactic

Futamura spoke on negotiating business deals in Japan. “I see that difficult negotiations are sometimes just caused by misunderstandings in what the two parties are trying to achieve,” she explained. The experience of many Japanese working for one company their entire lives can sometimes prevent the government or universities from benefiting from people with more diverse business experience. She also echoed the opinion of others that licensing deals are heavily based on relationships, and encouraged executives to focus first on building solid business relationships. “Japanese make decisions based on consensus and they are not willing to take risks,” Futamura added. “They want to make sure everyone is comfortable in any agreement.”

Palella told several stories of failed business deals in Asia that he says cost tens of millions of dollars for the companies involved and recounted some of the lessons learned from these failures.

  • Be careful of erroneous translations of key words. When difficult words come up, watch their faces and make sure they understand. There is no such thing as overcommunicating with Japanese
  • Japanese companies respect CEOs but do not want to have them as project managers, believing that CEOs have too many things to do to manage a project effectively.
  • Japanese change research and development strategies all the time – include a provision to get an up-front fee in the agreement and include a significant termination fee.

Sign-up for the LES/AUTM Spring Meeting!

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Music Licensing Update


“The public’s perception is that the music business is falling apart,” Gerald Weiner, a former musician who is now a music industry attorney, told an audience of more than 200 attendess at the Licensing Executive Society's Winter Meeting in Pasadena, California. “But it’s not true.”

In analyzing the segments of the industry, he observed that the live performance business is alive and well, generating significant revenue for musicians. “Music publishers, who own musical compositions, are also in good shape because the licensing of music into films and television and performance royalties have brought in a lot of money” Weiner added. “Whatever loss music publishers have incurred from fewer royalties from records has been more than made up by licensing in these areas.” Many commercials are now also using popular songs.

However, Weiner explained that “the record business is having a really rough time.” He noted that outside the United States, large numbers of bootleg CDs manufactured illegally in Eastern Europe and China are circumventing licensing and royalty agreements. This, plus extensive downloading and copying of songs by teenagers and other music fans, has hurt CD sales significantly. “In my opinion, illegal ripping of CDs is a bigger problem than illegal downloads,” Weiner said. “One kid buys the CD and 100 kids copy it.”

The music business is increasingly segmented today into different markets such as rock, country, rap, rhythm and blues, and others that appeal to distinctly different demographics. As a result, Weiner believes that record companies can now sell a maximum of about 7-8 million CDs. “The days of selling 15 million CDs are probably gone,” he declared.

Apple IPODs and podcasting are also further complicating the licensing and copyright picture in the music business. Weiner observed that the success of IPODs proved that people want to listen to music everywhere. “The problem is, where does the music that goes into these devices come from?,” he asked. Currently, record companies are granting licenses to companies such as Apple, and the record companies take care of paying royalties to music publishers, a situation that publishers are not happy about because they don’t believe they are receiving the appropriate, timely, royalties. In addition, Weiner explained that of the 99 cents a consumer might pay to download a music track, 70 cents goes to the record company and only about 5 cents go to the artist.

“The artists are just now starting to see royalty reports coming from record companies,” he said. “Many of their agreements call for artists to receive a 50-50 split on third-party sales, which these are. It’s an issue we are going to see in the next six months.”
Weiner concluded by predicting, “Everything we know about the music industry today is going to be different in 10 years. There will be new ways to use music and new ways to license music. The music industry is going to have to come up with some standards.”

Join the Licensing Executives Society

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Archived updates for Sunday, February 26, 2006

Design Patent Fails Point of Novelty Test

In Lawman Armor Corp. v. Winner International, LLC (Fed. Cir., February 22, 2006) the lower court had held that infringement of U.S. Design Patent No. 357,621 (below) for "Sliding Hook Portion of a Vehicle Steering Lock Assembly" had not been shown because each of the eight alleged “points of novelty” of the patented design was disclosed in the prior art. The appellate court affirmed that ruling, and rejected the patentee’s contention that the combination in the patent of the many non-novel “points of novelty” itself was an additional “point of novelty.”


According to Senior Circuit Judge Friedman,

In comparing a design patent claim to the accused design to determine infringement, a court must apply "two distinct tests, both of which must be satisfied in order to find infringement: (a) the ‘ordinary observer’ test, and (b) the ‘point of novelty’ test." Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002). See Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). The "ordinary observer" test requires comparison of the two designs from the viewpoint of the ordinary observer to "determine whether the patented design as a whole is substantially the same as the accused design." Tropicana Prods., Inc. v. Land O’ Lakes, Inc., 286 F. Supp. 2d 343, 345 (D. Del. 2003) (citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)). Under the "point of novelty" test, a court must determine whether "the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), (quoting Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)). See generally Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1384 (Fed. Cir. 2004) (discussing the required showing for the "point of novelty" test). . . .

We have examined the patents that Winner cited and conclude that they
disclose the eight "points of novelty" that Lawman specified. The district court
was not required to make the more detailed rulings or findings that Lawman
apparently seeks, or to specify which particular patents disclosed each of the
eight points of novelty.

Lawman stresses that there is no "suggestion to combine visual elements in
the alleged prior art to achieve the ‘621 patent." Whether there is any
suggestion to combine prior art references may be relevant in a validity inquiry
to determine obviousness. Litton, 728 F.2d at 1444. It has no place in the
infringement issue in this case. Id.

What Lawman’s contention comes down to is that the D’621 patent contains a
ninth "point of novelty," namely, the combination in a single design of the
eight non-novel "points of novelty" it embodies. This argument is inconsistent
with, and would seriously undermine, the rationale of the "points of novelty"
test.

. . . If the combination of old elements shown in the prior art is itself
sufficient to constitute a "point of novelty" of a new design, it would be the
rare design that would not have a point of novelty. The practical effect of
Lawman’s theory would be virtually to eliminate the significance of the "points
of novelty" test in determining infringement of design patents, and to provide
patent protection for designs that in fact involve no significant changes from
the prior art. Id. ("To consider the overall appearance of a design without
regard to prior art would eviscerate the purpose of the ‘point of novelty’
approach, which is to focus on those aspects of a design which render the design
different from prior art designs.").

Lawman seeks support for its argument in our decision in Litton Systems v.
Whirlpool, 728 F.2d 1423. That decision does not aid Lawman.

In Litton we reversed a district court’s finding of infringement of a design
patent because of a trial court’s "failure to apply the correct legal standard
of infringement in design patent cases." Id. at 1444. This court explained that
under the "points of novelty" test, "even though the court compares two items
through the eyes of the ordinary observer, it must nevertheless, to find
infringement, attribute their similarity to the novelty which distinguishes the
patented device from the prior art." Id. Litton did not hold that the
combination of several points of novelty was itself a point of novelty, but
rather held that there were several points of novelty in the patented design,
none of which was found in the accused design. Lawman’s argument would stand the
"points of novelty" test on its head, and defeat its purpose.

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Subscribe to "I/P Updates Weekly"

Due to time constraints, several of last week's articles are available only in the "I/P Updates Weekly" newsletter. Please accept my apologies for any inconveneience, and feel free to subscribe to "I/P Updates Weekly" by entering your e-mail address in the right column at http://ip-updates.blogspot.com/#subscribe.
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Archived updates for Friday, February 24, 2006

TGIF for a Presidential Patent



President's Day, is celebrated in the U.S. every third Monday in February. This year, the federal holiday fell on February 20. According to Mary Bellis at About.com, Abraham Lincoln is the only U.S. President to hold a patent. U.S. Patent No. 6,469 for "A Device for Buoying Vessels Over Shoals" was awarded to Abe on May 22, 1849.



Thank Goodness It's Friday (and I'm at the LES 2006 Winter Meeting in Pasadena, California),

--Bill Heinze
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Archived updates for Tuesday, February 21, 2006

New Unfair Import Compalints for Ink Cartridges and Voltage Regulators

On February 17, 2006, Espon America and Seiko Epson Corporation filed a "Section 337" complaint at the U.S. International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Ink Cartridges." The complaint has been designated as Docket No. 337-2471 for indexing in the Commission's database, and the proposed respondents are Glory South Software Mfg. Inc., Buena Park, CA; Butterfly Print Image Corp. Ltd., Hong Kong; Ink Lab (H.K.) Co. Ltd., Hong Kong; Nectron International, Ltd. Sugar Land, TX; Mipo International Ltd., Hong Kong; Mipo America Ltd., Miami, FL; Nine Star Image Co. Ltd., Zhuhai, Guangdong Province, China; Nine Star Technology Co. Ltd. Montclair, CA; Town Sky Inc. South San Francisco, CA; Zhuhai Gree Magneto - Electric Co. Ltd., Zhuhai City, Guangdong Province, China; MMC Consumables Inc. Walnut, CA; Tully Imaging Supplies Ltd., Hong Kong; Inkjetwarehouse.com Inc., Canton, CT; Wellink Trading Co., Ltd, China; Ribbon Tree (Macao) Trading Co., Ltd. Macao, China; Ribbon Tree (USA) Inc. Ferndale, WA; Apex Distributing Inc. Ferndale, WA; Artech GMBH, Dorfmund, Germany; Ink Tec Co. Ltd., Ansan-City, Kyungki-Do, Korea; Ink Tec America Corp. Elkridge, MD; Dataproducts USA LLC, Thousand Oaks, CA; Rhinotek Computer Products, Compton, CA; Master Ink Co., Ltd., Hong Kong; and AcuJet U.S.A., Inc., City of Industry, CA

Also on February 17, 2006, Linear Technology Corporation filed a "Section 337" complaint at the U.S. International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Voltage Regulators, Components Thereof, and Products Containing Same." The proposed respondent is Advanced Analogic Technologies, Inc.., and the complaint has been designated as Docket No. 337-2470 for indexing in the Commission's database.

Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints 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 an audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
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Winter in Pasadena with the LES

I will be atttending the Licensing Executives Society (LES) Winter Meeting, February 22-24, 2006, at the Ritz-Carlton Huntington Hotel in Pasadena. I hope to see you there. Please feel free to contact me at my mobile number, 404-729-0729, if we can get together. --Bill
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Highlights of the USPTO's Open Source Software Community Meeting


Thanks to Peter Zura's Two-Seventy-One Patent Blog for pointing to Groklaw's extensive reports on the February 16, 2006 meeting at the USPTO on the prior art database and community review patent projects. The official agenda for the meeting is available here.

Among other things, the meeting included a presentation by Professor Beth Noveck, of New York Law School (and author of "A Democracy of Groups"), on consulting "the community jury as a proxy for a person having ordinary skill in the art." In her view,

"The obviousness determination could be aided by a small group of relevant
experts acting as a consultative citizen jury to aid the Examiner. Members
of the expert community evaluate and rate each other's participation. The
patent Examiner coordinates the back an forth colloquy with the inventor.

  • allow experts to self-assign participation based upon expertise an interest
  • use reputation software to enable to community to rate its own experts
  • use slides and other simple feedback tools to enable faster participation
  • use visualization tools to build innovation maps"
Although she recognizes that her proposal for using "the wisdom of crowds" has been criticized as too radical, it nonetheless appears to already have the backing of Irving Wladawsky-Berger, Vice President of Technical Strategy and Innovation at IBM, who writes in his new blog that

"The community should assist in the evaluation of patent applications by providing as much information as possible to patent examiners on prior art that might support or invalidate an application, as well as feedback on the quality and merit of the application in question, as is the case with the Community Patent Initiative. The public should also have access to all pertinent information about the inventors and those actually applying for and holding the patent, whether it is the inventors themselves, a corporation, or an IP-only business that exists solely for the purpose of buying and licensing patents to the exclusion of actual production of any kind. A major step toward increased transparency was taken with the announcements
we made earlier this year with the US Patent Office (USPTO), the Open Source Development Lab (OSDL) and others aimed at involving open communities and the public in general to help increase patent quality."
According to a presentation by Marc Erlich, Intellectual Property Counsel at IBM, what this really means is focussing on, access, review, and feedback during the patent examination process. In particular, Erlich sees the need for a simplified subscription-based e-mail alerting system (which most proactive attorneys have already implemented in one form or another). His new "platform for review of published applications" would provide "technology to simplify review" such as education on how to review patents, information on the reputation and background of experts ("based in part on history of results of prior art submitted to PTO"), and a discussion forum with "means to determine response to examiner, if any." Here are his intriguing examples:



In order to keep the system from turning into mob rule for patents, Erlich also suggests structuring the comments from prior art submitters with a very narrow submission template:

Presumably, a patent Examiner would then review this information before deciding whether to make it part of the record in the official file history. Of course, the devil is always in the details, and Erlich still sees the following "potential challenges:"

  • flooding -- overburdening of examiner with redundant or irrelevant documents might be addressed with filtrering and reputation assessment software.
  • gaming -- using submissions to intentionally delay issuance of another's patent
  • rule-making -- rules may need to be changed in order to protect applicants during the examination process
  • willfull infringement -- some forbid review of patent dicuments fearing charge of willful infringement that may require a risk v. reward balance after experience with the system

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USPTO PAIR Enhancements Webinar


The United States Patent & Trademark Office invites you to participate in a special web announcement event on Thursday, February 23rd at 2 p.m. Eastern to discuss important new enhancements to Private PAIR. To participate in this event, which will be conducted via web-cast, you must first register by clicking on the following link: http://websurveyor.net/l.dll/JGsD97250B5D9ldxD9U1555J.htm

During this one-hour event, USPTO’s e-Commerce Program Manager William Stryjewski will review important enhancements to Private PAIR including:
  • Changes to Private PAIR access
  • Availability of additional Content
  • First Action Prediction
  • Security changes

Click here to assure your placement on the invitation list for this web event: http://websurveyor.net/l.dll/JGsD97250B5D9ldxD9U1555J.htm

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Archived updates for Monday, February 20, 2006

Free Webinar: Protecting IPRs in China with Mark Cohen

Protecting Intellectual Property Rights in China
Friday, February 24th, 2006 8am US-Pacific/10am US-Central/11am US-Eastern/4pm London/ February 25th, 12am Shanghai

There may be no greater challenge to foreign investors in China today then protecting intellectual property rights (IPR). While China’s IPR legal framework is widely recognized as sufficient, enforcement remains a continuing source of disappointment. In the last six months; however, several long simmering IPR cases have been decided in favor of foreign investors in Chinese courts. The question is, are these isolated victories or the first harbingers of change?

Attend a special webcast organized by the US Council for International Business (USCIB), featuring Mark Cohen, Intellectual Property Attaché for the US Embassy in Beijing. After 20 years of experience in counseling on intellectual property issues in China, Mark has served as the US Government’s lead China-based advocate for improved IPR conditions in China since 2004. Register here.

If you can't attend the webinar, the check out "Inside China's Teeming World of Fake Goods," by Kristi Heim of The Seattle Times, "The Counterfeiting Paradox" from AT Kearney, and other links available at the IP Dragon.
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UK Implements Resale Royalty Right


Starting February 14, when an artist's work is resold on the UK art market for the equivalent of €1,000 or more, he or she will receive a royalty of up to four per cent of the sale price. The regulations have been introduced to comply with the EU Artist’s Resale Right Directive.
With regard to works by deceased artists, the UK Government successfully negotiated a delay in the application of the royalty to works by deceased artists until 2010, with a possible extension to 2012, and "will seek to extend it indefinitely."

Click here for business guidance from the UKPO.
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USPTO Town Hall Meeting on EFS Web and Proposed Rule Changes

Another USPTO town hall meeting on the proposed rule changes for claims and continuations will be held February 28 in Berkeley, California at the International House (across from Berkeley Center for Law and Technology, Boalt Hall in Berkeley) The meeting will be held from 1pm – 3pm. In addition the USPTO will have a demonstration from 3pm – 4pm at the same location of its new Web-based patent electronic filing system (EFS Web).

Registration and information here.
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USPTO's EFS-Web Patent Filing System Launching March 17

For those who have not yet used the USPTO's EFS-Web Beta Test for electronic patent filings, Carl Oppedahl recently offered his firm's experience on the EFS Listserv:
One or two of our staff people were among the first anywhere in the world to use EFS-Web, and they filed a couple of patent applications, a couple of voluminous IDSs (the kind that are all foreign and non-patent references, and EFS-Web allows you to file them as PDFs), a couple of responses to Office Actions, and a couple of Entries into the US National Stage from PCT. All within the first day or two.

They had not taken special training, they had not studied the system in detail. They simply logged in to EFS-Web and started surfing and attaching files and clicking the "submit" button.

It is not easy to find words to describe the manner in which EFS-Web spread within our office. "Like wildfire", I suppose. By December 8, one week after launch, *no
one* in our office was filing *anything* on paper except in those cases where it was simply impossible to do it through EFS-Web.

Our e-filing percentage for new US utility and provisional applications had been hovering around 60%, and by December 8 it was 100%. Our e-filing percentage for follow-on papers (IDSs, responses to Office Actions, responses to Notices of Missing Parts) increased from zero percent on November 30 to 100% by December 8. Our e-filing percentage for entry into US national stage increased from zero percent on
November 30 to 100% by December 8. The percentages have remained rock-steady at 100% in the two or so months that have passed since then.

It is important to appreciate that this jump to 100% was *not* due to any pressure
from clients, *nor* was it due to orders from the management of the firm to the
people who handle the filings. This jump happened simply because each one of our
people, from administrative assistants to attorneys, realized that a filing on EFS-Web is easier to do than a filing on paper or by fax. Takes less time, requires fewer walking steps to photocopiers etc.

If there had been pressure from management of our firm to use EFS-Web, it would have been for the simple reason that with EFS-Web we don't have to docket to watch for the post card and we don't have to docket to check to see that our IDS or other filing has eventually been scanned by USPTO personnel into IFW. We figure those two things that we don't any longer need to docket (because we can confirm everything within seconds of the e-filing) save us ten or twenty dollars per filing in terms of internal time and cost for paper docketing and computer docketing that does not need to be done any longer. But on December 1, we did not appreciate this particular no-need-to-docket benefit and so we were not pressuring our people prompted by this benefit.

No, our people went to 100% e-filing simply because they preferred it to the old way.
To join the patents.com EFS-Web list serve, send email to imailsrv@oppedahl.com, and in the body of the email message, say "subscribe efs-web-l Homer Simpson", using your name instead of Homer Simpson's name.

The official release date for EFS-Web to get released to the general public is March 17, 2006. That is three weeks from this coming Tuesday. Even if you won't be able to use EFS-Web until that day, you might want to consider joining the EFS-Web list server (using the instructions listed above) in case the postings might be helpful to you in preparing for launch day on March 17.
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Archived updates for Monday, February 13, 2006

Chicago Seminar on European Patent Law and Written Disclosure

The Association of Patent Law Firms (APLF) and The DePaul University College of Law’s Center for Intellectual Property Law & Information (CIPLIT) will present a seminar on European patent law, focused on standards for written disclosure.

The presentation, titled “Different Standards in Europe Used in Analyzing Written Disclosure,” will feature Walter Maiwald, the Managing Partner of the German patent firm Maiwald Patentanwalts GmbH. It will be held March 30 from 12 p.m.-1:30 p.m. at DePaul University College of Law, Room 8005, 1 East Jackson Blvd. in Chicago.

North American practitioners frequently confront the very different approach used in Europe for establishing the relevant disclosure of any given text. The presentation will address issues related to analyzing references (What is anticipated/suggested by the reference?); establishing the content of any patent application (What can I claim?); and the priority document.

The event is free for members of the Association of Patent Law Firms. The cost for non-members is $35. A light lunch will be provided.

For reservations and payment information, please visit http://media.aplf.org/conferences/europesymposium.php.
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Archived updates for Friday, February 10, 2006

TGIF for the Love Box

for "Love Box"
to Dale A. Ledman and George Spector
of New York, New York
Abstract:
A box for use as a token between lovers for assuring their love to each other; the box including an instruction sheet that states the box is filled with love, and no matter how often it is opened, it can never be emptied; and to get a little love, the box should be opened for a short time, while to receive all the person's love it should be left open all the time; the box including a case and a removable cover.
What is Claimed Is:
A box for displaying a love message when closed or open, comprising a case having a bottom with an encompassing wall in combination with a cover pivoted at one end to said wall whereby said cover may be moved from a closed position abutting said wall to an open position providing access to said case, in combination with a love message and associated means for displaying said message in both closed and open positions, wherein said means comprise a flourescent substance deposited on the case bottom and including a card mounted in said case spaced from said material, said card having cut-out portions in the form of said message for display when the box is open and further cut-outs through said wall in the form of said message.
Thank Goodness It's Friday (and Valentine's Day is coming soon),
--Bill Heinze
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Gray Literature as Prior Art?

Brian S. Mathews writes for College and Research Library News in March 2004 that "gray literature" is commonly defined as any documentary material that is not commercially published and is typically composed of technical reports, working papers, business documents, and conference proceedings. However, much of this gray literature is now freely available on many Web sites, and is selectively indexed by numerous commercial database vendors. His paper provides a list of Web sites that aid in understanding the nature of gray literature as well as various search tools. While the majority of his selections concentrate upon scientific and technical literature, other resources have been included to illustrate the wide range and variation of gray literature.
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Highlights of the USPTO Town Hall Meeting in Chicago

Thanks to J. Matthew Buchanan at Promote the Progress for posting a copy of the slides from the U.S. Patent and Trademark Office Town Hall Meeting in Chicago last week. Some of the highlights include:

EFS-Web Beta Test
  • Staff may transmit filing on behalf of patent practitioners
  • Rapid access to PAIR to view submission and status and to confirm documents safely and accurately received
  • EFS Web receipt time or filing date is based on USPTO East Coast time as defined by Statute.

Accelerated Examination

  • An OG notice will soon be published revising the requirements and procedures for petitions to make special under the accelerated examination program, and 37 CFR 1.102(c)(2), set forth in MPEP 708.02.

Proposed Rulemaking on Continuing Applications

  • No change for the vast majority of applications
  • One continuation (broadly defined) always available as of right, whether in the form of
    continuation application, or a request for continued examination (RCE); but with special rules for divisionalsand continuations-in-part (CIPs); Additional continuations available if applicant can show that the amendment, argument or evidence could not have been earlier submitted
  • Only involuntary divisionals to be permitted; Divisional application may claim the benefit of only a single prior-filed nonprovisional application.
  • A continuation of the CIP is permitted but all claims only entitled to benefit of filing date of CIP
  • Identify any other application or patent having a common inventor, common assignee, or so treated nder CREATE Act; and filed within two months (taking into account priority/benefit claims)

Proposed Rulemaking on Double Patenting

  • A rebuttablepresumption of double-patenting is established for identified applications/patents if have same effective filing date or substantially overlapping disclosure
  • If USPTO finds claims patentably indistinct, it may merge or require cancellation of indistinct claims unless good and sufficient reason shown

Proposed Rulemaking on Representative Claims

  • Normal Pattern: Applicant to identify 10 representative claims for initial examination which must include allindependent claims; If independent claims fewer than 10, designate additional dependent claims until total of 10 reached
  • Full initial examination of all designated representative claims
  • No first action final
  • If representative claim is allowed, all its non-designated dependent claims will be examined for compliance with 35 USC 101 and 112
  • If representative claim is rejected, applicant may, traverse rejection, amend the claim, including adding subject matter from a non-designated dependent claim; or submit substitute representative claim
  • Beyond ten claims applicant must provide search report of all representative claims, identify all limitations of representative claims that are disclosed by cited prior art references, and explain how all representative claims are patentable over the cited references
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Archived updates for Thursday, February 09, 2006

RIM Announces Patent Design-Around Contingency Plan

If you have a Blackberry, then you probably received this announcement from RIM:

On February 9, 2006, Research In Motion (RIM) announced that it has developed and tested software workaround designs for all BlackBerry® handsets operating on converged voice/data networks in the United States. This software update, called "BlackBerry Multi-Mode Edition", has been designed as a contingency to allow BlackBerry service to continue should the court implement an injunction in the United States in the current litigation involving the NTP patents.

RIM invested significant engineering effort to develop workaround
designs that remain invisible to users and maintain the existing platform
benefits for system administrators, application developers and network operators
while modifying the necessary underlying elements of the BlackBerry message
delivery system to be fundamentally different from the NTP patent claims. All
information on BlackBerry Multi-Mode Edition, including an

Overview, FAQ's and RIM's press release of February 9, 2006, is available at
www.blackberry.com/go/workaround. Please note: As RIM stated in its press release today, the software workaround designs remain a contingency plan because the court has not yet ruled on an injunction. RIM partners and customers do not need to take any action at this point in time.

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Roadmaster Requests Investigation of Portable Power Stations from China

On February 8, 2006, Roadmaster Corp. filed a "Section 337" complaint at the U.S. International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Portable Power Stations." The proposed respondents is Sinochem Ningbo, Ltd., China and the complaint has been designated as Docket No. 337-2457 for indexing in the Commission's database.

Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints 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 an audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
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USCO Issues Report on Satellite Retransmission Licensing

The U.S. Copyright Office has announced the completion of its report examining certain provisions of the section 119 statutory license scheme that allows satellite carriers to retransmit over-the-air broadcast signals. The text of the full report, including the executive summary and appendices, may be downloaded here.

The report was in response to Section 110 of the Satellite Home Viewer Extension and Reauthorization Act of 2004 which required the Register of Copyrights to report her findings and recommendations on
  1. the extent to which the unserved household limitation for network stations contained in section 119 of title Copyright Act has operated efficiently and effectively, and
  2. the extent to which secondary transmissions of network stations and superstations under section 119 harm copyright owners of broadcast programming, and the reduction in harm provided by the section 122 statutory license for retransmission of local network stations into their local TV markets.

The purpose of the section 119 and section 122 statutory licenses is to provide satellite carriers who retransmit over-the-air television broadcast stations to their subscribers an efficient way of licensing the copyrights to all the programming and copyrighted works contained on those broadcast signals. Section 119 is a temporary license (currently due to expire at the end of 2009) that enables satellite carriers to retransmit signals of television stations that are located outside of the television markets of the subscribers who are receiving them. Section 122 is a permanent license with no royalty paymentenables satellite carriers to retransmit local television stations to subscribers.

A satellite carrier may only make use of the section 119 license to retransmit network stations to subscribers who reside in “unserved households.” An “unserved household,” is one that cannot receive an over-the-air signal of Grade B intensity from the local network station affiliated with the same network using a conventional rooftop antenna. If a subscriber can receive the local network signal, the satellite carrier may not provide the subscriber with a distant signal of the same network. Nor can the satellite carrier use the section 119 license to provide commercial establishments with network stations. Only private home viewing of network stations is permitted.

Congress created the unserved household provision as a way to protect the historic network-affiliate relationship and the program exclusivity enjoyed by local broadcasters. The unserved household provision enables broadcasters to maintain market exclusivity and also promotes localism by providing access to local voices, weather, news and advertising.

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Television Production Agreement Forms

The following "Form TV Production Agreements" are available here from PLI’s Course Handbook on "Counseling Clients in the Entertainment Industry 2005:"
  • Short-Form Joint Venture Agreement for a Television Production
  • Short-Form Writer's Agreement for a Television Production
  • Television Actor Agreement
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Archived updates for Wednesday, February 08, 2006

New Website on European Infringing Import Exclusion

The latest news on enforcement of intellectual property rights through border measures in Europe is now available at www.bordermeasures.com.
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WIPO: Asia PCT Filings Up for 2005

The World Intellectual Property Organization reports that, in a year that saw a record number of international patent filings, the Republic of Korea overtook the Netherlands as the 6th biggest user of the World Intellectual Property Organization’s (WIPO) Patent Cooperation Treaty (PCT) and China dislodged Canada, Italy and Australia to take the position of 10th largest PCT user. The five top users of the international patent system remained unchanged, namely: United States of America, Japan, Germany, France and the United Kingdom. However, for the second year running, the most impressive rates of growth came from north east Asia – namely, Japan, the Republic of Korea and China, which between them accounted for 24.1% of all international applications, compared to 34.6% from the countries party to the European Patent Convention and 33.6% from the United States of America.

“The rate of growth from Japan, Republic of Korea and China continues to be exceptional, reflecting the rapidly expanding technological strength of those countries. Since 2000, the number of applications from Japan, Republic of Korea, and China, has risen by 162%, 200% and 212%, respectively,” said Mr. Francis Gurry, WIPO Deputy Director General who oversees the work of the PCT.

More here.
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A Lesson in Laboratory Notebook Keeping

In Medichem, S.A. v. Rolabo, S.L. (Fed. Cir. February 3, 2004), the parties disputed whether or not there was adequate corroboration of the inventors’ testimony that Medichem had actually reduced to practice the process of the claimed invention before Rolabo’s effective filing date. The court considered three principal pieces of potentially corroborative evidence -- the NMR spectra, the notebooks of Medichem’s inventors, and the notebook of non-inventor Casas -- to conclude that cooberation was absent:

We note at the outset that the problem with the dated NMR data is that at most they corroborate that the inventors were in possession of the chemical
loratadine as of that date; they do not, in themselves, adequately corroborate
the claimed process, as they do not establish whether the sample that was
analyzed was actually produced by that process. If this case dealt with a claim
to a composition of matter, rather than to a process, the NMR evidence might
very well take on a different relevance in this regard. As far as the
corroborative value of the inventors’ notebooks is concerned, they were not
witnessed, and they do not provide an "independent" source of authority on the
issue of reduction to practice. Hence, they have minimum corroborative value.

It is clear to this court, therefore, that Medichem’s claim of
corroboration stands or falls with the modicum of additional corroborative value
that can properly be assigned to non-inventor Casas’ notebook. However, Casas
did not testify regarding the notebook or the genuineness of its contents. In
addition, although Casas’ notebook was dated, it was neither signed nor
witnessed, and inventor Rodriguez testified that she and Casas had made entries
in each others’ notebooks. Rodriguez characterized these occasions as not out of
the ordinary. As a result, the district court was clearly reliant on the
inventor to help to identify the author of specific entries made in Casas’
notebook, because in a reduction to practice inquiry, only those passages of the
unsigned, unwitnessed notebooks authored by non-inventor Casas could possess
significant corroborative value. In addition, without testimony from Casas, the
court lacked any non-inventor testimony regarding the genuineness of the
notebook’s contents.

We also note that Medichem admitted fraudulently backdating
certain documents relating to a purported 1995 reduction to practice. Even
though the backdating of the 1995 documents was unrelated to the critical pages
in Casas’ notebook, which purport to establish a reduction to practice in 1996,
the district court found that the credibility of the Medichem inventors was
accordingly diminished.

Where a laboratory notebook authored by a non-inventor is offered into
evidence pursuant to authentication by an inventor, where the author of the
notebook has not testified at trial or otherwise attested to its authenticity,
and where the notebook has not been signed or witnessed and has not been
maintained in reasonable accordance with good laboratory practices sufficient to
reasonably ensure its genuineness under the circumstances, then the
corroborative value of the notebook is minimal. Given the facts of this case,
Casas’ notebook should therefore not be accorded much corroborative value. In
view of the minimal corroborative value of the inventors’ notebooks and the
limited value of the NMR spectrum, we conclude that the evidence, evaluated as a
whole under the rule of reason, is insufficient as a matter of law to
corroborate Medichem’s reduction to practice.

The district court did not specifically address corroboration in its
obviousness inquiry, a fact that might, in some circumstances, hamper our
ability to conduct clear error review. Here, however, the facts of the case
admit of only one conclusion as a matter of law, and we therefore decide the
case without remanding to the district court for an explanation of why it
implicitly found corroboration to be present. We hold that corroboration is
absent and that the district court therefore erred in reaching its legal
conclusion that Medichem had reduced its invention to practice in the spring of
1996. Accordingly, we reverse the district court’s award of priority to
Medichem.

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Archived updates for Tuesday, February 07, 2006

.EU Registration Deadline Extended

According to a February 2, 2006 announcement on the EURid website, "When the second Sunrise period begins on Feb 7, the applicants who were eligible to apply during Sunrise 1 can also apply during Sunrise 2, with no exceptions. That means that also trademark license holders (licensees) and public bodies can apply during Sunrise 2, if they haven’t already done so."

James Nurton also wrote for Managing Intellectual Property on February 6, 2006 that "in a previous newsletter, sent in December, EURid said: "Licensees of trade marks can only apply for a .eu domain name under Sunrise I whereas holders of trade marks can do so under Sunrise I and II. This announcement prompted some rights owners to apply for Benelux registrations as a basis for Sunrise I applications. Others set up licences assigning rights to EU-based firms."

Accredited registrars have reportedly criticized the EURid decision as "ad hoc policy making."
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Purpose of Reduction to Practice Experiments May Be Shown in Declarations

Under the U.S. first-to-invent system, the party that is first to conceive the invention, but last to reduce the invention to practice, is still entitled to the patent based on prior
conception if, as first to conceive, they exercised reasonable diligence from a time before the other party's conception date to his own reduction to practice (RTP) date. That diligence must also be cooberated in an often lengthy interference proceeding before the USPTO Board of Patent Appeals and Intereferences.

In Brown v. Barbacid (Fed. Cir.; February 2, 2006), the Board improperly refused to credit any of the work that was performed by Debra Morgan, a scientist working in the Brown laboratory, as evidence of diligence and corroboration of the inventor's, Dr. Reiss', testimony. According to Circuit Judge Newman:

Ms. Morgan declared that she was aware that Dr. Reiss "was working on . . .
the development of an assay for screening of potential inhibitors of this [FT]
enzyme," that she worked on the FT assay, and that she performed experiments
designed by Dr. Reiss. Ms. Morgan stated that her work was to "screen various
peptides for possible inhibitory effect on farnesyl transferase." . . . Ms. Morgan described various farnesyl transferase inhibition studies with reference to the specific study numbers on the notebook pages, and the dates the work was done. She explained a comparative study, with reference to study number and date, in which "a biotin conjugated substrate is used rather than ras as a target for farnesylation," as well as a study in which farnesyl transferase reaction samples were prepared for analysis by thin layer chromatography. Her declaration was accompanied by copies of thirty-eight laboratory notebook pages. Each of the thirty-eight notebook pages was associated with tests specified in her declaration.

The Board found that Ms. Morgan's notebook records along with those of Dr. Reiss filled all but six days of the critical period, and that each of the six remaining days was a single-day gap; this was deemed sufficient to show substantially continuing activity. The Board found that Ms. Morgan "worked for the inventors" and that "her work could inure to the benefit of the inventors to establish reasonable diligence over the entire period." However, the Board refused to credit any of Ms. Morgan's
evidence, criticizing what it described as the absence of explanation of the
content and purpose of these experiments. The Board stated that it was not clear
from the face of the notebook pages what Ms. Morgan had done and why, presenting
as an example of an inadequate record the following page of Ms. Morgan's
notebook:



We conclude that the Board erred in law, in failing to view the proffered evidence as it would be viewed by persons experienced in the field of the invention. See Mahurkar, 79 F.3d at 1577-78 (the trier of fact is aided by an understanding of how the evidence would be viewed by one skilled in the art). The Board is charged with expertise appropriate to the invention under examination, and with understanding that a laboratory notebook recording daily experimentation, reasonably considered from the viewpoint of persons experienced in the field, need not reproduce on each page a statement of the larger research purpose; this purpose may reasonably be shown in the various declarations.

It is undisputed that the subject matter recorded on the Morgan notebook pages and described in her declaration concerns the subject matter of the count. This is the same form and content of evidence that the court in Brown I deemed admissible for purposes of showing conception. The Board agreed that Ms. Morgan's activity during the critical period, if accepted into evidence, established diligence. We conclude that the Board erred in refusing to accept this evidence, and that reasonable diligence is deemed established.

The Board's holding that Brown's reasonable diligence had not been shown is reversed. Although we deplore the lengthy pendency of this proceeding, on remand the Board may decide whether further proceedings as to this issue are warranted.

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Free Online File Storage and Sending


If you’ve ever had to send large files and don’t have access to FTP, or the person you’re sending to doesn’t, then the Creative Guy has a list of fifty free online file storage/sending that require no e-mail registration to use. Included in the list are file size limits, download limits and the amount of time the file remains on the server for download.
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Limited Materiality Provides Less Basis for Inferring Inequitable Conduct Intent

In Purdue Pharma v. Endo Pharmaceuticals (Fed. Cir. February 2, 2006), the court granted rehearing in a case to reverse its earlier position and sent the case back to the trial court to reconsider the balancing of materiality and intent. The previous opinion had affirmed a trial court’s finding that Purdue’s OxyContin® patent is unenforceable due to inequitable conduct where Purdue had made representations of unexpected results to the Examiner based upon “insight” and not hard experimental evidence – and where Purdue did not explain this to the Examiner.

In the second opinion, the court affirmed the trial court’s finding that Purdue’s actions met a threshold level of materiality; however, it stressed that the level of materiality was not especially high:
Purdue did not expressly misrepresent to the PTO that it had obtained
experimental results establishing a four-fold dosage range for oxycodone, an act
that likely would have been highly material. Instead, Purdue made statements
implying that an empirical basis existed for its discovery and then failed to
disclose that the discovery was based only on insight. This omission of
information was material, but not as material as an affirmative
misrepresentation would have been.

The trial court did not make an explicit finding regarding the level of
materiality. Some language in its opinion, however, indicates the trial court
considered Purdue’s failure to tell the PTO the basis for its discovery to be
highly material. As discussed below, the trial court may have erred to the
extent it relied on a high level of materiality in determining whether Purdue
intended to deceive the PTO and whether Purdue ultimately committed inequitable
conduct.

The court went on to acknowledge two problems with the trial court’s analysis of the intent prong.

First, in discounting any evidence of good faith put forth by Purdue, the trial
court relied heavily on internal memoranda and trial testimony regarding
Purdue’s admitted inability to prove with experimental results that OxyContin®
was the most efficiently titratable analgesic. This evidence, however, relates
primarily to Purdue’s attempt to gain FDA approval for a proposed labeling claim
rather than its attempt to obtain allowance of its patent claims.

We agree with Purdue that evidence regarding the difficulty in proving the titration claim is not inconsistent with Purdue’s asserted belief that it had discovered its oxycodone formulations were effective over a four-fold dosage range, compared to an eight-fold dosage range for other opioids. While Purdue alleged during prosecution that ease of titration would result from a reduced dosage range, the two concepts are different. Furthermore, the quantum of proof necessary for FDA approval is significantly higher than that required by the PTO. Therefore, evidence that Purdue personnel believed it would be difficult to satisfy FDA requirements is at best marginally related to whether they intended to deceive the PTO. For these reasons, the trial court erred in giving the weight it did to this evidence when determining that Purdue acted with deceptive intent during prosecution of its patents.

The trial court’s second problem was its failure to properly consider the level of materiality. It appears the trial court perceived the level of materiality to be high and inferred deceptive intent from that high materiality, combined with the court’s erroneous finding that any good faith on the part of Purdue was undercut by its admitted inability to prove the ease of titration claim. It is true that in some cases this court has inferred the requisite intent to deceive when a patentee has withheld highly material information such as a key prior art reference and knew or should have known of its materiality. See, e.g., Bruno, 394 F.3d at 1354; Critikon, 120 F.3d at 1256-57. As discussed previously, however, Purdue’s failure to disclose to the PTO that the asserted four-fold dosage range of the claimed oxycodone formulation was based on insight rather than experimental data does not rise to such a high level of materiality. In a case such as this, when the materiality of the undisclosed information is relatively low, there is less basis for inferring intent from materiality alone. See CFMT, 349 F.3d at 1343.

Because of these errors in the trial court’s intent analysis, we are unable to uphold the court’s finding that Purdue intended to deceive the PTO when it failed to disclose that its "surprising discovery" of the reduced dosage range was based only on insight. However, since the trial court is in a better position than we are to evaluate the evidence of record, we think the prudent course is to vacate the inequitable conduct judgment and remand the case to give the trial court an opportunity to reconsider its intent finding. In doing so, the trial court should rethink the relevance of the evidence relating to whether Purdue could prove that OxyContin® was the most easily titratable analgesic. If the trial court still finds that a threshold level of intent to deceive has been established, the court should reweigh its materiality and intent findings to determine whether the sanction of unenforceability due to inequitable conduct is warranted. In making this determination, the trial court should keep in mind that when the level of materiality is relatively low, the showing of intent must be proportionately higher.

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Archived updates for Monday, February 06, 2006

UKPO Consulatation on Inventive Step

The UK Patent Office is considering the following questions in its Consultation on the the inventive step requirement in United Kingdom patent law and practice.
  • Is the inventive step requirement for patentable inventions in the United Kingdom right for inventors, the public at large, and the UK economy?
  • Are too many "trivial patents" being granted?
  • Or are innovation and competitiveness best served by easy patenting with low hurdles?

A feedback form is provided in the full consultation and feedback form (PDF file 1Mb) for any responses and should be returned to the Patent Office by 31 May 2006.

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The Georgia SpringPosium Conference

Mark your calendar for April 28-30, 2006, for the second annual SpringPosium 2006 intellectual property and technology law conference, presented by Gardner Groff. This year will be at the Brasstown Valley Resort, near Young Harris, in the North Georgia mountains.

The SpringPosium™ conference is a three-day IP and technology law retreat providing your yearly requirement of CLE along with social and recreational time with your colleagues. While everyone is welcome to attend, the event is designed for in-house counsel, law firm associates, and others unable to attend out-of-state CLE functions. And by keeping the location close to Atlanta, you’ll only miss one day of work.

Click here for more information on the 2006SpringPosium™ CLE Seminar.
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SUPER Not Merely Descriptive for Vehicle Lights

In a decision that TTABlogger John Welch calls a "supershocker" the U.S. Trademark Trial and Appeal Board reversed a Section 2(e)(1) refusal to register the mark SUPER, finding it not merely descriptive of vehicle lights in In re Truck-Lite Co., Serial No. 76532510 (January 26, 2006) [not citable]. According to the decision,

. . . in general, if the word "super" in a mark is combined with the generic name of
the goods, or if the goods come in various grades or sizes, then the mark is
merely descriptive rather than suggestive.

In this case, the mark sought to be registered is simply SUPER; it is not combined with the generic name of the goods. Moreover, there is no evidence of record to suggest that lighting products for vehicles come in various sizes or grades, or that "super" has been used as a descriptive designator for vehicle lighting products.
We find that the mark SUPER, when applied to applicant’s goods, is suggestive and not merely descriptive. There is a certain ambiguity about the mark and no information about any quality or characteristic of the goods is conveyed with a degree of particularity. Some thought or imagination would be required on the part of prospective purchasers in order to perceive any significance of the mark as it relates to applicant’s goods.


"Thank goodness the decision is not citable," writes John.
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Archived updates for Friday, February 03, 2006

TGIF for the Steelmark

The Pittsburgh Steelers' logo used to be a punter booming a kick while balanced on a steel beam. Then, in 1962, executives of Cleveland-based Republic Steel suggested the Steelers wear a new emblem called the Steelmark with three hypocycloids representing the coal, iron, and scrap steel materials used in steelmaking:
"I thought it was a good idea, but I wasn't sure how it would be received," Dan Rooney, the team's chairman, reportedly told Alan Robinson of the Associated Press. "That's why it's only on one side of the helmet. Then we took it from there, and we had everybody asking questions and I said, `Let's keep it that way. It's really a novelty.'"

The Steelers are still the only NFL team that sports their logo on only one side of the helmet, the odds are with them for Superbowl XL.

Thank Goodness It's Friday (and May is "Steelmark Month")

--Bill Heinze
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Hormel's Spamarama(.com) Jamma

Billed as "The World Famous Pandemonious Potted Pork Party!" where the unexpected, the ridiculous, and/or the disgusting are always likely to happen, Austin, Texas's Spamarama Festival started in 1976 when Dick Terry observed that anybody can cook chili. "Now if someone could make SPAM® edible, that would be a challenge."

It was not until 1994, after numerous cook-offs, that Hormel entered into a license agreement with Dick's cohort and self-proclaimed "Potentate of Potted Pork Parties," David Arnsberger, to use Hormel's registered SPAMARAMA trademarks in connection with the annual festival held each year around April Fool's Day. However, in the spring of 2004, Hormel learned that "The Wizard of Austin" and co-author of "SPAMARAMA: the Cookbook," John Booher, assumed the responsibilities for the yearly festival and decided to terminate the trademark license in July 2005. Four months later Hormel filed its UDRP Complaint for the spamarama.com domain name.

But Beatrice Onica Jarka, who decided NAF Claim Number FA0511000602996 for the rights to the www.spamarama.com domain name on January 12, 2006, would not give Hormel the domain name. According to her,

The source of the dispute is the termination of the 1994 license agreement
concluded between the Hormel Foods Corporation and David and Sharon Arnsberger. Complainant’s reasoning in explaining Respondent’s the lack of rights or
legitimate interests in the disputed domain name refers explicitly and solely to
the fact that the rights to use the disputed domain name by Respondent, if any,
were terminated when the 1994 license agreement was terminated for material
breach.

The valid termination of said agreement could be questioned at least, from the point of view of the validity of the termination letters, which apparently are signed by a different company than that which signed the license agreement.

Nevertheless, it is not for this Panel to decide on such an issue under the administrative procedure under the Policy. The Policy is designed to deal with cybersquatting and not with the resolution of factually complex and legally complex contractual and/or trademark disputes. See Rudolf Hensel GmbH v. Hensotherm AB, D2002-0634 (WIPO August 31, 2002); Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002).

In addition, there is also the issue Mr. Booher’s copyright as the co-author of SPAMARAMA Cookbook to publicly perform and display the copyrighted work which might justify rights or legitimate interests in having a registered domain name with the same title as the cookbook title. Whether the copyright is covered by the trademark license is again, in the Panel’s opinion an issue which is outside the Policy’s scope.

Finally the use of the disputed domain name by Respondent for more than eight years, and the multiple connections existing on the internet to the website under may also justify rights and interest in using the disputed domain name.

Registration and Use in Bad Faith

The disputed domain name has, since 1998, hosted the website of the SPAMARAMA Festival. It is hard to believe that the Hormel Foods companies have not known of the website’s existence and the owner of the website.

From the facts and evidences presented in the Complaint, it can be inferred only that the three Hormel companies have known that the website under the disputed domain name has been existing and it has been promoting the SPAMARAMA Festival, the SPAMARAMA Cookbook and the SPAM products.

In addition the existence of the legal disclaimer on the first page of the website under the disputed domain name is further proof of lack of bad faith in registering the disputed domain name.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is ordered that the domain name remains with Respondent.

Anyone with information on Austin's Spamarama Fesitval for 2006, please leave a comment below.
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Archived updates for Thursday, February 02, 2006

USCO Proposes Orphan Works Legislation


Thanks to the IP Central Weblog for pointing out that the Copyright Office submitted its Report on Orphan Works -- copyrighted works whose owners may be impossible to identify and locate -- to the Senate Judiciary Committee on January 31, 2006. The Report is available for download in two versions, the Full Report with Appendices, and the Main Text without Appendices.

The Report reccommends that the orphan works issue be addressed by an amendment to the
Copyright Act’s remedies section where, if the user has performed a reasonably diligent search for the copyright owner but is unable to locate that owner, then there are limited remedies that a copyright owner could obtain if they show up at a later date and sue for infringement. According to the Report,

If a user meets his burden of demonstrating that he performed a reasonably
diligent search and provided reasonable attribution to the author and copyright owner, then the recommended amendment would limit the remedies available in that infringement action in two primary ways: first, it would limit monetary relief to only reasonable compensation for the use, with an elimination of any monetary relief where the use was noncommercial and the user ceases the infringement expeditiously upon notice. Second, the proposal would limit the ability of the copyright owner to obtain full injunctive relief in cases where the user has transformed the orphan work into a derivative work like a motion picture or book, preserving the user’s ability to continue to exploit that derivative work. In all other cases, the court would be instructed to minimize the harm to the user that an injunction might impose, to protect the user’s interests in relying on the orphan works provision in making use of the work.

The limitations on remedies should give the user more certainty that his efforts
to make the work available to the public will not result in significant monetary damage or an injunction that would disrupt the efforts the user has made in reliance on the orphan works designation. At the same time, the owner should in most cases be able to recover compensation for the use of his work, prevent new uses of the work by the user, and, where possible, receive attribution for his work.

"The current process for dealing with orphan works inhibits the creation of new uses of these works,” said Congressman Smith who requested the report. “This report will shed light on the problem and potential answers.”

The full text of the proposed legislation is available on the last page of the Main Text.
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New Parties to WIPO Treaties in 2005

According to a press release from the World Intellectual Property Organization, 45 instruments of accession or ratification of treaties administered by WIPO were deposited in 2005. On April 28, 2005 the Patent Law Treaty (PLT) also entered into force.

WIPO Convention
The Convention Establishing the World Intellectual Property Organization was signed at Stockholm on July 14, 1967, and entered into force in 1970. WIPO is responsible for the promotion of the protection of intellectual property throughout the world through cooperation among states, and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.

In 2005, Afghanistan and Comoros (2) adhered to the WIPO Convention.

The total number of contracting parties on December 31, 2005, was 183.

Paris Convention

The Paris Convention for the Protection of Industrial Property was concluded in 1883 and is one of the pillars of the international intellectual property system. It applies to industrial property in the widest sense, including inventions, marks, industrial designs, utility models (a kind of "small patent" provided for by the laws of some countries), trade names (designations under which an industrial or commercial activity is carried on), geographical indications (indications of source and appellations of origin) and the repression of unfair competition.

In 2005, Comoros (1) adhered to the Paris Convention.

The total number of contracting parties on December 31, 2005, was 169.

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT), concluded in 1970, makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a contracting state. The treaty regulates the formal requirements with which any international application must comply.

In 2005, Comoros, Libyan Arab Jamahiriya, Nigeria and Saint Kitts and Nevis (4) adhered to the PCT.

The total number of contracting parties on December 31, 2005, was 128.

Madrid Agreement and Madrid Protocol

The Madrid system for the International Registration of Marks (the Madrid system) is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol).
The Madrid Agreement was concluded in 1891, and the Madrid Protocol was concluded in 1989 in order to introduce certain new features into the Madrid system. These features address the difficulties that prevent certain countries from adhering to the Madrid Agreement by rendering the system more flexible and more compatible with the domestic legislation of these countries.

In 2005, Bahrain (1) adhered to the Madrid Protocol.

The total number of contracting parties to the Madrid Protocol on December 31, 2005, was 67.

Nice Agreement

The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks was concluded in 1957 and establishes a classification of goods and services for the purposes of registering trademarks and service marks. The Classification consists of a list of classes (based on types of products and services) of which there are 34 for goods and 11 for services and an alphabetical list of the goods and services.

In 2005, Bahrain, Egypt, Jamaica and Saint Kitts and Nevis (4) adhered to the Nice Agreement.

The total number of contracting parties on December 31, 2005, was 78.

Vienna Agreement

The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks was concluded in 1973. The Vienna Agreement establishes a classification system for marks consisting of or containing figurative elements. The classification comprises 29 categories, 144 divisions and some 1,887 sections in which the figurative elements of marks are classified.

In 2005, Jamaica (1) adhered to the Vienna Agreement.

The total number of contracting parties on December 31, 2005, was 21.

Locarno Agreement

The Locarno Agreement Establishing an International Classification for Industrial Designs was concluded in 1968. It establishes a classification for industrial designs which consists of 32 classes and 223 subclasses based on different types of products. It also comprises an alphabetical list of goods with an indication of the classes and subclasses into which these goods fall. The list contains some 6,600 indications of different kinds of goods.

In 2005, Latvia (1) adhered to the Locarno Agreement.

The total number of contracting parties on December 31, 2005, was 45.

Budapest Treaty

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure was concluded in 1977. The main feature of the Budapest Treaty is that a contracting state which allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any "international depositary authority," irrespective of whether such authority is on or outside the territory of the said state. This eliminates the need to deposit in each country in which protection is sought.

In 2005, Georgia (1) adhered to the Budapest Treaty.

The total number of contracting parties on December 31, 2005, was 61.

Nairobi Treaty

The Nairobi treaty on the Protection of the Olympic symbol was concluded in 1981. All contracting states are obliged to protect the Olympic symbol (the five interlaces rings) against use for commercial purposes (in advertisements, on goods, as a mark, etc.) without the authorization of the International Olympic committee.

In 2005, Romania (1) adhered to the Nairobi Treaty.

The total number of contracting parties on December 31, 2005, was 44.

Lisbon Agreement

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was concluded in 1958. It aims to provide for the protection of appellations of origin, that is, the "geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors".

In 2005, Iran (Islamic Republic of) and Peru (2) adhered to the Lisbon Agreement.

The total number of contracting parties on December 31, 2005, was 24.

The Hague Agreement

The system of international registration of industrial designs is governed by the Hague Agreement Concerning the International Registration of Industrial Designs which dates from 1925 and has been revised at various times, in particular in London (1934 Act) and the Hague (1960 Act). A new Act of the Hague Agreement was adopted in Geneva on July 2, 1999.
The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs was concluded in 1999 and seeks to make the system more responsive to the needs of users and to facilitate adherence by countries whose industrial designs systems do not permit them to accede to the 1960 Hague Act.

In 2005, The former Yugoslav Republic of Macedonia, Latvia and Singapore (3) adhered to the Geneva Act of the Hague Agreement.

The total number of contracting parties on December 31, 2005, was 19.

Patent Law Treaty (PLT)

Concluded in 2000 and entered into force in April 28, 2005, the Patent Law Treaty (PLT) aims to harmonize and simplify formality procedures in order to result in cost reduction, increase of patent offices' efficiency, reduction of risk of errors and consequent less frequent loss of rights. With a significant exception for the filing date requirements, the PLT provides maximum sets of requirements which the office of a contracting party may apply: the office may not lay down any other formal requirements in respect of matters dealt with by this Treaty.

In 2005 Bahrain, Finland, Romania and the United Kingdom (4) adhered to the PLT.

The total number of contracting parties on December 31, 2005, was 13.

Berne Convention

The Berne Convention for the Protection of Literary and Artistic Works was concluded in 1886. It sets out and defines minimum standards of protection of the economic and moral rights of authors of literary and artistic works.

In 2005, Comoros, Nepal and Uzbekistan (3) adhered to the Berne Convention.

The total number of contracting parties on December 31, 2005, was 160.

Rome Convention

The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, concluded in 1961, secures protection of performers on their performances, phonograms of producers of phonograms and broadcasts of broadcasting organizations.

In 2005, Azerbaijan and Bahrain (2) adhered to the Rome Convention.

The total number of contracting parties on December 31, 2005, was 82.

WIPO Copyright Treaty (WCT)

The WIPO Copyright Treaty (WCT) was concluded in 1996. It extends copyright protection to two additional subject matters: (i) computer programs and (ii) compilations of data or other material ("databases") in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations. It also provides for new rights which correspond to the new forms of exploitation of protected works in the digital environment.

In 2005, Albania, Bahrain, Dominican Republic, Oman, Qatar and Singapore (6) adhered to the WCT.

The total number of contracting parties on December 31, 2005, was 56.

WIPO Performances and Phonograms Treaty (WPPT)

The WIPO Performances and Phonograms Treaty (WPPT) was concluded in 1996. The treaty deals with intellectual property rights of two kinds of beneficiaries: (i) performers (actors, singers, musicians, etc.), and (ii) producers of phonograms (the persons or legal entities who or which take the initiative and have the responsibility for the fixation of the sounds). They are dealt with in the same instrument because most of the rights granted by the treaty to performers are rights connected with their fixed, purely aural performances (which are the subject matter of phonograms).

In 2005, Bahrain, Cyprus, Dominican Republic, Oman, Qatar, Singapore and United Arab Emirates (7) adhered to the WPPT.

The total number of contracting parties on December 31, 2005, was 55.

UPOV Convention (plant varieties)

The International Convention for the Protection of New Varieties of Plants (the UPOV Convention) was concluded in 1961. The objective of the Convention is the protection of new varieties of plants by an intellectual property right.

In 2005, Albania and the European Community (2) adhered to the 1991 Act of the UPOV Convention.

The total number of contracting parties on December 31, 2005, was 60.
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Archived updates for Wednesday, February 01, 2006

USPTO Conference on I/P in the Global Marketplace

The United States Patent and Trademark Office (USPTO) will open a two-day conference for small businesses on “Intellectual Property in the Global Marketplace” on Monday, February 27 at the Westin Horton Plaza Hotel, 910 Broadway Circle, San Diego, California. During the 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.

More information and registration here.
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"INSTANT MESSENGER" Not Generic for America On Line

Thanks to John Welch at the TTABlog for pointing us to In re America Online, Inc., Trademark Serial Nos. 75460305 et al. (January 18, 2006), where the Trademark trial and Appeal Board reversed the Examining attorneys refusal of INSTANT MESSENGER for genericness and found the mark to be descriptive, and therefore capable of functioning as a trademark:

There is also evidence that "messenger" is understood by prospective
purchasers or users as a term that describes the software or program involved in
providing "instant messaging." Thus, prospective purchasers or users
encountering the term "Instant Messenger" used in association with applicant’s
services would immediately understand that applicant’s services involve the
sending, storing, and displaying of messages sent by instant messaging services.
Therefore, we conclude that the term "Instant Messenger" would immediately
describe the function of the identified services, and the examining attorney’s
refusal to register the mark on the ground of mere descriptiveness is affirmed.

The board went on to conclude that the mark had shown sufficient evidence of acquired distinctiveness in order to be published for opposition with a notation of applicant's claim under the provision of Section 2(f) of the Trademark Act.
The examining attorney has not seriously questioned applicant’s assertion that
its marks have acquired distinctiveness but instead relies primarily on the
argument that a generic term can never acquire distinctiveness. See Brief at 12
("‘Instant Messenger’ is generic, and therefore, not registrable under Section
2(f) Acquired Distinctiveness"). At this point, we refer to some of the evidence
we discussed in our genericness discussion. To summarize, applicant has 80
million users who send approximately one billion messages each day on
applicant’s identified services. There are millions of visitors to its website
each day where the mark is displayed. It has licensed many corporations to use
its services identified by the term INSTANT MESSENGER. Its advertising has
reached a significant percentage of people in the United States and it has
provided some affidavits from customers who recognize its term as a mark for
applicant’s services. Therefore, applicant has met its burden of showing that
its term INSTANT MESSENGER has acquired distinctiveness and the examining
attorney’s refusal to register under Section 2(e)(1) is reversed.
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CAFC Reiterates Motivation Requirement for Combination of References

In a decision that Professor Wegner calls "an otherwise unremarkable affirmance of a pro se inventor's obviousness appeal," the court in In re Scott E. Johnston (Fed. Cir., January 30, 2006) "reiterates its 'motivation' test to establish obviousness of a combination invention:"

Precedent requires that to find a combination obvious there must be some teaching, suggestion, or motivation in the prior art to select the teachings of separate references and combine them to produce the claimed combination. Karsten
Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) ("In
holding an invention obvious in view of a combination of references, there must
be some suggestion, motivation, or teaching in the prior art that would have led
a person of ordinary skill in the art to select the references and combine them
in the way that would produce the claimed invention."); In re Dance, 160 F.3d
1339, 1343 (Fed. Cir. 1998) ("When the references are in the same field as that
of the applicant's invention, knowledge thereof is presumed. However, the test
of whether it would have been obvious to select specific teachings and combine
them as did the applicant must still be met by identification of some
suggestion, teaching, or motivation in the prior art, arising from what the
prior art would have taught a person of ordinary skill in the field of the
invention."); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must
be "some objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references"); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) ("When prior art
references require selective combination by the court to render obvious a
subsequent invention, there must be some reason for the combination other
than the hindsight gleaned from the invention itself.") elements from different sources and states that they should be combined in the same way as in the invention at issue, is rarely found in the prior art. As precedent illustrates, many factors are relevant to the motivation-to-combine aspect of the obviousness inquiry, such as the field of the specific invention, the subject matter of the references, the extent to which they are in the same or related fields of technology, the nature of the advance made by the applicant, and the maturity and congestion of the field. Objective indicia are also relevant, see Graham v. John Deere Co., 383 U.S. 1 (1966), for the commercial response to an invention is a useful control upon hindsight evaluation of obviousness.

These considerations have been extensively illustrated. E.g., Vulcan Engineering Co., Inc. v. Fata Aluminium, Inc., 278 F.3d 1366, 1372 (Fed. Cir. 2002) (continuous lost foam casting); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (golf club). Precedent has also recognized that "[t]he suggestion or motivation to combine references does not have to be stated expressly; rather it may be shown by reference to the prior art itself, to the nature of the problem solved by the claimed invention, or to the knowledge of one of ordinary skill in the art." Medical Instrumentation and Diagnostics Corp v. Elekta AB, 344 F.3d 1205, 1221-22 (Fed. Cir. 2003). These criteria have served to impart objectivity to the
determination of obviousness. See In re Rouffet, 149 F.3d 1350, 1358 (Fed.
Cir. 1998) (obviousness requires proof "that the skilled artisan . . . would
select the elements from the cited prior art references for combination in
the manner claimed").

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