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Archived updates for Tuesday, August 31, 2004

Foreign Policy: "Preempting Piracy" by Patenting Traditional Knowledge

According to an article in the September/October 2004 issue of Foreign Policy, entitled "Preempting Piracy:"

Hoping to prevent wealthy corporations from staking patent claims to traditional remedies, some nongovernmental organizations and even a few governments are cataloging indigenous medicines and plant species in online databases. The American Association for the Advancement of Science maintains a database at that is open to traditional knowledge holders who want to preempt patenting by others. Links to similar databases can be found on the Web site of the World Intellectual Property Organization (

However, Devinder Sharma, chair of the New Delhi-based Forum for Biotechnology & Food Security, a collective of scientists, farmers, and environmentalists, argues that instead of relying on databases of traditional knowledge, developing countries should follow the example of China's government, which has secured around 12,000 patents on its own traditional medicines.

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The Section 337 "Weapon"

According to an article by William A. Zeitler in, entitled Section 337 is an Effective Weapon to Combat Imports that Infringe your IP Rights, "a key feature of 19 U.S.C. § 1337 is the U.S. International Trade Commission's authority to issue [a "general" exlcusion] order excluding entry of infringing products into the United States. Being in rem, such an order applies to the product, not the infringer [in order to] exclude infringing products from all sources and countries." He also writes that "Over one-half of Section 337 investigations are resolved by licensing agreements or by consent" and that "very few ITC Section 337 determinations have been reversed by the United States Court of Appeals for the Federal Circuit, the ITC's reviewing court."

Click here for more information on "Unfair Import Investigations Before the U.S. International Trade Commission."
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USPTO Fee Structure under H.R.1561, the Death of S.1760

Special thanks to Mr. Colarulli and the folks at the Intellectual Property Owners Association for the message below correcting the information in a link (to Eliopoulos Intellectual Property Law in Mississauga, Ontario, Canada) from my previous article on the new USPTO fees.

Click here for the IPO's "Fee Structure under H.R. 1561."

-----Original Message-----
From: Dana R. Colarulli
Sent: Monday, August 30, 2004 7:50 PM
To: Heinze, William
Subject: FW: Your
Bloglet Update from "I/P Updates"


I saw the copy of the fee structure comparison in today's Bloglet and I
question at least a few of the numbers. Attached is a much simpler version of a comparison that IPO developed (this version provides much less detail but is a helpful very general comparison). I've highlighted additional claim fees below.

S.1760 listed on the cited chart is no longer a viable bill and H.R.1561,
passed by the House on March 3, 2004, is now the active legislation pending in front of the Senate.

Thanks for your Bloglet. Let me know if I can answer any questions about status of other legislation.

Mr. Dana Robert Colarulli
Government Relations and Legislative Counsel
Intellectual Property Owners Association (IPO)
1255 23rd Street, NW, Washington, DC 20037

---Original Message-----
From: []
Sent: Sunday, August 29, 2004 7:27 AM
To: Dana Colarulli
Subject: Your Bloglet Update from "I/P Updates"

Here are your daily Bloglet subscriptions:

I/P Updates . . .

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Archived updates for Monday, August 30, 2004 Rates for License Agreements or Valuation of Intangible Assets

According to their website, RoyaltyStat® is a subscription database of royalty rates and license agreements compiled from the U.S. Securities and Exchange Commission (SEC) Edgar Archive. In RoyaltyStat you can find comparable royalty rates for valuing (or licensing) intangible assets. Every license agreement in RoyaltyStat contains at least one numerical (non-redacted) royalty rate, and the database is updated every business day. Click here for a preview.
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U.S. and Canadian IP Officials Meet

Nick Godici is Commissioner for Patents. Esther Kepplinger is Deputy Director for Patent Operations. Lois Boland is Director of International Relations.
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IAM: GE's IP (Licensing) Revolution

According to the August/September 2004 Issue of Intellectual Asset Management, companies that spend billions of dollars on R&D and tens of millions more on securing patents to protect the results of this work are clearly making a substantial investment. But quality intellectual property just sitting in a portfolio gathering mothballs is going to do very little in the way of contributing to the bottom line. The challenge for GE's new Corporate Vice President and Chief Intellectual Property Counsel, Todd Dickinson, is to develop a strategy that will allow GE to make more of the intellectual property it owns.

"You are going to see GE being more proactive in the way that it uses its intellectual property. One of the things I have to look at is whether we are extracting the value from our IP that justifies the investments we have made in creating it," he says. However, he also stresses this is not just about the straightforward monetisation of portfolios. "There are also ways to manage IP strategically for value, such as tax issues, donations and joint venturing, that all have to be looked at . . . We have several licensing organisations, including a central one, and they all have a direct reporting line into me, as well as to other people. We have to decide how to manage the relationships involved and to work out whether it can be done in a more coordinated fashion. The answer is probably yes it can but we also have to come up with a system that continues to respect the individuality of the separate operations."
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Patent Watch Searches via RSS

Here is a link to a script that generates an RSS feed for search results from the USPTO search page.
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Archived updates for Saturday, August 28, 2004

Free Patent Searching Tutorial

The purpose of this tutorial from the University of Texas McKinney Engineering Library is to give users a hands-on, interactive patent searching experience utilizing the United States Patent and Trademark Office's website.
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USPTO Reliance Not Required for Argument-Based Estoppel?

According to "Patently Obvious: the MBHB Patent Blog," the Federal Circuit made the following statement in Lifestream Diagnostics v. Polymer Technologies, 03-1630 (Fed. Cir. 2004) (unpublished opinion):
"We hold that reliance by the Patent Office upon arguments made by the patentee during prosecution is not necessary to find argument-based estoppel.... Because we reverse some of the district court's claim construction, we vacate the court's judgment of noninfringement and remand."
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Comparison of USPTO Fee Change Possibilities

Click here for a comparison table showing the current FY2004 fees, the FY2005 fees effective October 1, 2004, and the proposed fees under both the House and Senate bills, from Eliopoulos Intellectual Property Law in Mississauga, Ontario, Canada.
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Archived updates for Friday, August 27, 2004

Reuters: Bush Team Rejects Call to Pull Olympic TV Ad

According to a August 26, 2004 article through Reuters news service, "The re-election campaign for President Bush refused to pull an ad that has Olympic Games officials fuming. . . . The television ad for the November election has an announcer saying at 'this Olympics there will be two more free nations,' referring to the U.S.-led invasions of Afghanistan and Iraq under Bush's presidency. "We own the rights to the Olympic name and nobody asked us," the head of the International Olympic Committee's Marketing Commission reportedly said.
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Technology Transfer: Licensing Intellectual Property from Universities to Industry

In this Angel Investor News article, Behfar Bastani, Evelyn Mintarno, Dennis Fernandez present an overview of university tech transfer and approaches for finding and accessing university technology. They point out potential pitfalls for a technology company looking to bring the power of university research to fruition in its products, and illustrate typical licensing terms and different types of licenses.
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New USPTO Fees Effective October 1, 2004

This USPTO has now published its final rule to adjust fees for the 2005 fiscal year. The notice also points out that the United States Patent and Trademark Fee Modernization Act of 2004 (H.R. 1561) passed the House of Representatives on March 3, 2004 and similar legislation is pending in the Senate as S. 1760. If passed, these bills would significantly alter the fee amounts and procedures. Customers should therefore be aware that any legislative changes to these fees would supersede certain patent fees in this final rule.

In addition, certain rules on fees associated with practices of the Board of Patent Appeals and Interferences are being consolidated in a new part 41 of 37 CFR. These changes were made in accordance with applicable provisions of the recent notice on Rules of Practice Before the Board of Patent Appeals and Interferences which become effective September 13, 2004.
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CNET: VeriSign Loses in Antitrust Suit against ICANN

According to an August 26, 2004 article by CNET, a federal district court judge has thrown out VeriSign's legal arguments that ICANN's ban on its "Sitefinder" service for redirecting misspelled Web addresses to its own site amounted to a violation of U.S. antitrust law. Six other counts that were leveled by VeriSign were also are reported to be dismissed.
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"Free Culture" Recordings

Someone asked, "Anyone feel like recording a chapter of Lawrence Lessig's new book?" In less than 24 hours, this idea mushroomed into a significant collaboration by a team of bloggers and others to record and publish all of Larry's book. Here is Chapter One, "Creators," recorded by IT Conversations host Doug Kaye. Visit Scott Mathew's web site for links to additional chapters recorded by others.
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IT Conversations on Law and IT: MGM v. Grokster

Ernest Miller, Tim Wu, Denise Howell, Charles Petit, and Fred von Lohmann of the EFF, who argued the case, discuss the decision. It's the first edition of another new IT Conversations series, The Importance of...Law and IT.IT Conversations: MGM v. Grokster - Law and IT
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Heels on "How to Get and Defend a Patent Without Going Broke"

According to Eric Heels, It is actually possible for independent inventors and small businesses to acquire and protect their ideas without going broke in the process. His advice:
1. Consider trade secrets.
2. Consider doing it yourself.
3. Understand patent basics.
4. Consider hiring a patent agent.
5. Quiz your patent professional.
6. Ask good questions.
7. Do a patent search.
8. Consider filing a provisional patent application.
9. File at the right time.
10. Get insurance.
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TGIF for the "Interrobang Comma"

According to the abstract of WIPO Patent Publication No. WO9219458,
Using two new punctuation marks, the question comma and the exclamation comma: and respectively, inquisitiveness and exclamation may be expressed within a written sentence structure, so that thoughts may be more easily and clearly conveyed to readers. The new punctuation marks are for use within a written sentence between words as a comma, but with more feeling or inquisitiveness. This affords an author greater choice of method of punctuating, e.g., to reflect spoken language more closely. Moreover, the new punctuation fits rather neatly into the scheme of things, simply filling a gap, with a little or no explanation needed. Also, the interabang comma if the interabang is available. An example of usage follows. Readers encountering their first question comma in print may silently remark: "Clever (! + ? + , =) funny I never saw one of those before".

But don't laugh too hard; you may already be infringing.

Thank Goodness It's Friday especially in New Zealand

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Archived updates for Thursday, August 26, 2004

Radio Free PTO: USPTO Duping Employees

According to the August 2004 "Radio Free PTO" newsletter of the Patent Office Professional Association,
"The USPTO is instructing its supervisors in ways to trick their employees into admitting unauthorized absence and phone use without informing employees of their rights under the law and their labor contract. . . . The moment that a management representative or supervisor asks if a phone call was for business or personal reasons, even if it sounds like a friendly exchange, that is the moment when you are involved in an investigatory interview and you are entitled to union representation. It's unwise to continue the interview without requesting representation first and then immediately calling the union."
The Patent Office Professional Association is the legally recognized voice of approximately 2700 examiners, classifiers, computer scientists, and other patent professionals.
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IP Law & Business: Goldscheider's "25% Rule" for a Reasonable Royalty

"All things being equal, a licensee will pay 25 percent of profits as a reasonable royalty. "

According to an August 4, 2004 article in IP Law & Business, Robert Goldscheider arrived at this now-famous calculation in 1959 when one of his clients, Philco Corporation, had about 18 European licensees for its radio and phonograph patents. Goldscheider calculated that Philco's licensees assumed the major risk of commercializing their products, about 75 percent. That left 25 percent of the risk to licensor Philco, reflected in a 25/75 percent split of pretax profits. Probably the best-known economic damages expert in the nation, the 75-year-old has testified in more than 100 IP cases. "I have three homes, am worth several million dollars," he says. "I don't have to work unless I want to."
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China Publicizing Counterfeit Crackdown

Chinese workers destroy counterfeit products in Guangzhou, southern China, on August 25, 2004, via Reuters.
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Archived updates for Wednesday, August 25, 2004

USPTO to Disconnect Voice Response Systems for Deposit Account and Maintenance Fee Information

According to the USPTO's notice published August 24, 2004, "The existing VRS hardware and software have become increasingly obsolete and subject to downtime. As the same information provided on the VRS can now be obtained at the Office of Finance website, the USPTO will be disconnecting the VRS phone numbers (703-306-4227 and 4228, 703-308-5036 and 5037, 703-308-5392 and 5393) effective September 24, 2004.
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Foreign Outsourcing of Patent Preparation

According to an August 25, 2004 article in The Recorder, an Orland Park, Ill. manufacturer of telecom infrastructure equipment has cut back on its use of American outside counsel by sending some of its patent application work to a law firm in Wellington New Zealand. James Petelle, the company's secretary and vice president of law, says that outsourcing works particularly well because New Zealand's patent rules are similar to those in the United States. "We wouldn't be afraid to send anything to these guys," Petelle reportedly said. The article correctly notes that a licensed U.S. lawyer or registered patent agent is not needed merely to write a patent application, although only registered patent and agents are authorized to represent others before the U.S. Patent and Trademark Office.
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InformationWeek: USPTO's CIO Moving To Interior Department

According to an August 24, 2004 article in InformationWeek, Douglas Bourgeois, who has been CIO at the agency for more than three years, announced Monday that he has accepted an offer to become director of the Department of Interior's National Business Center. Bourgeois will be succeeded in the interim by Deputy CIO Ronald Hack who has been the principal adviser to the Patent Office on the application of IT to support the office's business processes.
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Free Webcast/Phone Seminar Tomorrow on "Claim Drafting with a View toward Litigation"

Sign-up here for "Claim Drafting with a View Toward Litigation," Aug 26, 2004, 11:30 AM CDT
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"Nonanalogous Art" Argument Fails Again

In IN RE BIGIO, No. 03-1358 (Fed Cir. August 24, 2004), the nonanalogus art argument was unsuccessful for overcoming a combination references to obviate a utility patent claim for a hairbrush. According to the Federal Circuit,
In this case, both the examiner and the Board found that toothbrush art is analogous to Bigio's hair brush invention. In support of that finding, the Board referred to the structure and function of the claimed invention in the application. The Board further assessed the field that one of skill in this art would consider within the same endeavor as the claimed invention. In other words, the Board applied the test for analogous art in keeping with the counsel of this court's predecessor: "The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush." In re Wolfe, 251 F.2d 854, 856 (CCPA 1958) (emphasis added).

In this case, the term "hair brush" alone does not specify the kind of hair to be groomed by the claimed invention. Thus, the term may reasonably encompass not only scalp hair brushes but also facial hair brushes. The Board correctly declined to accept Bigio's invitation to narrow the interpretation only to scalp hair by importing a limitation from the specification. Moreover, the Board's interpretation does not strain the bounds of the "broadest reasonable interpretation" of the term "hair brush." Indeed that term may reasonably encompass more than a grooming device for scalp hair. This court therefore affirms the Board's interpretation of "hair brush."

Because there is no dispute that the combination of the three toothbrush references renders Bigio's invention obvious, this court's affirmance of the Board's finding that toothbrush art is analogous to Bigio's invention disposes of all remaining issues in this appeal.
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USPTO Releases PatentIn 3.3

On August 24, 2004, the United States Patent and Trademark Office announced the release of PatentIn version 3.3. PatentIn 3.2 is is their authoring software for amino acid sequence listings and the new version includes:

Easier Sequence Skipping - A checkbox has been added to the sequence window to indicate whether a sequence should be skipped. The sequence will be skipped if the box is checked and all data related to the skipped sequence can remain in the PatentIn 3.3 project during the sequence listing generation.

Sequence Type Conversion - PatentIn 3.3 allows sequence type conversion between non-protein type sequences by clicking on the new AlterSeqType button on the sequence window.

Direct Access - From the main window to the database window instead of the journal window is provided in PatentIn 3.3. The system also provides direct access from any publication window to any other publication windows.

More Date Validations - For example: all dates entered into the sequence listing must be earlier than the current date; the Current Filing Date must be more recent than the Prior Application Filing Date; and, the Publication Date must be more recent than the Filing Date.
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Archived updates for Tuesday, August 24, 2004

Free PDF Writer

According to their website, CutePDF Writer (formerly CutePDF Printer) is the free version of commercial PDF creation software. CutePDF Writer installs itself as a "printer subsystem". This enables virtually any Windows applications (must be able to print) to create professional quality PDF documents. It's free because they want you to also buy CutePDF 3.0 (formerly CutePDF Plus) for $49.95 with CutePDF Writer and CutePDF Form SDK. CutePDF Form Filler can be used to save PDF forms to your computer to fill in at your convenience, e-mail completed forms, and apply 128-bit encryption or password protection before submitting. CutePDF Form SDK enables your applications to process interactive PDF forms, FDF/XFDF/XML data files on the fly.
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CAFC Emphasizes Evidentiary Standard for Invalidity

In Koito Manufac. v. Turn-Key-Tech, slip op. 03-1565, -1603, August 23, 2004, the district court focused exclusively on the JP '082 reference, concluding that "the evidence regarding this reference alone is sufficient to support the jury’s anticipation verdict." At trial, Koito entered the JP '082 reference into evidence, but otherwise failed to provide any testimony or other evidence that would demonstrate to the jury how that reference met the limitations of the claims in the '268 patent or how the reference enabled one of ordinary skill in the art to practice the claimed invention.

In fact, Koito did not even mention the JP '082 reference after introducing it into evidence. Koito's expert merely offered a conclusion of invalidity relating to a quintet of prior art patents which included JP '082, stating that
All these prior art patents provide for products and ways of making products with thick and thin sections. The gate locations are shown, and they all have inherently crossing flows in sections of the product, sometimes substantial sections of these products, such that they all would have a cross-laminated section as Turn Key is applying that term to the accused lenses.
The Federal Circuit concluded that the district court erred in finding Koito’s evidence to be sufficient to meet Koito's burden of showing anticipation by "clear and convincing evidence."
We have consistently explained what is necessary to show anticipation by a given reference:
Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory.
General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity. This is so even when the reference has been submitted into evidence before the jury. Because Koito failed to articulate how the reference anticipates or makes obvious the '268 patent, it has not presented sufficient evidence for the jury with respect to the reference.

We cannot, however, so easily dismiss Koito's other evidence of anticipation and obviousness. At trial, Dr. Kazmer analyzed a TDK two-color cassette and discussed in detail the prior art Japanese patent 1-113886. In addition, Turn-Key’s expert Dr. Paul Brown admitted at trial that certain limitations of the '268 patent were present in the prior art. On remand, the district court should review the trial testimony and evidence, especially that regarding the plastic cassette technology, to determine whether Koito provided clear and convincing evidence to the jury on the issue of anticipation and obviousness to render the '268 patent invalid.
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I/P Updates Today's "Featured Feed" on Blawg

Click here for more information on Law and Legal Related Weblogs (courtesy of "Blawg")
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Jonathan Schwartz on Proprietary Software (Patentability?)

"[A] server without an operating system is a space heater." writes Jonathan Schwartz, CEO - Sun Microsystems, on August 16, 2004. "To me, HP's problems spawn from the death of... their operating system, HP/UX. Like IBM, they've elected to ask their customers and ISV's to move to Red Hat Linux or Microsoft Windows on x86 systems. And if you're an ISV, how does that differentiate HP? - they're a box vendor. If you're a customer, where does that leave you with your HP/UX investments? Facing untimely change - with a vendor no longer in charge of their OS. . . . And while HP stumbles into that reality, our commitment to Solaris (did I mention we're open sourcing it - check out highlights the demise of HP/UX."
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Archived updates for Monday, August 23, 2004

WIPO: I/P Institution Building for LDCs

Over the next year, WIPO Magazine will publish a series of articles aimed at lesser developed countries addressing their IP needs in the area of "IP institution building." This first article provides some background on the current situation in these LDCs where, for some, the IP system is a crucial factor in their prosperity in this era of the knowledge economy. Others, on the other hand view I/P as a kind of new protectionism, compensating for declining forms of trade protection such as tariffs, non-tariff, measures and subsidies.
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WIPO: New Ways of Making a Mark

According to the July/August 2004 Issue of WIPO Magazine,
"The very essence of a trademark is its ability to distinguish the goods and services of one trader from those of another. Traditionally, trademarks consist of words, letters, numerals or designs. However, innovative marketing technologies and electronic commerce are precipitating an evolution in the symbolic representation of trademarks. Any new and distinctive sign that can be graphically represented can be the object of a non-conventional trademark."
The artcile discusses several forms of distinctive signs including color, sound, fragrance and holograms.
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(Un)Professional Phone Courtesy

Be careful what you say, your voicemail may wind up on the KinsellaLaw Web Log. See the Friday, August 20, 2004 posting.
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Archived updates for Friday, August 20, 2004

The Compleat Phisher?

According to an August 19, 2004 report from ZDNet UK, "Some Web sites are now offering surfers the chance to download free 'phishing kits' containing all the graphics, Web code and text required to construct the kind of bogus Web sites used in Internet phishing scams." Click here for a better "angle."
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Chinese State Council to Meet on Intellectual Property Rigts

According to an August 20 2004 article in the Washington Times, Chinese Vice-Premier Wu Yi commented at a meeting of the interdepartmental National Intellectual Property Protection Work Group that "China's State Council will soon hold a meeting to launch a national campaign to protect intellectual property rights."
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TGIF: @ This, Mr. Lucht!

According to an August 17 article in "The Register" Robert-Alan Lucht has been sending out invoices for electronic publishing licensing rights to the "@" symbol. Fancy that, just 10 bucks a year will keep you out of court for all of those infringing e-mail messages.

Like the IPKat, I too am part appalled, and part entranced. "This ploy would appear to set new standards for brazen chutzpah," the 'Kat purred while directing fellow fanciers on the prowl for Internet scams to MeeOuch!
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Corporate Counsel Describe Outrageous Bills

The following examples appeared in a recent issue of Corporate Counsel Magazine next to an article entitled "GCs Audit Outside Counsel With E-Billing"
* overdue book charges from the Los Angeles County Law Library
* computer service desk and secretarial time
* expert fees, for work done after a case was settled
* a bonus to the bill for good results after a lost trial
* three lawyers travelling first class when only one was needed
* a 30% "success fee" bonus for an uncontested takeover of a public company
* .3 or .5 hours for notifying a partner at another of the firm's offices that someone would be calling to seek assistance
John McGuckin, executive vice president, general counsel and secretary of Union Bank of California offers this advice -- "When in doubt, don't bill it, especially if the final bill for legal services has already been sent."

Better yet, click here for information on electronic billing of intellectual property legal services.
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Archived updates for Thursday, August 19, 2004

Taiwan Semiconductor Requests Unfair Import Investigation of Semiconductor Devices

On August 18, 2004, Taiwan Semiconductor Manufacturing, Ltd., TSMC North America, and WaferTech L.L.V. filed a "Section 337" unfair import complaint at the U.S. International Trade Commission.

The complaint requests that an unfair import investigation be instituted involving "Certain Semiconductor Devices and Products Containing Same." The proposed respondents are: Semiconductor Manufacturing International Corporation (Cayman Islands), CHINA; Semiconductor Manufacturing International (Shanghai) Corporation, CHINA; SMIC Beijing, CHINA; and SMIC Americas, Fremont, California. The complaint has been designated as confidential and assigned Docket No. 337-2393 for indexing in the Commission's database.

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

Click here for more information on the importance of monitoring these ITC investigations, such as by subscribing to the free "I/P Updates" news service at And click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."

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

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Copyright Crusades Reach the Schools

In an effort to balance materials offered by groups like the Business Software Alliance and the Motion Picture Association of America, the American Library Association will distribute its cown opyright education materials through high-school librarians this winter or spring. "We want to teach children to be thinking human beings," Melinda Anderson, a spokeswoman for the NEA, reportedly told Wired Magazine. "Not a parrot for some corporate agenda."
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Grokster and Morpheus Affirmed by the Ninth Circuit

Ninth Circuit Court of Appeals has affirmed that Grokster and Morpheus P2P, distributors of peer-to-peer file-sharing computer networking software, may
not be held contributorily or vicariously liable for copyright infringements by users. According to the opinion,
As to the question at hand, the district court's grant of partial summary judgment to the Software Distributors is clearly dictated by applicable precedent. The Copyright Owners urge a re-examination of the law in the light of what they believe to be proper public policy, expanding exponentially the reach of the doctrines of contributory and vicarious copyright infringement. Not only would such a renovation conflict with binding precedent, it would be unwise. Doubtless, taking that step would satisfy the Copyright Owners' immediate economic aims. However, it would also alter general copyright law in profound ways with unknown ultimate consequences outside the present context.

Further, as we have observed, we live in a quicksilver technological environment with courts ill-suited to fix the flow of internet innovation. AT&T Corp. v. City of Portland, 216 F.3d 871, 876 (9th Cir. 1999). The introduction of new technology is always disruptive to old markets, and particularly to those copyright owners whose works are sold through wellestablished distribution mechanisms. Yet, history has shown that time and market forces often provide equilibrium in balancing interests, whether the new technology be a player piano, a copier, a tape recorder, a video recorder, a personal computer, a karaoke machine, or an MP3 player. Thus, it is prudent for courts to exercise caution before restructuring liability theories for the purpose of addressing specific market abuses, despite their apparent present magnitude. Indeed, the Supreme Court has admonished us to leave such matters to Congress. In Sony-Betamax, the Court spoke quite clearly about the role of Congress in applying copyright law to new technologies. As the Supreme Court stated in that case, "The direction of Art. I is that Congress shall have the power to promote the progress of science and the useful arts. When, as here, the Constitution is permissive, the sign of how far Congress has chosen to go can come only from Congress." 464 U.S. at 456 (quoting Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 530 (1972)).
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USPTO Disclosure Document Program Under Review

The USPTO's Document Disclosure Program, providing two-year presevation of documents evidencing the date of conception of an invention, is now under review. Comments are being solicited on a variety of issues including "whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility." Written comments must be submitted to the USPTO on or before October 18, 2004.
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CAFC: Conference Poster a Printed Publication

In re Klopfenstein, slip op 03-1583 (Fed. Cir. August 18, 2004) held that, regardless of a lack of indexing, a conference poster was made sufficiently publicly accessible to count as a "printed publication" under Sec. 102(b). According to the court,
Appellants presented a printed slide presentation (or "the Liu reference") entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting. The reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention behind the '950 patent application. Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information. For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a "printed publication" under Sec. 102(b).

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Accessible Foreign Plant Sales May Enable Publication for 102(b) Bar

In re Elsner, slip op. 03-1569 (Fed Cir. August 16, 2004) held that evidence of the foreign sale of a claimed reproducible plant variety may enable an otherwise non-enabled printed publication disclosing that plant, thereby creating a §102(b) bar. Although the foreign sales of the Pendec geranium and the JACopper rose were not themselves §102(b) prior art against the patent applications, the court held that the foreign sale could enable a person of skill in the art to practice asexual reproduction of the disclosed plant in a manner consistent with the statute. The court went on to ststae that
[A]lthough we agree with the PTO that foreign sales may enable an otherwise non-enabling publication, we find that factual issues remain with respect to the accessibility of the foreign sales of the claimed plants and the reproducibility of the plants. The Board did not specifically address how readily one skilled in the art could have learned of the foreign sales from the printed PBR applications. In the present appeals, the examiners discovered the PBR applications through a search of the relevant PBR database. They subsequently asked Appellants to provide copies of the applications, as well as any additional information regarding the claimed plant varieties. Both appellants responded that the claimed plants had been on sale in foreign countries. It is unclear, however, whether a skilled artisan would have known of the foreign sales. The foreign sale must not be an obscure, solitary occurrence that would go unnoticed by those skilled in the art. Its availability must have been known in the art, just as a printed publication must be publicly available. See In re Bayer, 568 F.2d 1357, 1361 (CCPA 1978) (“[A] printed document may qualify as a ‘publication’ under 35 U.S.C. § 102(b) . . . so long as accessibility is sufficient to raise a presumption that the public concerned with the art would know of the invention.� (quotation omitted)). We have stated before with respect to prior art references that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.� Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).

Moreover, the Board did not find that, even if the interested public would readily know of the foreign sales, those sales enabled one of ordinary skill in the art to reproduce the claimed plants without undue experimentation. Such a determination is critical to the question whether the foreign sales would enable the printed publications.

We therefore remand both cases for further factual findings relating to the accessibility of the foreign sales of the claimed plants and the reproducibility of the claimed plants from the plants that were sold.
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Links to State Trademark Agencies and Databases

Click here for links to State Trademark Agencies and Databases
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EU Innovation and Technology Transfer Newsletter for July 2004

This newsletter on innovation from the European Commission's Enterprise DG is available here.
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Archived updates for Wednesday, August 18, 2004

New Software for the USPTO's Patent Electronic Filing System (EFS) Starting August 22

Subject: Improvements to the Patent Electronic Filing System
Date: Wed, 18 Aug 2004 10:47:35 -0400
From: "PEDAL"
Sender: "Smith, Michelle"

Improvements to the Patent Electronic Filing System (EFS)

The United States Patent and Trademark Office (USPTO) is pleased to announce improvements to the Patent Electronic Filing System (EFS). Beginning Sunday, August 22, 2004 the Office will make available EFS-ABX version 1.1 and ePAVE version 5.1d.

The New Authoring Tool - EFS-ABX

EFS-ABX is the new authoring tool used to create patent application specifications. EFS-ABX allows users to develop a patent application completely in Microsoft® Word which greatly improves the workflow of creating a patent specification over current authoring tools. Additional features and benefits of EFS-ABX include:

EFS-ABX converts all images contained in the Microsoft® Word file to TIFF files. Users no longer need to scan and save every image in their specification as a TIFF file and are now able to create and edit graphics using any tool and format that is integrated with Microsoft® Word.

EFX-ABX validates the application specification against USPTO business rules and format requirements.

EFS-ABX allows users to import a Microsoft Word document and an XML file created using the previous authoring tool, PASAT.

ePAVE Version 5.1d

The new ePAVE software still includes all of the familiar functions of the previous version, and has been updated to accept only specifications created using EFS-ABX to ensure that the legal record at the USPTO matches what the customer created and intended. ePAVE 5.1d also includes an enhanced Address Book Feature available on all data entry screens.

To accommodate changes to the EFS Server related to the release of the new versions of the EFS software, EFS will be unavailable from 11:00 PM Saturday, August 21, 2004 until 4 PM Sunday, August 22, 2004.

During this time the USPTO EFS server will NOT accept electronic filings of Patent Applications and related documents. External customers are strongly encouraged to submit ‘in process’ Patent Application Specifications
using ePAVE 5.1a, prior to the scheduled outage. Submissions after 4 PM Sunday, August 22, 2004 will require that the user install and use both EFS-ABX v1.1 and ePAVE 5.1d.

Customer Software Requirements

The new version of EFS requires Microsoft® Windows2000 with Service Pack 2 or later or Windows XP with Service Pack 1, and Microsoft® Word as provided in Microsoft® Office 2000 or Office XP. For questions and additional
information on the system requirements, please contact the Patent Electronic Business Center (see the Getting Started Section below for contact information).

Getting Started

The USPTO is mailing a diskette with the upgraded EFS software to all of our e-filing customers. Software downloads and information regarding enhancements, upgrades, frequently asked questions, and support are also available on our website. Please visit the Electronic Filing Software page at You can also request free copies of our software on CD by contacting the Patent Electronic Business Center. The Patent EBC is a complete customer service center that supports all Patent e-business products and service applications. EBC representatives can be reached at 703-305-3028 or toll free at 866-217-9197 between the hours of 6 a.m. and midnight Monday through Friday EST, or by e-mail at

Additional information is available on the Patent EBC Web site at
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USPTO: Transcript of On-Line Chat for Independent Inventors

Click here for a transcript of the USPTO's "On-Line Chat for Independent Inventors" held on Tuesday, July 27, 2004. The next next chat is tentatively set for Tuesday, September 21, from 2:00-3:00.
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PCT Timetable Available on the Internet

Click here for "Time Limits for Entering National/Regional Phase Under PCT Chapters I and II Applicable on 1 April 2002 or Subsequently"
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Archived updates for Tuesday, August 17, 2004

Israelite Speaks on Music Piracy

"The music industry deserves special attention from the Department of Justice because as an industry you have done more to help yourself more than any other industry that is experiencing theft of property right now," David Israelite, Chairman of the U.S. Justice Department's Intellectual Property Task Force told a group of songwriters at Belmont University, according to The Review Appeal. Israelite was also somewhat critical of the music industry, saying the industry should have offered legal downloading more quickly, according to the Tennessean.
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60 Minutes: "Pirates Of The Internet"

According to 60 Minutes, Peter Chernin, head of 20th Century Fox, organized a meeting between studio moguls and some high school and college kids. The moguls them five movie titles, four of which had not been released yet. A half-an-hour later, the kids had found bootleg copies of all five movies on the Internet. Fox and the other studios have just launched their own site, Movielink, where consumers can download a film for between three and five dollars.
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Webster's Third New International Dictionary Is Most-Cited for Patent Claim Interpretation

Webster's Third New International Dictionary accounts for 25% of all claim construction reference citations by the Federal Circuit and 36% of all citations to general purpose English language dictionaries and similar sources, according to an article by Joseph Miller and James Hilsentenger. They suggest making general and specific dictionary selections in the application in order to prevent the "caprice with which judges currently may choose dictionaries" so as to effectively eliminate "whatever neutrality and predictability gains the turn to dictionaries can offer."

Click here for the Merriam Webster On-Line Dictionary and Thesaurus and herw for the Merriam Webster On-Line Toolbar.

Thanks again to the "Patently Obvious: MBHB Patent Law Blog."
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Archived updates for Monday, August 16, 2004

New GI Registrations in Europe

According to the August 16, 2004 issue of MIP Week, seven names have been added to the list of protected designations of origin and protected geographical indications in the EU, including Valencay cheese (from France), Scottish Farmed Salmon (from the UK), Ternera de Extremedura (veal from Spain), and Aceite mallorquin, Oli de Mallorca, and Oli mallorqui cooking oil (from Spain). Click here for more information on geographical indications.
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Archived updates for Sunday, August 15, 2004

IPO: U.S. Patent Application Pendency since 1979

    (0)comment(s)     permalink     translate         Send Expanded Whois Service

According to an Augusts 12, 2004 article in Search Engine Watch, "the Whois Source Domain Explorer (click the Domain Explorer tab on the page) lets you search for domain information in several ways. You can enter a full domain (e.g. or IP address, and you'll get a full domain record. This includes a thumbnail image of the web site, and extensive technical information such as the contents of meta tags, the server software used, and so on. In all, seems to be about the most all-around useful domain lookup service yet."
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Stephen M. Pinkos Named Deputy Under Secretary of Commerce for Intellectual Property

Prior to joining the USPTO, Mr. Pinkos served as staff director and deputy general counsel for the House Judiciary Committee. From 1998 to 2001, Mr. Pinkos served Judiciary Chairman Hyde as counsel, and from 1995 to 1998, Steve served as legislative assistant and then legislative director for Congressman Sensenbrenner. Mr. Pinkos was born in Pittsburgh, Pa., earned a B.A. degree in political science from Miami University in Oxford, Ohio in 1992 and a J.D. from DePaul University College of Law in Chicago in 1995.
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Archived updates for Friday, August 13, 2004

New BPAI Rules Effective September 13, 2004

The USPTO's Board of Patent Appeals and Interferences has significantly overhauled its operations to address concerns about the duration of proceedings before the Board. This final rule reflects these new procedures which become effective September 13, 2004.
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New U.S.-Japan Income Tax Treaty Eliminates Royalty Withholding

According to an August 2, 2004 article from Stroock & Stroock & Lavan LLP, under a new US-Japan Treaty, royalties arising in the United States and payable to a company in Japan generally are taxed only in Japan unless the Japanese licensor has a permanent establishment in the U.S. or the royalties are at amounts that exceed the royalty that would be paid if the parties dealt at arms-length (e.g., if royalties were really disguised dividends). Also, the practice of licensee withholding of royalty payments is now unnecessary in most cases, provided that the proper IRS Form W-8BEN (which identifies the licensor and otherwise establishes eligibility for the benefits of the Treaty) is completed and given on a timely basis to the licensee.
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Archived updates for Thursday, August 12, 2004

Lancome Parfums v. Kecofa B.V. Available in English

An English translation of the recent Dutch copyright decision on Lancôme's TRESOR perfume is now available. "We didn't have a lot of time to prepare and to be honest, we underestimated how seriously the court would take their arguments," Kecofa spokesperson Leon Meels reportedly told the Associate Press. Accoring to that report, the company's profit margins are so small that the cost of paying an extra accountant to figure out its past earnings from the infringing Female Treasure perfume would likely be greater than the actual earnings themselves.

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The-Key.Biz to Growing Your Business

U.K. Minister for Science and Innovation Lord Sainsbury says "Intellectual assets provide you with the key to growing your business. Through this campaign we want to ensure that more SMEs understand the financial opportunities of exploiting their creativity and ideas." This new site is managed by the U.K Patent Office as part of a campaign with the Chartered Institute of Patent Agents and the Institute of Trademark Attorneys to make businesses more aware of the benefits of protecting their intellectual assets and to prevent them incurring unnecessary costs.
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Plant Protection Tutorial

The Center for the Application of Molecular Biology to International Agriculture (CAMBIA) has released a new tutorial on plant protection providing an insightful introduction into ways of protecting plants and plant products. The tutorial discusses the five available methods of protection in turn with particular reference to the protection mechanisms available in the United States, Europe and Australia.
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ITC Issues General Exclusion Order for Plastic Grocery Bags

On August 10, 2004, the U.S, International trade Commission issued a "general exclusion order" for plastic grocery and retail bags that infringe U.S. Patent No. 5,188,235.

The order directs the U.S. Customs Service to exclude these articles from entry into the United States. In contrast to the typical "limited" exclusion order that excludes infringing articles that originate from a respondent named in a Section 337 complaint, a "general" exclusion order directs the U.S. Customs Service to exclude all infringing articles, without regard to source. The President who may now, within 60 days, disapprove the order for policy reasons. However, such disapproving are rare and during this "Presidential review period," infringing articles may enter the United States only if the importer posts a bond with the Customs Service equal to 80% of the entered value of the goods. If the President does not disapprove the order, then infringing imports may no longer be imported and the complainant may seek to have previously posted bonds forfeited to it.

Click here for information on enforcement of Section 337 remedial orders.
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The Relativity of Technology Transfer

According to professional business coach John Jenkins in "Fuel Cell Today,"
The key to the development of a successful technology licensing team is to develop an understanding of, and empathy for, the priorities of other players in the relationship. Look at the players in the relationship as though they were components in a clock. A clock’s gears, by design, move and operate independently from one another. This very precise interrelationship is integral to the clock functioning properly. Requiring otherwise would not only cause the clock to cease keeping proper time, it would in fact destroy the clock’s individual components. This also applies to teams and players in a technology
licensing relationship.

Courtesy of Anthony Cerminaro's Bizz Bang Buzz, "covering news and information relevant to entrepreneurs, executives and others interested in business and technology."
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Partial Sequence Not Enough to Claim DNA for Encoding Protein

In In re Wallach (Fed. Cir., August 11, 2004), the court noted that "A gene is a chemical compound, albeit a complex one, and it is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it. Conception does not occur unless one has a mental picture of the structure of the chemical, or is able to define it by its method of preparation, its physical or chemical properties, or whatever characteristics sufficiently distinguish it. It is not sufficient to define it solely by its principal biological property, . . . because an alleged conception having no more specificity than that is simply a wish to know the identity of any material with that biological property."

"Until Appellants obtained the complete amino acid sequence of TBP-II, they had no more than a wish to know the identity of the DNA encoding it.
As Appellants point out, we have recognized that the written description requirement can in some cases be satisfied by functional description. See, e.g., Enzo, 296 F.3d at 1324 ("It is not correct, however, that all functional descriptions of genetic material fail to meet the written description requirement."). Nonetheless, such functional description can be sufficient only if there is also a structure-function relationship known to those of ordinary skill in the art."

"As we explained above, such a well-known relationship exists between a nucleic acid molecule's structure and its function in encoding a particular amino acid sequence: Given the amino acid sequence, one can determine the chemical structure of all nucleic acid molecules that can serve the function of encoding that sequence. Without that sequence, however, or with only a partial sequence, those structures cannot be determined and the written description requirement is consequently not met. As we explained in Enzo, the Guidelines for Examination of Patent Applications under the 35 U.S.C. § 112, 1, "Written Description" Requirement, 66 Fed. Reg. 1099 (Jan. 5, 2001) ("Guidelines"), state that the written description requirement can be met by "show[ing] that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics . . . i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics."

"Appellants have provided no evidence that there is any known or disclosed correlation between the combination of a partial structure of a protein, the protein's biological activity, and the protein's molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other.The Board therefore correctly affirmed the examiner's determination that the specification of the '129 application does not provide an adequate written description of the pending claims."

Click here for more on "Structure, Function, and the Spectrum of Claim-Type Differentiation"
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CAFC Construes "Operatively Connected" as "General Descriptive" Term

In Innova/Pure Water v. Safari Water Filtration Sys. (Fed. Cir. 2004), Innova's appeal turned on the correct interpretation of the disputed claim term, "operatively connected."
According to the district court, the ordinary meaning of "said tube operatively connected to said cap" requires that the two components be "affix[ed] . . . by some tenacious means of physical engagement that results in a unitary structure." Innova challenges this construction as improperly importing a tenacious physical engagement limitation into claim language that does not require any such thing. Safari concurs with the district court. The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure. Neither party asserts that the term "operatively connected" is a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components. Generally speaking, and as used in the '759 patent, it means the claimed components must be connected in a way to perform a designated function. In the absence of modifiers, general descriptive terms are typically construed as having their full meaning. . . .For the same reasons, the district court erred in granting summary judgment of no infringement under the doctrine of equivalents based on its factual conclusion that "merely adjoining or abutting . . . is not the equivalent of affixing the tube to the cap."

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EN: The Worldwide Impact of Chinese Design-Arounds

The August 12 issue of Electronic News is reporting that China is developing its own standards for a broad range of consumer devices, working with outside partners in an effort to reduce the royalties it now pays for licensing intellectual property. While the standards initially are aimed at the indigenous Chinese market, the long-term goal is to export these products -- and thus the standards -- outside of China
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Archived updates for Wednesday, August 11, 2004

CBO: Copyright Issues in Digital Media

This Congressional Budget Office (CBO) paper reviews current copyright law in the United States and considers the unique aspects of digital technology's challenge to that law. It also examines the prospects for a market-based resolution to copyright disputes over digital content and explores the effect of potential revisions to copyright law on economic efficiency and equity. While this analysis suggests some issues and concerns that the Congress may wish to consider during its deliberations about any changes in copyright law, in keeping with CBO's mandate to provide objective, impartial analysis, the paper makes no policy recommendations.
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A Taiwanese Anti-Piracy Photo-Op

Ministry of Economic Affairs Intellectual Property Office General Director Tsai Lien-sheng, Ministry of Justice Department of Prosecutorial Affairs Director Tsai Pi-yu, BSA Taiwan Committee Co-chair Sung Hong-ti, and Information Service Industry Association Secretary General David Chang launch a 45-day offensive against business software piratesin Taipei on August 10, 2004.

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Your (Polite) Trademark on a Postage Stamp

PhotoStamps allows you to create your own customized postage. According to their website, "Businesses can use PhotoStamps to increase the visibility of their brands and to make their mail noticeable." But, an August 11, 2004 article in Wired Magazine warns that, just because has for years enabled customers to print their own stamps at home, customers shouldn't hold their breath that the same option will be available for the PhotoStamps service. "We're dealing with the premier product of the U.S. Postal Service, which is stamps," said USPS spokesman Gerry McKiernan, referring to the content restrictions for vetting images. "We have to look at it from the kinds of images that people will put on them, the propriety of them and what's allowable in polite society."
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UK Comedian Proclaims Performance Right in Fat Joke?

British comedian Jimmy Carr took issue with the retelling because "It's not acceptable and it doesn't happen a lot." In addition to a letter of apology, the alleged infringer's agent offered this defense in an August 5 article in BBC news: "It's been around for ages. It's very hard to copyright any joke at all."
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Ten Reasons for Invalidating with Patent Interference Proceedings

A July 2004 article by Lara C. Kelley and Barbara C. McCurdy discusses ten reasons why a “first to invent� invalidity position under 35 USC §102(g) can sometimes be more-advantageously pursued in a patent interference proceeding, rather than a district court action.
  1. The burden of proving priority in an interference is lower than the burden of proving invalidity in a patent infringement action.
  2. Patentability issues can be raised in addition to priority in an interference.
  3. The Board is more likely to understand the issues than a judge or jury.
  4. An interference affords flexibility not provided in the district courts.
  5. There is limited discovery in an interference.
  6. There is no live testimony or trial in an interference.
  7. An interference is usually less expensive.
  8. There remain opportunities for trial litigation after an interference.
  9. Provoking an interference may afford a party a stronger settlement position.
  10. A successful interference outcome can result in a patent term extension.
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Archived updates for Tuesday, August 10, 2004

Copyright Seperability in the 7th Circuit

In concluding that a mannequin head is subject to copyright protection, the 7th Circuit noted in Pivot Point Int'l v. Charlene Prods (June 2004) that conceptual separability exists when the artistic aspects of an article can be “conceptualized as existing independently of their utilitarian function.� This independence is necessarily informed by “whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences.� If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. Conversely, when the design of a useful article is “as much the result of utilitarian pressures as aesthetic choices,� the useful and aesthetic elements are not conceptually separable.
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PCT Newsletter Highlihts for August 2004

According to the August 2004 issue of the PCT Newsletter, the thirty-month time limit for entry into the national phase is now possible for all PCT Contracting States. Now that Serbia and Montenegro has withdrawn its notification of incompatibility, the only remaining designated Offices that have not withdrawn their notification of incompatibility for direct entry are

CH Switzerland
FI Finland
LU Luxembourg
SE Sweden
TZ United Republic
of Tanzania
UG Uganda
ZM Zambia

However, since all of those remaining States are covered by a regional designation (AP or EP), applicants can always enter the regional phase in those States within the time limit under PCT Article 22(3) of 31 months. A list of time limits applicable for each designated/elected Office for entering the national phase under Chapters I and II of the PCT is available here.

An updated table of the "Types of Protection Available via the PCT" has been published in the newsletter.

Also, don't forget that you can file "dummy" applications in the "demo" mode of the PCT-SAFE software. By doing this, you will be able to try the software out and thus be familiar with it once your receiving Office announces that it has started accepting international applications filed electronically using PCT-SAFE. This will reduce the risk of making any mistakes when you start filing real PCT applications electronically.
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Wegner on the Claim Construction Puzzle

. . . Even if the claim construction puzzle is solved, this will not end the controversies if the court tolerates unfettered judicial activism in cases which could be decided on simpler grounds and fails to monitor obviously and grossly divergent holdings in direct conflict to black letter patent law.
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Free Teleconference Today: Economics and Patent Damages

Ropes & Gray's
Intellectual Property Master Class
Economics & Patent Damages
Tuesday, August 10, 2004
1:00 pm-2:00 pm

Click Here To Register

Matt Lynde, Ph.D., Vice President, Cornerstone Research will present the economic fundamentals that underlie certain theories of patent damages theories within the constraints of U.S. patent law, such as lost sales, lost profits, price erosion, non-infringing alternatives and convoyed sales.
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Archived updates for Monday, August 09, 2004

NY Times: Numbering the "X-Patents"

Officially, U.S. Patent No. 1 was issued in 1837. But according to an August 9, 2004 article in the New York Times, at least 10,000 U.S. patents were issued before July 1836, when every one of them burned in a fire. As the lost patents were recovered they were assigned sequential numbers starting with 1, and an "X" was added to distinguish them from the post-1836 patents. In fact, some were recovered out of order. When that happened, the recovered patent was given a fraction number, like Patent 127.5X, in order to keep the patents in the proper sequence. In the 168 years since the fire, only about 2,800 have been recovered.
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Safeguarding Trade Secrets in the Information Age

According to a very comprehensive article in the August 2004 issue of Modern Practice by Sheryl Willert, "There are no easy solutions to the problem of protecting trade secrets in the information age. But there are definite steps the employer can take, and these include monitoring business equipment and promulgating unambiguous policies. "
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60 Minutes: The (Counterfeit) Cost of Doing Business in China

How long would it take to make copies of Nike shoes?

The answer: 1,000 shoes within 10 days, at $4 a pair.

"This is the most profitable criminal venture, as far as I know, on Earth . . . Counterfeiting," said attorney Harley Lewin. “And your partners don’t kill you.�

"We don't want to ignore counterfeiting, but for those foreign companies, when they enter the Chinese market, I'm afraid they should also pay some cost due to the realities of China," Gao Feng, the head of China's anti-counterfeiting police unit, reportedly told the American television show.
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I/P Updates Is Strutting its Legal Stuff

. . . under "Making Rain" (page 8) in the Law Office section of today's Daily Report
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UKPO Seeks Comments on Patent Translation Agreement

Under the so-called "London Agreement," EPO States may waive their right under Article 65 of the European patent Convention to require a full translation of European patent specifications (including the claims) into one of that State's official languages. States with an official language in common with an EPO language (English, French and German) will be required to dispense with translations requirements while States without an EPO language as one of their official languages can require that the claims be translated into one of their official languages. In either case, the Agreement allows States to insist that the patentee provide a translation in case of a dispute.

The Agreement will only enter into force when 8 signatories including France, Germany and the UK have ratified it. To date, Denmark, Slovenia, Monaco have ratified, and Germany has adopted amendments to patent law in line with the London Agreement which will come into force three months after the Agreement has been ratified.

Responses are welcome from anyone in the UK or abroad who is interested in the operation of the intellectual property system in the UK or in Europe or those with an interest in translations, but especially from those who have been, are, or expect to be users of the system. Responses are due by November 30, 2004.
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The Heart of a Successful Franchising Program

According to Andrew Sherman, "The concept of a system or prescribed business format that is operated according to a uniform and consistent trade identity and image is at the heart of a successful franchising program. Therefore, a prospective franchiser must be able to reduce all aspects of running the business to be franchised into an operations-and-training manual for use by franchisees in the day-to-day operation of their business. If a company offers services that are highly personalized or a product that is difficult to reproduce, then franchising may not be the most viable alternative for growth because of the difficulty in replicating these systems or products in the operator's manual or in the training program. Similarly, if all the 'kinks' in the system have not yet been worked out, it is probably premature to consider franchising."
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ICANN Reports on WHOIS Service

ICANN's Generic Names Supporting Organization initiated a policy development process in October 2003 to address three issue areas relating to the WHOIS service. Three separate task forces have now provided preliminary reports on Restricting Access to WHOIS Data For Marketing Purposes (WHOIS Task Force 1); Review of Data Collected and Displayed (WHOIS Task Force 2); and Improving Accuracy of Collected Data (WHOIS Task Force 3).
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Happy "International Day of the World's Indigenous People"

According to a press release from the World Intellectual property Association on the occasion of the International Day of the World's Indigenous People on August 9, 2004, "WIPO’s current work [in this area] is aimed at developing a shared understanding of how best to develop and apply the principles of the intellectual property system to serve the interests articulated by holders of traditional knowkedge and custodians of traditional cultural expressions."

More information can be found on WIPO's Traditional Knowledge site.
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People's Daily: Patent Fees Killing Chinese DVD Player Industry

According to an August 3, 2004 article in People's Daily OnLine, exports of domestically branded DVD players from China have stalled because of "huge" patent fees, reported Tuesday's China Daily. Patent fees levied on Chinese DVD player manufacturers have reached as high as US$27.45 per unit, representing nearly 20 to 30 per cent of their production cost. According to statistics from the Research Institute of Market Economy of the Development Research Centre of the State Council, China now has more than 200 DVD player manufacturers, with annual output hitting 70 million units. Domestic demand, however, is only approximately 5 million units.
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IPR HelpDesk: Briefing Paper on Database Protection In Europe

In Europe, the protection of databases has been harmonised by Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases. The EC Directive defines a database as "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means." The content may be protected by copyright and/or by a sui generis right. The structure may be protected by copyright only. The aim of this Briefing Paper is to explain these principles in detail.
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NIH: No March-In Rights for Costly AIDS Drug

On July 29, 2004, the National Institutes of Health (NIH) determined that it will not initiate a march-in proceedings for the protease inhibitor Ritonavir based upon pricing concerns raised by members of Congress and the public.

The "march-in" provisions of the Bayh-Dole Act, 35 U.S.C. § 203, authorize the federal Government to require federal funding recipients to license their inventions to a responsible applicant. Section 203(a) of the Act provides, in part, that march-in rights may be exercised by the funding Federal agency based on any of four conditions:

1) when "practical application" of the invention is not expected to
be achieved in a reasonable time,

(2) when the action is necessary to alleviate health or safety needs,

(3) when action is necessary to meet requirements for public use
specified by Federal regulation that the contractor has failed to meet or

(4) when the U.S. industry preference of Section 204 of the Act has not
been met.

According to the determination, Norvir® has been available for use by patients with HIV/AIDS since 1996 and is being actively marketed by Abbott and prescribed by physicians as standalone protease inhibitor and a booster to increase the effectiveness of other drugs. Accordingly, this drug has reached practical application and met health or safety needs as required by the Bayh-Dole Act. The NIH believes that the issue of drug pricing is one that would be more appropriately addressed by Congress, as it considers these matters in a larger context. The NIH also maintains that the FTC is the appropriate agency to address the question of whether Abbott has engaged in anti-competitive behavior.

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Taiwan Aims for Less Than 40% Piracy Rate

The August 6, 2004 Taipei Times quotes Taiwan's Economics Minister, Ho Mei-yueh, as telling a press conference that "We want to reduce the piracy rates to under 40 percent by the end of next year."
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Klogging Your Company's Ideas

According to a technology tip from HP, "Inside your company, a blog can be an outstanding way to share information, collaborate, and connect with employees, co-workers, and business partners. And a blog can function as the company's "knowledge log [klog?]", capturing and storing ideas and solutions in searchable archives. A fast-growing company can mine these archives to avoid continually reinventing the wheel.
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Archived updates for Sunday, August 08, 2004

Earl Spielman, Forensic Musicologist

According to an August 8, 2004 article from the The Cincinnati Enquirer, most of this song-sleuth's work is due diligence for ad agencies that want original music in a commercial that doesn't sound too much like a well-known song. Virtually all of his investigations have involved a "temp track" that is circulated between editors, ad agencies, and their clients, that is used ostensibly without permission from the publisher for editing and "presenting" a commercial to the client. The biggest problem occurs as soon as an overture has been made to the publisher so that they are on the lookout for anything even remotely resembling their music in the final commercial.
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Archived updates for Friday, August 06, 2004

Chinese Exporters Told to Heed US IPR Protections

Wang Qinhua, director of the Bureau of Industry Injury Investigation under the Ministry of Commerce, said that China had fallen foul of Section 337 four times in 2003. "(So) it is imperative for local firms and exporters to learn how to protect themselves against IPR charges," she said in a July 30 article in People's Daily Online.
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U.S. Copyright Office Proposes Rules on Unpublished Audio Transmission Reocording

The U.S. Copyright Office is proposing to amend its regulations to permit the Library of Congress to record unpublished radio and other audio and audiovisual transmission programs. The Copyright Office regulations already provide for the Library of Congress to obtain copies of unpublished television transmission programs, either by recording fixations or by demanding copies in the form of a transfer, loan, or sale at cost. The revised regulation makes similar provisions for audio transmission programs and includes transmission programs made available by radio broadcasts and by digital communications networks such as the Internet. Comments are due on September 7.

The largest library in the world, the Library of Congress comprises more than 127 million items acquired by purchase, gift, exchange, and copies of works submitted to the Copyright Office for registration or mandatory deposit. Late in deliberations on the bill that became the 1976 Copyright Act, concern arose about whether mandatory deposit of only published works would be sufficient for the Library's collections, given that owners of publicly disseminated broadcasts were not obligated to deposit their works in the Library of Congress. This issues was addressed by giving the Library authority to record unpublished transmission programs in all cases where the copyright owner had made or authorized a fixation of the program. The Copyright Office was also given demand authority to obtain fixations of these programs by transfer, loan, or sale at cost.
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Chinese Patents on the Rise

According to a "Report on the Protection of Intellectual Property Rights in China in 2003" released by Commissioner Mr. Wang Jingchuan in April 2004, "In 2003, the SIPO received a total of 308,487 patent applications, an increase of 22.1% over the 252,631 of the previous year. A total of 1,171, international applications were received, 220 more than that of the previous year. A total of 182,226 patents were granted in 2003, with an increase of 37.6% over 132,399 of the same period of previous year. Among that, 149,588 were granted to domestic applications, with an increase of 33.4% over 112,103 of the same period of previous year, while 32,638 were granted to foreign applications, with an increase of 60.8% over 20,296 of the same period of previous year."

Click here for more Chinese Patent Statistics.
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In Lorillard Tobacco Co. v. Bisan Food Corp. (3d Cir. 2004), an "incentive" to destroy evidence was not enough to obtain an ex parte seizure order under the Trademark Counterfeiting Act of 1984 for cigarettes without tax stamps being sold by store owners.
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TGIF: You'll Just Kick Yourself

According to U.S. Patent No. 6,293,874 entitled "User-Operated Amusement Apparatus for Kicking," it is an object of this invention "to provide an amusement apparatus which is user-operated and controlled, and is designed to inflict repetitive blows on the user without resetting of the apparatus and/or repositioning of the user between blows. It is another object of the present invention to provide an amusement apparatus having a user controlled crank regulating the frequency and force of the blows inflicted upon the user's buttocks. It is another object of the present invention to provide an amusement apparatus for self-inflicting repetitive blows to a user and which is foldable into a self-containing package for storage or shipping."
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Markman Leading to a Crisis in the Patent System?

According to Cheryl Johnson in a newsletter from PLI, "The growing body of anecdotal and empirical evidence indicates that the reality of post-Markman jurisprudence has not met the expectations. Judges find their claim construction decisions reversed as often as those of juries. . . . Clearly, if district judges are not up to the task, our patent system is also failing to provide the public proper notice of the metes and bounds of the patent grants." She also has a Lemelson information website.
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New Tools for Open Source I/P Risk Management

According to their website, "Black Duck protexIP/development is the industry’s first comprehensive information service that helps corporations develop applications using proprietary and open source software (OSS) while retaining control of, and visibility into, licensing and intellectual property issues." However, as noted by Black Duck's General Counsel, Karen Copenhaver, in the August 4, 2004 issue of E-Week, while Black Duck's programs protect users and developers from many kinds of IP claims, "there's no way to use search technology to find the implementation of a patentable invention. The essence of patent law is inventive activity. Search technology [such as that used in their protexIP/developmentSM software] is ideal for finding copying which is consistent with copyright but not patent law."

For more, see "Linux Companies Address IP Concerns"
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USPTO Certified Copies Now in Electronic Format

According to a notice posted by the USPTO on August 5, 2004, all copies of patent documents that are purchased under 37 CFR 1.19 and produced from the Image File Wrapper system (for applications filed on or after June 28, 2003) will now be provided only as certified electronic files. These electronic files are digitally signed by the USPTO for authenticity and integrity, and include an imaged certification statement as part of a digitally signed portable document format (PDF) file containing tag image file format (TIFF) images of the document pages. They may be ordered and downloaded from the USPTO website or obtained from the USPTO on compact disc. Informal copies may still be downloaded at no charge from the USPTO's Patent Application Image Retrieval (PAIR) website.

Applicants must print the certified copies to paper if required by the intellectual property office to which it is submitted. Should another intellectual property office not accept such a paper or electronic certified copy of a patent application, upon presentation of a notice of non-acceptance by the that office, the USPTO will provide a substitute paper copy. The substitute paper copy will include a letter addressed to the foreign office, and signed by an official of the USPTO, indicating that the certified copy of the application as filed is to be accepted under Article 4 of the Paris Convention. Since the USPTO will no longer bind or rivet paper certified copies of patent applications as filed or file wrappers and contents, copies produced by the Office will be identical to copies printed by an applicant from the electronic certified copy.
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Archived updates for Thursday, August 05, 2004

A Stealth Trademark Mall at

Why build a famous brand when you can simply Rent a Mark?

They also provide expert witness services and, according to their jobs website, are "especially interested in [hiring] attorneys, commissioners or former judges who have had previous experience on state Attorney Disciplinary Commissions who are expert in dealing with attorney disciplinary issues in order to file Attorney Disciplinary Complaints against opposing counsel that may violate the state Professional Code of Responsibility while attempting to prosecute a fraudulent trademark application, Opposition, Petition to Cancel and/or District Court Proceeding."

For more about how "Rentamark is engaged in a full blown legal warfare to protect its famous trademarks from infringers," see footnotes 15-16 in Central Mfg. Co.. V. Medtronic Sofamor Danek, Inc., Opp. No. 91154585.

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EU Software Patentability Directive Vote Delayed Until October

According to European Patent Attorney Axel H. Horns, "the formal voting on the Common Position of the EU Council concerning the Draft Directive on the patentability of computer-implemented inventions that was politically agreed to on May 18, 2004 will be further delayed due to scarcity of translator capacity until October or November this year."
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Infringer Pleads Not Guilty to Solicitation of Patent Judge's Murder

According to an August 5, 2004 article in The Recorder, Amr Mohsen pleaded not guilty to charges that he solicited the murder of U.S. District Judge William Alsup who presided over a patent case that Mohsen lost before being indicted for perjury. Mohsen was in custody and awaiting trial in the criminal case when he allegedly approached another inmate about intimidating witnesses and killing Alsup.
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IP McCarthyism?

In a speech at an opening ceremony for a university project in Karlsruhe, Germany, Professor Lawrence Lessig reportedly received thundering applause when he warned that we are living in an era of "IP McCarthyism".

Although his remarks were apparently directed at Arlene McCarthy, the rapporteur for various other intellectual property directives before the European Union, the word "McCarthyism" also carries connotations of false, even hysterical, accusation.
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Free IP Taxation Strategies Webinar Recording

A free webinar recording from the IP Strategy Group
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USPTO PAIR Training and Reference Guide

To ensure that you get the most out of what Public PAIR offers, the USPTO has developed a multimedia tutorial to introduce you to PAIR's capabilities and operation. Click here for a quick reference guide.
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Archived updates for Wednesday, August 04, 2004 Taiwan Tech Boom Driving Surge in U.S. Patent Litigation

According to an August 4, 2004 article in The Recorder, U.S. intellectual property lawyers attribute the boom in patent litigation by Taiwanese companies to their success in the electronics field. While they are more often facing lawsuits rather than pursuing them, Taiwanese businesses have become savvy about developing and protecting their patent portfolios. They are learning how patents operate and the measures one takes to avoid being sued. But according on one U.S. patent attorney, "The curve is on the way up, it's about to peak."
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Post-WTO Technology Transfer in China

According to the August 2, 2004 issue of Lehman Lee & Xu's "China Information Technology Law Newsletter," several transferor requirements for technology transfer in China have survived from the pre-WTO scheme:
1) The transferor is required to warrant that he is the lawful owner of the technology provided, or that it has the right to assign or license such technology.

(2) The transferor is required to warrant that the supplied
technology is complete, accurate and effective, capable of reaching the technical goals agreed upon between the parties

(3) The transferor is prohibited from unreasonably restricting
the export channels for products produced by transferee's using the technology imported.

There advice : "Exercise due diligence in negotiating technology import
contracts, so that existing and new regulatory and contractual risks are taken into account and properly addressed in the contracts."
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IePO: Ten Pragmatic Recommendations for Integration of IP in Your Business

The Irish Patents Office published this guide as part of the "Linking Innovation and Industrial Property" project supported by the European Commission.
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Culpepper on "Apple versus RealNetworks"

"In my mind, this is not so much about Apple and Real -- this goes to the heart of the DMCA and using DRM to restrict the use of individual pieces of software, including audio files," TKHR's Scott Culpepper told MacCentral. Click here for more.
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EPO Virtual espace@net Classroom August 5-6

On Thursday, August 5, and Friday, August 6, 2004 there will be a chance to take part in a live, interactive, free of charge esp@cenet® coaching session. Without leaving your office, you can sit at your own computer and follow the lesson guided by on-line expert tutors. Click here for more information.
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Archived updates for Tuesday, August 03, 2004

Free I/P Seminars

Click here for recordings of other free presentations on various intellectual property topics from the Association of Patent Law Firms. For an in-person presentation on these, or other topics, to your intellectual property organization, contact or
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Practical Considerations To Protect Trade Secrets

According to Sheryl Willert in "Practical Considerations To Protect Trade Secrets," several basic requirements for protecting trade secrets can be gleaned from the cases discussed in her article:

  • Reasonable precautions against industrial espionage
  • Marking plans and documents 'confidential'
  • Use of 'confidentiality' legends, warnings and agreements
  • Restricting visitors and similar types of plant security
  • Locking up or otherwise securing sensitive information
  • Taking technical precautions, such as dividing the system into steps handled by different individuals or departments
  • Copy protection and embedded codes to trace copies
  • Employee exit interviews.
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