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Archived updates for Thursday, September 30, 2004

China Showing-Off Anti-Counterfeiting Measures?

REUTERS/China Photos picture taken September 24 reportedly showing a Chinese soldier setting counterfeit goods on fire during a destruction operation in Hefei, Anhui province.
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California Requires Identification of File Traders

According to a September 22, 2004 report by the San Fransisco Chronicle, "California file sharers who trade songs or films without providing an e-mail address and will be guilty of a misdemeanor, under the first-in-the-nation measure that could make it easier for law enforcement to track down people who illegally download copyrighted material":

653aa. (a) Any person, except a minor, who is located in California, who, knowing that a particular recording or audiovisual work is commercial, knowingly electronically disseminates all or substantially all of that commercial
recording or audiovisual work to more than 10 other people without disclosing his or her e-mail address, and the title of the recording or audiovisual work is punishable by a fine not exceeding two thousand five hundred dollars ($2,500), imprisonment in a county jail for a period not exceeding one year, or by both that fine and imprisonment. . . .
According to the American Intellectual Propety Law Association, "The elements of failing to disclose e-mail addresses and titles would appear to overcome issues of copyright preemption." Click here to read the entire new Section 653aa of the California penal statute, courtesy of the AIPLA.
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US Trade Rep "Mystified" by Development Agenda

According to an article in the September 29 issue of "Bridges" monthly review, the United States is a staunch opponent of mandatory disclosure requirements for biological resources or TK in patent applications, as well as one of the keenest supporters of the WIPO Patent Agenda, which aims at harmonising patent application and maintenance procedures. US Deputy Trade Representative Peter Allgeier said he was "mystified" by the Development Agenda initiative, claiming that "the primary beneficiaries of stronger IPR protection in Brazil would be Brazilian artists and innovators, and investment in high-technology industries."
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ICTSD: Multilateral GI Register Stalled at WTO

According to the International Centre for Trade and Sustainable Development, on September 23, 2004, the special session of the Council for Trade-related Aspects of Intellectual Property Rights (TRIPS) met to continue negotiations on developing a multilateral register for geographical indications for wines and spirits. The meeting showed little change in positions from previous sessions, with delegations confirming their earlier stated views on the potential nature of the multilateral register (see ITCSD's BRIDGES Weekly, April 22, 2004).

Sponsors of a joint proposal by 'new world' countries -- including Argentina, Australia, Canada, Chile, the US and others -- maintained their position on seeking a passive database system, whereas the EU pushed for a more rigid and complex system based on registration. The differing costs of the two approaches remained the principle issue of debate.

The next meeting of the TRIPS Council special session on the multilateral register will take place on 30 November.
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U.S. v. Martignon Decision Overturning Anti-Bootlegging Criminal Statute

Click here for a copy of the U.S. Distirct Court's decision stating that "Because this court finds that the anti-bootlegging statute is impermissible under the Copyright Clause, and that Congress may not evade the limitations imposed on its powerin order to enact imtellectual property legislation such as the anti-bootlegging statute through a resort to a separate grant of authority (such as the Commerce Clause), defendant's motion is granted, and the Indictment is dismissed."

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FT: Five Hundred Signatures on Development Agenda

According to a September 30, 2004 article by the Financial Times, five hundred scientists, academics, legal experts and consumer advocates signed the so-called "Geneva Declaration on the Future of WIPO" saying that "a 'one size fits all' approach that embraces the highest levels of intellectual property protection intellectual property protection for everyone leads to unjust and burdensome outcomes for countries that are struggling to meet the most basic needs of their citizens." Supporters of this "development agenda" claim that, under pressure from industrialised nations, WIPO is giving undue weight to strengthening intellectual property rights at the expense of the public interest and other means of fostering innovation and creativity.
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Free Seminar Today: "Prosecution with a View Toward Litigation"

September 30, 2004
Complimentary webcast/phone seminar
Schwegman, Lundberg, Woessner & Kluth, P.A.
"Advanced Patent Prosecution: Prosecution with a View toward Litigation"
Register on-line or call 800.651.7916
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Archived updates for Wednesday, September 29, 2004

NYT: The Right to Research

Catherine Wagner, "-86 Degree Freezers (12 Areas of
Concern and Crisis), 1995, exhibited at "Art & Science:
Investigating Matter" at the Wirtz Gallery 2001.
According to a September 26, 2004 article in New York Times Magazine,
Arguments in favor of applying First Amendment scrutiny to antiresearch laws can be complex, but the metaphors lawyers have used are not. One, proposed in separate articles by John Robertson of the University of Texas and James Ferguson, who teaches at Northwestern, compares scientists to reporters. As with journalism, actions that are not strictly speech (research) are so necessary to speech (publishing) that to ban them is to ban the speech.

R. Alta Charo, legal scholar and bioethicist at the University of Wisconsin, says that some experiments are constitutionally protected ''expressive conduct'' in their own right. ''If the questions you ask and the science you do really challenges or explores cultural or religious or political norms . . . that in itself is an act of rebellion, and this is exactly the sort of thing that fits comfortably in the spirit of the First Amendment.''
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"Human genius is the source of all works of art and invention; these works are the guarantee of a life worthy of men; it is the duty of the State to ensure with diligence the protection of the arts and inventions" --translated from the Latin text on the lower edge of the gilded cupola in the WIPO Headquarters building

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WIPO's Overview of the Protection of Traditional Knowledge and Cultural Expression

WIPO's Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (‘the Committee’) has developed an overview of policy objectives and core principles for the protection of traditional cultural expressions (TCEs)/expressions of folklore (EoF). Annex II contains a full discussion of the draft objectives and principles and provides relevant background and explanatory information, including:

Traditional cultural expressions or expressions of folklore may be understood as including productions consisting of characteristic elements of the traditional cultural heritage developed and maintained by a community, or by
individuals reflecting the traditional artistic expectations of such a community. Such productions may include, for example, the following forms of expression, or combinations thereof:

  • verbal expressions, such as folk tales, folk poetry and riddles;
  • aspects of language such as words, names, signs, symbols and other indications;
  • musical expressions, such as folk songs and instrumental music;
  • expressions by actions, such as folk dances, plays and artistic forms or rituals, whether or not reduced to material form; and
  • tangible expressions, such as productions of folk art, in particular, drawings, designs, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewelry, basket weaving, textiles, carpets, handicrafts, musical instruments and architectural forms.

The specific choice of terms to denote the protected subject matter should be determined at the national and regional levels. TCEs/EoF should be protected, whatever the mode or form of their expression, provided they are:

  1. the products of creative intellectual activity, including collective and cumulative creativity; and
  2. characteristic of a community’s distinctive cultural identity and traditional heritage developed and maintained by it.

Measures for the protection of TCEs/EoF should be for the benefit of the indigenous peoples and traditional and other cultural communities

  1. in whom the custody and protection of the TCEs/EoF are entrusted in accordance with the customary law and practices of that community; and
  2. who maintain and use the TCEs/EoF as being characteristic of their traditional cultural heritage.

Special protection for TCEs/EoF should not replace and is complementary to any protection applicable to TCEs/EoF and derivatives thereof under other intellectual property laws.

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Latest MPEP Now Available in HTML (Hyperlinked) Format

Click here for the Manual of Patent Examining Procedure (MPEP)Eighth Edition, Revision 2, including the latest updates in May 2004, courtesy of the USPTO's MPEP Staff.
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Generic Drugs Costlier in Canada

According to Brett Skinner of the Fraser Institute in August 2004, "Studies comparing international prices of prescription pharmaceuticals have found that Canadian prices are close to the international median price for patented drugs but higher for non-patented single-source (usually brand-name) drugs, and also higher for non-patented multiple-source (mostly generic) drugs. Furthermore, in studies comparing Canadian to American drug prices, it has been found that Canadian prices are significantly lower overall for patented drugs, but are usually higher than American prices for generic drugs. "
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PLI: Hatch-Waxman for Dummies

For those unfamiliar with Hatch-Waxman, PLI's "Lawyer's Toolbox" is offering "The FTC's Pharmaceutical Cases" by Jeffrey W. Brennan of the Bureau of Competition at the Federal Trade Commission). Brennan's PowerPoint offers the legislation's rationale, stunning statistics about the efficacy of generics in lowering drug costs and brief overviews of the FTC's recent decision in the case involving Schering-Plough. Also available is "New Strategies Arising From the Hatch-Waxman Amendments" by Michael P. Padden of Howrey Simon Arnold & White, LLP with an overview of the current state of pharmaceutical development.
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Archived updates for Tuesday, September 28, 2004

WIPO Assemblies Meeting this Week

A meeting of the Assemblies of the World Intellectual Property Organization (WIPO), bringing together representatives of WIPO’s 181 member states, is being held in Geneva from September 27 to October 5, 2004. Here are the highlights of the Assemblies Agenda in proposed order of discussion:
  • Member states will review the status of consultations on outstanding issues relating to the protection of audiovisual performances and decide on future action on this question. (Please see Update 227/2004 & PR 367/2003)
  • The WIPO General Assembly will consider approving the convening, at an appropriate time, of a Diplomatic Conference on the protection of broadcasting organizations to update international intellectual property standards for broadcasting in the information age. A growing signal piracy problem in many parts of the world, including piracy of digitized pre-broadcast signals, has made this need more acute. (Please see WIPO/PR/2004/386).
  • WIPO member states will consider a recommendation to approve the convening of a Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty in the first half of 2006. The revision of the TLT envisages the inclusion of provisions on electronic filing of trademark applications and associated communications, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
  • The General Assembly will also review the work of the WIPO Advisory Committee on Enforcement (ACE). The ACE was set up by WIPO member states in 2002 as a forum for discussion of enforcement matters with a mandate to provide technical assistance and coordination, cooperation and the exchange of information on questions of enforcement. (Please see Update 227/2004)
  • The General Assembly will consider a progress report (document WO/GA/31/5) on the work of the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).
  • The Assembly will also consider the relationship between the patent system and legal regimes governing access to genetic resources and equitably sharing benefits from the use of these resources. A number of countries have called for various changes to patent law standards to require patent applicants to declare where they obtained genetic resources or TK used in a claimed invention.
  • Member states will also discuss the future work plan of the Standing Committee on the Law of Patents as regards the draft Substantive Patent Law Treaty (SPLT) on the basis of a proposal by the United States of America and Japan to limit the scope of the SPLT to an initial package of priority items relating to prior-art issues and to defer discussion of other issues of substantive patent law pending resolution of the initial package of issues.
  • The Assembly of the Patent Cooperation Treaty (PCT) will consider progress made in the reform of the PCT and PCT automation projects and will consider a proposal from the secretariat to readjust the PCT international filing fee upward by 12%.
  • Delegates will review one of the major programs of WIPO, namely the assistance the Organization provides to developing countries in order for each country to use its national intellectual property system to achieve national development goals particularly aimed at creating employment, facilitating world trade and stimulating wealth creation.
  • The WIPO General Assembly will also consider a proposal from Argentina and Brazil relating to the establishment of a new development agenda for WIPO including amendment of the WIPO Convention (1967) to ensure that the development dimension of WIPO’s work is enshrined in the Organization’s work program.
  • The WIPO General Assembly will be briefed on the status of recommendations approved by member states in 2002 to amend the Uniform Domain Name Dispute Resolution Policy (UDRP) to provide protection for country names and for the names and acronyms of intergovernmental organizations (IGOs). These recommendations are currently being considered by the Internet Corporation for Assigned Names and Numbers (ICANN). (Please see PR/2003/363)
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The (Musical) Value of 99 Cents

"The industry isn't going to continue to allow itself to be harmed without defending itself. We've already seen the first responses. In the U.S., the Recording Industry Association of America has started to pursue downloaders in the courts. The U.K. followed. Since then, we've seen a drastic decline in the practice. The market's growing and the industry is making money. If the price is 99 cents per song online, the music industry gets two-thirds, 66 cents. That's OK. Most people say, 'I'm not going to break the law over 99 cents. I'll pay.' The key is that the online services have to be user friendly." -- Gunter Thielen head of German media conglomerate Bertelsmann AG quoted in the Washington Post on why music companies aren't running scared from online downloads
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New U.S. Trademark Mailing Addresses and Madrid Protocol Procedures

Effective October 4, 2004, the United States Patent and Trademark Office (‘‘Office’’) is amending its rules to provide new mailing addresses for trademark-related correspondence submitted on paper.

The Trademark Operation and the Trademark Trial and Appeal Board are moving to a new facility in Alexandria, Virginia. It is expected that this move will commence on or about October 4, 2004, and will be completed on or about November 9, 2004. The Office is therefore amending § 2.190 to provide for new mailing addresses for all paper-filed trademark-related correspondence, except for requests to record documents in the Assignment Services Division and requests for copies of trademark documents. Nonetheless, the Office continues to encourage trademark applicants and registrants to file documents with the Trademark Operation via the Trademark Electronic Application System (‘‘TEAS’’) and to file documents with the Trademark Trial and Appeal Board via the Electronic System for Trademark Trials and Appeals (‘‘ESTTA’’).

The Office is also amending some of the rules that govern the submission of documents pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (‘‘Madrid Protocol’’) in the United States, including
  • Removing the requirement that certain papers be filed through the Trademark Electronic Application System "‘TEAS"), including international applications, subsequent designations, responses to notices of irregularity issued by the International Bureau of the World Intellectual Property Organization (‘‘IB’’), and requests for transformation
  • Limiting the requirement that fees payable to the IB for international applications, subsequent designations, and requests to record changes of ownership in the International Register be paid at the time of submission only if the document is filed through TEAS; and
  • Designating new mailing addresses for trademark-related correspondence and paper-filed international applications, subsequent designations, responses to notices of irregularity, requests to record changes in the International Register, requests for transformation, and petitions to the Director to review an action of the Office’s Madrid Processing Unit (‘‘MPU’’).

Due to unforeseen technical difficulties, the deployment of Madrid-related TEAS forms has been delayed. therefore, these requirements of the rules were temporarily waived in a notice published at 68 FR 74479 (Dec. 24, 2003). The Office is now amending its rules to incorporate these changes.

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Wired: New Induce Act Alarms Foes

According to a September 27, 2004 article in Wired,
Critics say the bill goes far beyond the copyright-infringement problem the senators want to address and will punish inventors of new technologies. . . . In addition, the bill would nullify the so-called Betamax decision, which sparked 20 years of innovation in technology. This legislation introduces a new kind of infringement -- inducement -- which Betamax does not protect, said Jason Schultz, an attorney with the Electronic Frontier Foundation.

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USPTO Postal Interruption Notice for Patent Customers

On September 27, 2004, the USPTO published a Postal Interruption Notice stating that
37 CFR 1.10(i) (effective September 21, 2004) addresses interruptions or emergencies in USPS "Express Mail Post Office to Addressee" service that are designated by the Director. Correspondence covered by 37 CFR 1.10 (non-trademark correspondence) that would have been filed with the USPTO under 37 CFR 1.10 during this USPS service interruption, but which was not filed due to the USPS service interruption, should be filed promptly after the termination of the USPS service interruption with a petition in accordance with 37 CFR 1.10(i) using "Express Mail" service in accordance with 37 CFR 1.10. . . . As soon as the USPTO receives further information from the USPS as to when postal services in the affected areas will be resumed, the USPTO will post updated information regarding this situation on the USPTO Web site ( and in the Official Gazette. Inquiries concerning this notice may be directed to Fred Silverberg by e-mail at or by telephone at 703-305-8986 or 571-272-7719.
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Virgin "Rents" Music

According to a September 27, article in the New York Times, Sir Richard Branson has started a new kind of of music store,at, this time selling music as streams of bits to be downloaded from the Internet. It is betting that new customers will join its Virgin Music Club for a $7.99 monthly fee to listen to an unlimited amount of music from Virgin's one-million-track library on their computers, rather than buying songs one at a time.
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Fixing the Patent System

According to a September 27, 2004 article in the New York Times, Josh Lerner, a professor of investment banking at the Harvard Business School, and Adam Jaffe, a professor of economics at Brandeis University, have written a new book to be published in November by Princeton University Press, entitled "Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What To Do About It." Their solution?
  • Devote more resources to those patent applications which are really the important ones, and less to the unimportant ones.
  • One level of review before and after the patent is issued, but within the patent office.
  • Reverse the trend toward jury trials for patent lawsuits.

"There's a relatively small group of people in the D.C. patent bar, and they have a very powerful influence on how patent policy gets decided. There is a powerful incentive for them to keep a patent system that is complicated, and one that involves protracted, costly litigation," Lerner reportedly told the Times.

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Archived updates for Monday, September 27, 2004

HK Intellectual Property Rights Protection Alliance

Recognizing the mutual benefits of cooperation between the enforcement bodies and owners of intellectual property rights, the Hong Kong Customs and Excise Department has, in collaboration with the IPR industry has, initiated the establishment of the Intellectual Property Right Protection Alliance. According to a September 27 article in Managing Intellectual property, their website allows members to post "product identifications" in order to to allow Customs to identify fakes more quickly.
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Microsoft I/P Killed E-mail Sender ID Standard?

According to a September 24, 2004 report from ZDNet UK News "A Microsoft-backed proposal for verifying the source of email has been shelved by the Internet engineers working to turn it from specification to standard. Closing shop comes roughly a week after the IETF's MTA Authorisation Records in DNS (MARID) working group voted down a proposal by Microsoft to make some of the company's intellectual property a mandatory part of the solution. The group decided that Microsoft's insistence on keeping secret a possible patent application on its proposed technology was unacceptable."

The co-chairs of the Madrid working group stated on September 11, 2004 that "On the issue of ignoring patent claims, the working group has at least rough consensus that the patent claims should not be ignored. Additionally, there is at least rough consensus that the participants of the working group cannot accurately describe the specific claims of the patent application. This stems from the fact that the patent application is not publicly available. Given this, it is the opinion of the co-chairs that MARID should not undertake work on alternate algorithms reasonably thought to be covered by the patent application. We do feel that future changes regarding the patent claim or its associated license could significantly change the consensus of the working group, and at such a time it would be appropriate to consider new work of this type."

However, according to a September 25 statement reportedly made by Craig Spiezle, Director, Safety Technology and Strategy Group for Microsoft, "From the onset, Microsoft has confirmed that any potential patent rights that Microsoft may eventually be granted will be provided to all users, implementers and distributors of the Sender ID specification under Microsoft's royalty free license. Microsoft will not revoke its offer to extend this license to anyone now and in perpetuity. The information disclosed by Microsoft regarding its patent applications and its license terms meet and exceed the IETF requirements for such disclosure."
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Bootleg Recording Law Struck Down

According to a September 26, 2004 report from Variety Manhattan U.S. District Judge Harold Baer struck down 35 USC 2319A because U.S. copyright law limits protection of a work to the life of the author plus 70 years. The criminal anti-bootlegging act runs afoul of that legal standard because it "grants seemingly perpetual protection to live musical performances,'' the judge said.
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EU I/P Directive To Harmonize Discovery and Injunctive Relieif

According to an article by Florian von Baum, "After implementation of the Directive into national laws, US companies seeking to enforce their IP rights in Europe may rely on a system that will be much more consistent with US laws. In particular, the evidence-related provisions and the Right to Information are similar to discovery rules in the United States. Also, the Precautionary Measures, Corrective Measures and Injunctions provisions are consistent with US rules regarding preliminary and permanent injunctions." All Member States of the newly expanded EU must comply the provisions of European Union Directive on the Enforcement of Intellectual Property Rights (2004/48/EC) by April 30, 2006.
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European (Patent) Democracy Day?

In case you missed it, the Foundation for a Free Information Infrastructure, or FFII, celebrated Friday, September 24, as "the first anniversary of the plenary vote by the European Parliament that stopped the EU Commission's push towards unlimited patentability."

Fédération Internationale des Conseils en Propriété Industrielle (FICPI), or FICPI, which bills itself as a "non-political, world-wide organisation of intellectual property attorneys in private practice" probably has different view of the new "E-D Day." The published a "Position Paper on the European Union Parliament's Decision on 24 September 2003 on the Proposed Directive on the Patentability of Computer-Implemented Inventions" which concluded that that
The amendments adopted by the European Parliament were apparently formulated by and serve only the purposes of the radical anti-patent activists. The provisions contained in the amendments are incompatible with existing patent laws and its definitions of fundamental terms such as invention or inventive step. If it were to come into force, the consequences of the Parliament text would effect not only the field of computer implemented inventions but the patent system as a whole and create instead of reduce substantial legal uncertainty as well as conflicting interpretations of the law within the European Union member states. In addition, many provisions violate the TRIPS obligations and would create an unbridgeable gap between European patent law on the one side and international patent law of non-European countries on the other side. FICPI therefore strongly opposes the text adopted by the Parliament.

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EU Software Directive Postponed Again

According to the Greens/EFA Group in the European Parliament, the Competitiveness Council's has decided not to include the directive on the patentability of computer implemented inventions in the agenda of its meeting on September 24. According to
Daniel Cohn-Bendit, Co-President of the Greens/EFA Group
, "Officially, the Council has experienced translation difficulties with the new official languages of the EU. In reality this file is returning to Coreper in order to allow the technical discussions between experts from the Member States to continue."
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AIPLA Responds to NAS Patent Report

The American Intellectual Property Law Association issued a statement endorsing "the main thrust" of the National Acadamy of Scienes Report entitled “A Patent System for the 21st Century� in each of the seven areas where recommendations have been made:

  • The patent system should remain open-ended, unitary and flexible so that,
    wherever “progress in the useful arts� might lead mankind, a vigorous and
    effective patent system can follow. No changes in the existing patent law are
    needed to achieve this end. Neither the AIPLA nor the NAS Report endorses any
    changes to the patent law in this regard.
  • A core feature of the patent laws should be a set of vigorously applied criteria for
    patentability, and AIPLA agrees with the NAS Report that the non-obviousness
    standard should be vigorously applied. In this respect, however, non-obviousness
    is no different from the other patentability requirements; all must operate with
    vigor for the patent law to promote progress in the useful arts. That said, AIPLA
    does not agree that reinvigoration of the non-obviousness law is now necessary.
    Rather, what is needed is a consistent application of all the requirements for patent
    validity. Achieving this consistency depends in part upon a U.S. Patent and
    Trademark Office with sufficient resources and capabilities to guarantee that this
    can happen. The NAS Report does not recommend any statutory change to the legal standard for assessing non-obviousness and AIPLA concurs that none is
  • Decisions of patent examiners to issue patents should be subject to an open review
    process in which the public can participate. AIPLA supports the conclusion of the
    NAS Report that an effective post-grant opposition system needs to be instituted.
    However, based upon global experience with such proceedings, a post-grant
    opposition mechanism must be carefully constructed, adequately resourced by the
    U.S. Patent and Trademark Office, and appropriately constrained. It should
    achieve a balance between the interests of the patent owner in a final
    determination of patent property rights and the interests of the public in the prompt
    elimination of erroneously granted patents.
  • A predicate to the more effectively functioning patent system is a more effectively
    functioning U.S. Patent and Trademark Office. A key to a more effective Office
    lies in adequate funding levels, an improved mechanism for financing the
    operations of the Office, and a more effective business planning process. AIPLA
    wholeheartedly endorses the NAS Report recommendation that the Office’s
    capabilities must be strengthened. Doing so depends upon funding and financing
    reforms that will make possible effective business planning. Creating and
    enhancing capabilities of the Office is essential to the successful implementation
    of a new post-grant opposition procedure.
  • Scientific, research, or other experimental activities that allow a patented invention
    to be better understood, more fully developed, or further advanced should be
    exempt from patent infringement. Codifying such an exemption as recommended
    by the NAS Report, would remove the uncertainty that now exists over the manner
    in which a patented invention can be used to better understand and/or extend what
    is patented.
  • The cost of patent litigation, which itself renders many patents de facto
    unenforceable, should be addressed through statutory changes recommended by
    the NAS Report. These changes include elimination, limitation or modification of
    current provisions of the patent law as they relate to willful infringement,
    inequitable conduct, and the requirement to disclose the inventor’s contemplated
    best mode. While these changes may appear controversial to some inside and
    outside the IP community, radical changes in the patent law are needed to control
    the costs of all aspects of filing, procuring and enforcing patents.
  • Substantive U.S. patent law should be radically simplified in the manner proposed
    by the NAS Report. AIPLA supports adoption of a “best practices� approach to
    modernizing the U.S. patent system. These include adoption of a first-inventor-tofile
    system, repeal of “loss of right to patent� provisions, ending the exclusions to 18-month publication of pending patent applications, and removal of the “best mode� requirement. Such changes to U.S. patent laws would also have the salutary effect of further harmonizing U.S. patent laws with those of other advanced industrialized countries. The NAS Report makes a persuasive case for the need to change U.S. patent laws and to seek patent law harmonization internationally.
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McKinsey: Consultants for I/P Profit

According to an article in the September 27, 2004 McKinsey Quarterly, "McKinsey research shows that in lots of cases, companies could earn 5 to 10 percent of their operating income from the sale or licensing of intellectual property, yet most earn less than one-tenth that. Too often, they don't know what they have, what it is worth, or what other industries could do with it. The solution is to build a network of outside specialists who can identify the best market for each asset and use their industry contacts and experience to negotiate a sale.
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Archived updates for Friday, September 24, 2004

TGIF for Delphion's Patent Galleries

Each free gallery is the result of users' journeys "into the deepest recesses of Delphion Research."

Click here for The Gallery of Historic Patents and the archive.

Click here Gallery of Obscure Patents and don't forget about the obscure archive including US Patent No. 5,830,035 for a "Toe Puppet" --

Doesn't eveybody need one of those. . .

Thank Goodness It's Friday,

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USPTO Waives Requirement for IDS Copies of Applications Filed after June 2003

On September 21, 2004, the U.S. Patent and Trademark Office sua sponte waived the requirement in 37 CFR 1.98(a)(2)(iii) on Information Disclosure Statements requiring that a legible copy of the specification (including the claims, and drawings) of each cited pending U.S. patent application (or portion of the application which caused it to be listed) where the cited pending application is stored in the USPTO's IFW system. This waiver is effective immediately.

Applications filed under 35 U.S.C. 111 on or after June 30, 2003, and international applications that have entered the national stage on or after June 30, 2003, have been or are being scanned into the USPTO's IFW system. When citing to a pending U.S. patent application that has been published under 35 U.S.C. ? 122(b) (eighteen-month publication), the USPTO prefers that the citation be to the patent application publication (by publication number) rather than to the application itself (by application number). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material.

According to to the Notice posted on September 23, the USPTO has been scanning newly filed patent applications and the existing inventory of patent applications into USPTO's Image File Wrapper (IFW) system since June of 2003. Applications stored in the IFW system may be viewed by examiners on their desktop computers. Consequently, there is no longer a need to require a copy of the specification, including claims, and drawings of a U.S. patent application (or portion of the application) listed on an IDS when the cited application is stored in the USPTO's IFW system, and can be readily viewed by examiners, applicants and members of the public.
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JEDEC: New Rules Needed to Prevent 'Gaming' of Standards-Setting Process

"Standards setting has been used for a lot of hard game playing," Scott Peterson, senior counsel for intellectual property at Hewlett-Packard Co reportedly said at a conference sponsored by the Jedec standards organization on September 16, 2004. "The Rambus case represents a failure of the standards process," said John Kelly, Jedec's president according to the same article in EE Times.
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New USPTO Public Search Room

According to the USPTO website, this state-of-the-art facility will offer 300 computer workstations providing access to the full complement of USPTO patent and trademark automated search systems, in addition to other electronic, microfilm and print resources. The new public search room will be open weekdays, starting September 27, 2004, from 8 am to 8 pm in the Madison East Building shown above.
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FDA Requiring Bar Codes on Drugs

According to an article by Diane Romza-Kutz and Debra Bogo-Ernst, the U.S. Food and Drug Administration (FDA) is now requiring "bar codes" on most prescription drugs and certain over-the-counter drugs. The FDA hopes that the ne rule (69 Fed. Reg. 9120, 9120 on Feb. 26, 2004) will reduce medication errors in hospitals and other health care settings by allowing health care professionals to use bar code scanning equipment to verify that the right drug in the right dose and right route of administration is being given to the right patient at the right time.

Although the Final Rule became effective on April 26, 2004, drug products that receive approval on or after that effective date must comply with the bar code requirement within 60 days after the drug’s approval date. Drug products that received approval before April 26, 2004 must comply with the bar code requirement within 2 years of that date.
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EU Surname Registrability Clarified

On September 16, 2004, the European Court of Justice ruled in Nichols plc v Registrar of Trade Marks, that the registrability of surnames must be considered under the same criteria as any other trade marks.
"The potential distinctiveness of a surname depends on whether, in relation to the goods or services in respect of which registration is sought, the relevant consumer considers that the sign identifies those of one undertaking rather than those of another," wrote the court. The commonness of the surname is one of the factors which it is appropriate to take into consideration."
Alexander von Mühlendahl, vice-president of EU's Office for the Harmonization of the Internatl Market, told MIP Week that "Following this decision, OHIM will not have to change its practice and will continue to accept surnames as trade marks, and will also not change its practice in oppositions when the earlier trade mark consists of a surname."

In contrast, under U.S. trademark law, exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The Trademark Trial and Appeal Board has therefore identified five factors to be considered in considering whether a term is "primarily merely a surname" and therefore relegated to the Supplemental Register:
(1) whether the surname is rare;

(2) whether the term is the surname of anyone connected with the applicant;

(3) whether the term has any recognized meaning other than as a surname;

(4) whether it has the "look and feel" of a surname; and

(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

Similar to Europe, U.S. telephone directory listings are relevant to the surname deteremination, as are excerpted articles from computerized research databases, evidence in the record that the term is a surname; the manner of use on specimens, and dictionary definitions of the term and evidence from dictionaries showing no definition of the term.
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Keeping the Faith at 500

The city of Florence, Italy is throwing a two-month party to celebrate the 500th posting of "I/P Updates," along with the 500th birthday of Michelangelo's "David." Five centuries ago, the famed sculptor and painter unveiled his interpretation of the biblical hero which now draws more than 1 million admirers a year. Likewise, five months ago, a lesser-known intellectual property advocate and counselor launched his exegesis of news and information for intellectual property practioners which now has considerably less than 1 million subscribers. In the bible, David is credited with overcoming a giant named Goliath, using nothing more than his slingshot. I/P Updates can only hope to acheive a similar pique of audacity within the intellectual property community, using nothing more than a blog.
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WIPO: The Legacy of Arpad Bogsch (1919-2004)

Prior to his death on September 19, 2004 Dr. �rpád Bogsch marked the international intellectual property landscape in an unprecedented way. Born in 1919 in Hungary, Dr. Bogsch began his professional career in 1942 as an attorney in Budapest. In 1948, he moved to Paris as a legal officer at United Nations Educational, Scientific and Cultural Organization (UNESCO) Copyright Division. In 1954 he took up a post as legal counsellor at the U.S Copyright Office in Washington, D.C. and became an American citizen in 1959.

Dr. Bogsch's 24-year career with WIPO began at the Bureaux Internationaux Réunis pour la Protection de la Propriété Intellectuelle. BIRPI had been set up in 1893 with a staff of seven to administer the Berne Convention for the Protection of Literary and Artistic Works and in 1898 BIRPI administered four international treaties.

Dr. Bogsch was appointed as first Deputy Director General of BIRPI in 1963. Following the entry into force of the Convention Establishing the World Intellectual Property Organization in 1967, BIRPI became WIPO, and Bogsch became its first Deputy Director General in 1970, then second Director General of WIPO and Secretary General of UPOV in 1973. At a farewell reception for Dr. Bogsch in 1997, Dr. Idris paid tribute to his predecessor describing how from a small organization with a modest secretariat, WIPO had risen under Dr. Bogsch to become an internationally respected agency of the United Nations.

In 1974, WIPO became a specialized agency of the United Nations system of organizations, with a mandate to administer intellectual property matters recognized by the member States of the UN. In 1978, the WIPO Secretariat moved into the headquarters building that has now become a Geneva landmark, with spectacular views of the surrounding Swiss and French countryside. WIPO expanded its role and further demonstrated the importance of intellectual property rights in the management of globalized trade in 1996 by entering into a cooperation agreement with the World Trade Organization (WTO). WIPO now bills itself as "a dynamic entity with 180 member States, a staff that now numbers some 938, from 95 countries around the world, and with a mission and a mandate that are constantly growing. . . . WIPO [currently] administers 23 treaties (two of those jointly with other international organizations) and carries out a rich and varied program of work, through its member States and secretariat."

According to Wikipedia, "Unlike other branches of the United Nations, WIPO has enormous financial resources. These flow from its collection of fees under the Patent Cooperation Treaty, which it administers." Contributions from member states are quite small. The five largest contributing countries each donate about one-half percent of the Organization's budget, slightly over 320 million Swiss francs per year.

"WIPO is a one country, one vote forum. This is important, because there is a significant North-South divide in the politics of intellectual property. During the 1960s and 70s, developing countries were able to block expansions to intellectual property treaties (such as universal pharmaceutical patents) which might have occurred through WIPO.

"In the 1980s, this led to the United States "forum shifting" intellectual property standard-setting out of WIPO and into the General Agreement on Tariffs and Trade (later the WTO), where the North had greater control of the agenda. This strategy paid dividends with the enactment of TRIPs."
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Archived updates for Thursday, September 23, 2004

3 Notes and Infringin'?

As a follow-up to their Save Betamax campaign, the music activists at Downhill Battle are seeking submissions for "3 Notes and Runnin'," their online music compilation commemorating and protesting the Sixth Circuit's ruling in Bridgeport Music v. Dimension Films.

According to their website, "Sample-based musicians and artists can share their own 30 second songs which have been created using only the sample in question. By doing so, they "hope to showcase the potential and diversity of sample based music and sound art, and to call into question the relationship between a sample and its use. . . . Participants are encouraged to process the sound in creative, unconventional and excessive manners, stretching the relationship between the finished result and the source material."
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IT Conversations: The INDUCE Act 2.0 - Law and IT

The Inducing Infringements of Copyright Act of 2004, commonly called the INDUCE Act, is a bill before the Senate that is ostensibly meant to make it easier for the copyright industry to sue the distributors of technology that can be used for filesharing. Those who distribute certain technologies or devices could be found guilty for the copyright violations of their users. It is difficult to overestimate the effect this legislation would have on the IT industry. This show, recorded on September 16, 2004, discusses the original bill as well as various alternatives with host Ernest Miller, and guests Andrew Greenberg, an attorney with Carlton Fields and Vice-Chairman of the Intellectual Property Committee for the Institute of Electrical and Electronics Engineers; Joseph Wattles, past president of the Los Angeles Copyright Society and the former acting general counsel of Paramount Pictures Corporation.
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Reform(aliz)ing Copyright?

According to a September 20, 2004 article in Wired, many works that are out of print and considered no longer commercially viable are still locked up under copyright. For digital archivists, locating these copyright owners is a formidable challenge because Congress no longer requires that owners register or renew their copyrights with the U.S. Copyright Office.

"Formalities -- especially registration and renewal -- have historically been a part of the copyright law since the beginning," said Jason Schultz, an attorney with the Electronic Frontier Foundation. "The registration and renewal served the purpose of a balance in copyright law and it's a balance that's required by the constitution."

The Center for Internet and Society says that even for those works that were copyrighted, more than 85% fell out of copyright after their initial term. Click here to learn more about the CIS's Kahle v. Ashcroft lawsuit asking for a declaratory judgment that copyright restrictions on works whose copyright has not expired, but which are no longer available, violate the constitution.

Click here for "Reform(aliz)ing Copyright," by Chris Sprigman, which analyzes the broader issues raised by the demise of mandatory copyright formalities.

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TRIPS: No Progress on Bio/TK Disclosure for Patents

According to an article in BRIDGES Trade BioRes, Vol. 4 No. 17 23 September, 2004
, the Council for Trade-related Aspects of Intellectual Property Rights (TRIPS) considered a proposal by Brazil, India, Pakistan, Peru, Thailand, and Venezuela on September 21, 2004 suggesting a checklist of issues to be covered in negotiations on biodiversity, traditional knowledge and folklore. The proposal elaborates on possible disclosure requirements in patent applications relating to the source and country of origin of a biological resource and/or traditional knowledge used in an invention.

The US and Japan again voiced their opposition to using the checklist. No substantive progress was made and the meeting closed after one day rather than the scheduled two. The next TRIPS Council is reportedly scheduled for December 1-2.
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The Aftermath of Knorr-Bremse

According to an article by Paul Devinsky and D. Sean Trainor, the Federal Circuit’s decision in Knorr-Bremse does not ameliorate the prudence of obtaining an opinion of counsel when faced with a non-frivolous patent infringement allegation. Whether the accused infringer obtained a competent opinion of counsel is now simply one factor to consider in this analysis. Other factors include deliberate copying, concealing infringing activity, infringement where the infringer knows it has only frivolous defenses, infringement designed to injure a competitor and whether the infringer, when confronted with the knowledge of the patent, formed a good-faith belief as to invalidity or non-infringement.

With the demise of the adverse inference rule, many defendants may now choose not to rely on exculpatory opinions (even if they have one). Thus, patentees will now have to focus discovery efforts more on actions taken by the accused infringer to avoid infringement and the other factors listed above. Indeed, the more factual support the patentee can garner through the discovery process tending to establish such willfulness factors the more likely an accused infringer will confront the dilemma of whether to waive privilege and rely on an opinion of counsel. However, in future disputes over the scope of the waiver, courts will now look to the traditional jurisprudence of the regional circuit regarding the scope of the remaining privilege, not to case law articulating special (and intrusive) jurisprudence which was born out of the adverse inference rule regarding litigation of willful patent infringement allegations.
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CAFC: Testimony of Alleged Co-Inventor Insufficient to Fill Gaps in Conception Documentation

In Gemstar v. ITC (Fed. Cir., Sept. 2004) the court noted that because an alleged co-inventor failed to present facts supported by clear and convincing evidence, the International Trade Commission erred in holding him to be an unnamed co-inventor of the patent:

Under our precedent, more than just the alleged co-inventor’s testimony is required to establish co-inventorship by facts supported by clear and convincing evidence. The ITC found that the alleged co-inventor Neil’s testimony was "credible and straightforward," while the named inventor, Young’s testimony “lacked those characteristics." In support of his co-inventorship claim, Neil principally relies on his own testimony and the content of two product disclosure documents, an original disclosure document and a "second version" of the disclosure document. Although these product disclosures each contained an annotation listing Neil by name, they did not explicitly state what subject matter Neil contributed. The product disclosures fail to explicitly identify Neil’s contributions, and thus fail to show that Neil’s contributions exceeded the prior art or were part of the invention claimed in the patent. Neil’s own testimony cannot fill in these gaps in the product disclosure documents to establish whether Neil contributed to the invention Thus, even taken collectively, Neil’s own testimony, technical background, and the ambiguous product disclosure documents fail to establish Neil’s co-inventorship of the ’121 patent by facts supported by clear and convincing evidence.

The court also gave a nice review of the law on co-inventorship:

When two or more persons jointly invent, they must jointly apply for a patent. Co-inventors must so apply even though they did not physically work together or at the same time, each did not make the same type or amount of contribution, or each did not make a contribution to the subject matter of every claim of the patent. Because conception is the touchstone of inventorship, each joint inventor must contribute in some significant manner to the conception of the invention.

Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice. An inventor may solicit the assistance of others when perfecting the invention without 'losing' any patent rights.

Because co-inventors need not contribute to the subject matter of every claim of the patent, inventorship is determined on a claim-by-claim basis. Moreover, the inventorship analysis, like an infringement or invalidity analysis, first requires the construction of each disputed claim to determine the subject matter encompassed thereby. The second step is a comparison of the alleged contributions of each asserted co-inventor with the subject matter of the correctly construed claim to determine whether the correct inventors were named.

Alleged co-inventors must establish their co-inventorship by facts supported by clear and convincing evidence. To meet the burden of clear and convincing evidence, the alleged co-inventors must prove their contribution to the conception of the invention with more than their own testimony concerning the relevant facts. Whether the co-inventor’s testimony has been sufficiently corroborated is evaluated under a "rule of reason analysis," which requires that an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.

Corroborating evidence may take many forms. Reliable corroboration preferably comes in the form of records made contemporaneously with the inventive process. Circumstantial evidence of an independent nature may also corroborate. Additionally, oral testimony from someone other than the alleged inventor may corroborate.
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Snooping in the Not-So-Time-Honored Tradition

According to a July 30 article in BusinessWeek, Yi Bin Zhu was reportedly discovered after hours on June 23 at the SuperComm show in Fujitsu's booth removing the casing from a $1 million piece of networking gear and taking photos of the circuit boards inside. Zhu was wearing a badge saying he worked for an unknown company called "Weihua" (Huawei, with the syllables in reverse order). He has since said that it was the first time he had attended a U.S. trade show, and that he did not know photography was prohibited.

According to the article "The Zhu incident surely isn't the worst thing that has ever happened on a trade-show floor, where checking out the competition's new gear under the guise of a friend's badge is a time-honored tradition."
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USPTO: Fillable PDF Patent Forms Update

In September 2004, the U.S. Patent and Trademark Office added or updated the "fillable PDF" patent prosecution forms that are listed below.

According to the USPTO website, in order to save electronic copies of these forms, "you must purchase and install the full Adobe Acrobat 5 software application or an equivalent product that has form data saving and editing capability." If you do not have "Acrobat" (Adobe Systems, $299-$449), then check out "CutePDF" (Arco Software $49.95), "pdf-Form Server 2.6" (Universe Software GmbH $35), and "LiveCycle Reader Extensions" (Adobe Systems, $???). Conversely, the PDF forms can be converted to Word (.doc) format using software such as BCL Drake ($79, BCL Technologies). Please feel free to leave a comment if you used any of these, or other, products with the USPTO forms.

Declaration for Utility or Design Patent Application

Declaration (37 CFR 1.63) for Utility or Design Application Using an Application Data Sheet (37 CFR 1.76).

Declaration (Additional Inventors) and Supplemental
Priority Data Sheet

Utility Patent Application Transmittal

Provisional Application for Patent Cover Sheet

Design Patent Application Transmittal

Transmittal Form

Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application

Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patent

Request for Continued Examination (RCE) Transmittal

Request for Oral Hearing before the Board of Patent Appeals and Interferences

PTO/SB/44 (same as PTO-1050)
Certificate of Correction

Maintenance Fee Transmittal Form

Fee Address Indication Form

Reissue Patent Application Transmittal

Reissue Application Fee Transmittal Form

Terminal Disclaimer to Accompany Petition (Period Specified)

Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)

Petition for Revival of an Application for Patent Abandoned

Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing

Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent

Power of Attorney and Correspondence Address Indication Form

Revocation of Power of Attorney with New Power of Attorney and Change of Correspondence Address

Request for Withdrawal As Attorney or Agent and Change of Correspondence Address

Statement Under 37 CFR 3.73(b)

Change of Correspondence Address, Application

Change of Correspondence Address, Patent

Request for Customer Number Data Change

Request for Customer Number

Recordation Form Cover Sheet

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Archived updates for Wednesday, September 22, 2004

An Interview with Nick Godici

Click here for a September 13, 2004 interview with Nick Godici, Commissioner for Patents, United States Patent and Trademark Office, courtesy of The Kojo Nnamdi Show on WAMU radio in Washington DC.
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EU Extended Impact Assessment for Design Protection of Spare Automobile Parts

This extended impact assessment by the European Commission addresses the current situation of different, opposed regimes of design protection for spare automobile parts where 9 Member States have liberalized and 16 Member States extend design protection to spare parts. It has been drawn up making use the questionnaire sent in 1999 (to vehicle manufacturers, suppliers, independent component producers, insurance companies, parts distributors, repairers and consumer organisations), the results of the impact study undertaken in 2003, the various reviews and reports concerning Intellectual Property Rights, IPR, and the data sent to the Commission by other interested parties.
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MPAA VP Sworn in as FTC Commissioner

On September 3, 2004, the the Federal Trade Commission announced that Jon Leibowitz, most recently vice president of congressional affairs for the Motion Picture Association of America (MPAA), had been sworn in as a commissioner.
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Balancing Intellectual Property And Human Rights

According to an article in the the September 15, 2004 issue of Bridges Weekly Trade News Digest, on September 14, a group of intellectual property experts convened in Geneva to consider the relation between intellectual property and human rights. Discussions at the meeting, which was organised by the civil society group "3D -- Trade, Human Rights, and Equitable Economy", focused on a draft "general comment" on the International Covenant for the Protection of Social, Economic and Cultural Rights, and specifically on Article 15(1)(c) of the Covenant, which highlights "the right of everyone to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author." Their draft general comment reportedly addresses the distinction between human and intellectual property rights, "obligations of comparative priority" such as the right to health, food and education, warnings about disproportionate use of compulsory licensing, and the responsibility od states to provide effective measures for the protection of indigenous intellectual property and an appropriate enforcement system.
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Hurricane Emergency Trademark Mailing Procedures

On September 21, 2004, the United States Patent and Trademark Office designated the postal service interruption in the areas of Florida, Alabama, Mississippi, Louisiana and Puerto Rico that have been affected by a series of hurricanes starting with Hurricane Frances on September 3, 2004 as an emergency within the meaning of 35 U.S.C. §21(a). Threrefore, if a document cannot be filed through TEAS, trademark customers in the affected areas should follow 37 C.F.R. §2.195(e) by
(1) Promptly mail their correspondence to the USPTO when postal services resume; and

(2) Including a statement with the correspondence that "the correspondence would have been filed on (specify date) but for the interruption of the USPS due to severe weather conditions during the 2004 hurricane season."

The USPTO will consider paper correspondence submitted pursuant to 37 C.F.R. §2.195(e) as filed in the USPTO on the date the correspondence would have been mailed but for the USPS interruption caused by the hurricanes. However, this rule applies only if the correspondence address of record originates from an affected area and the post office was closed or the postal services suspended in that area on the specified date due to the hurricanes. As soon as all affected post offices return to normal operations, the USPTO will post updated information regarding this situation on the USPTO website.
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Patent Prodigy Software

According to their website, Patent Prodigy will
- Drastically reduce writing, checking & drawing time
- Virtually eliminate item numbering and description errors
- Dynamically link patent application and drawings for better control
- Revision tracking facilitating communication between attorney & draftsman
- Gain greater control over patent drawings
- Renumbering system keeps numbers evenly incremented
- Easy to learn software with online help manual
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A List of RSS Patent Issuance Feeds

Click here for a list of RSS patent issuance feeds, courtesy of PHOSITA
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Archived updates for Tuesday, September 21, 2004

iClaim Patent Software

According to their website, "'iClaim Check'" alerts you to missing antecedents, wrong dependencies, typographical errors, and more. 'iClaim Renumber' saves you the aggravation of manually renumbering your claims."

Click here for a free trial.
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USPTO Final Rule to Support Strategic Plan Implementation

On September 21, 2004, the U.S. Patent and Trademark Office published its final rule on "Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan," some of which becomes effective today. According to the official notice, "The noteworthy changes in this final rule are:
  • Providing for an alternative signature on a number of submissions

  • Adjusting the fees for a number of patent-related petitions to reflect the actual cost of processing these petitions

  • Codifying the current incorporation by reference practice and also providing the conditions under which a claim for priority or benefit of a prior-filed application would be considered an incorporation by reference of the prior-filed application

  • Expanding the submissions that can be filed on compact disc

  • Eliminating the requirement for copies of U.S. patents or U.S. patent application publications cited in an information disclosure statement for all applications

  • Providing that a request for information may contain interrogatories or requests for stipulations seeking technical factual information actually known by the applicant

  • Providing that supplemental replies will no longer be entered as a matter of right; providing for the treatment of preliminary amendments present as of the filing date of an application as part of the original disclosure, and

  • Eliminating the requirement in a reissue application for the actual physical surrender by applicant of the original Letters Patent."

The changes to 37 CFR 1.4, 1.6, 1.10, 1.27, 1.57(a), 1.78, 1.84, 1.115, 1.137, 1.178, and 1.311, and new 37 CFR 1.57(a)(1) and (a)(2) are effective September 21, 2004.

The changes to 37 CFR 1.12, 1.14, 1.17, 1.19, 1.47, 1.53, 1.57(a)(3), 1.59, 1.84(a)(2), 1.103, 1.136, 1.182, 1.183, 1.291, 1.295, 1.296, 1.377, 1.378, 1.550, 1.741, 1.956, 5.12, 5.15, 5.25, and 41.20 become effective November 22, 2004.

The remaining changes take effect on October 21, 2004.
Administration may be contacted
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USTR Wants More Input on China Piracy

According to a September 17, 2004 report in "Internet News," Deputy USTR Josette Shiner released a letter sent to a number of IT groups and entertainment companies, including the U.S. Chamber of Commerce, the Business Software Alliance and the Motion Pictures Association of America, seeking specific examples of copyright piracy in China. The request for comments reportedly came a day after a comment deadline for a USTR report on China to Congress and followed an editorial by presidential candidate John Kerry in The Wall Street Journal saying the Bush administration "refuses to show our competitors that we mean business."
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Provisional Remedies in Just 29 Days After Filing

According to a September 2004 article in IP Law & Business, Joe Berghammer's firm filed a PCT application in Switzerland and secured publication of the application in just 29 days. They then notified a potential infringer of the publication and put them on the hook for "provisional remedies" in the U.S. for infringing any claim that remains substantially unchanged during prosecution.
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EU Madrid Protocol Trademark Forms

Click here for the "Application for International Registration governed exclusively by the Madrid Protocol" and "Designation subsequent to the International Registration" forms from the EU Office for Harmonization in the Internal Market.
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Ambrogi: Patent and Trademark Searching Via the Web

According to Robert J. Ambrogi at on January 2004, "Using the Web, lawyers can search patents and trademarks throughout the world. Here is a guide to some of the best Web sites for searching patents and trademarks worldwide."
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Recapturing Fallen Trolls

According to a September 21, 2004 article in the National Law Journal, theses trolls inadvertently fell into the public domain in the United States 40 years ago through a loophole in laws governing international copyright protection. But now, using the URAA amendments to the U.S. Copyright Act, the trolls have regained their copyright protection and the Troll Co. started going after companies that had taken advantage of their public-domain status.

"The people who are out there trying to take advantage of former public domain status are not people who are adding greatly to the world of creative works," says Craig Mende, the attorney who is handling the troll copyright enforcement lawsuits. "They're more likely trying to make a quick buck than adding something new and creative to the world ... especially in cases where you're reproducing collectibles and knickknacks."
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More USPTO Funding Politics

On September 10, 2004, the leaders of the Senate Judiciary Committee wrote a letter to leaders of the Senate Appropriations Committee urging them toward agreement on HR 1561 to increase funding for the U.S. Patent and Trademark Office:
"We would like to work with you to find language that achieves our goal of ending fee diversion but also preserves the jurisdiction and prerogatives of the Appropriations Committee and the budget process to determinine the PTO's annual appropriation."
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Archived updates for Monday, September 20, 2004

Iceland to Accede to the EPC on November 1

The European Patent Convention will enter into force for Iceland on November 1, at which time the European Patent Organisation will then comprise the following 29 member states: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
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RSS Readers Creating a Blog Jam

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Infringing Buddha?

According to a September 15, 2004 article in Lanka Business Online, the Sri Lankan government's Buddha Sasana Ministry it is considering the use of intellectual property protection to safeguard the Buddha image from a "larger anti-Buddhist conspiracy."

How the Buddha’s image is to be copyrighted and who shall own the copyright is yet to be figured out.
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Argentina, Brazil, and Bolivia Propose "Development Agenda" for WIPO

According to an article in the the September 10, 2004 issue of Trade and Biological Resources News Digest from the International Centre for Trade and Sustainable Development (ICTSD), Argentina, Brazil and Bolivia informally circulated a proposal to establish a "development agenda" at the World Intellectual Property Organization(WIPO).

The proposal, to be officially presented at the upcoming 31st session of the WIPO General Assembly, scheduled for 27 September to 5 October, is expected to be controversial. The proposal criticises the general nature of WIPO, arguing that it is time for the institution to integrate the UN-wide development agenda in its mandate, including the commitments set out in the Millennium Development Goals. It also touches on the basic principles and structure of WIPO, and questions the role WIPO has played in promoting development. Some developing country trade observers have reportedly characterised the proposal as a "groundbreaking" step in the rethinking of the role of developing countries in WIPO.
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ADTMag: Patent Wars and the End of the Software Business?

According to Gary Barnett in Application Development Tools Magazine on September 16, 2004, "The extension of patent law to cover software raises great dangers for an industry that has become increasingly litigious over the past decade. . . . The software industry is in the middle of a storm that could potentially have disastrous ramifications for IP law. If a global intellectual property war breaks out, the ultimate victims will be patent and copyright holders. Governments will move to prevent IP law from causing damage to their economies by repealing IP legislation and repudiating international treaties if necessary. Our advice to the industry as a whole is to apply IP law carefully and responsibly, or be prepared to face a backlash that could change the game entirely."
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Another USPTO On-Line Event for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line Tuesday, September 21, from 2 to 3 pm (EDT). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10 am (EDT) on Tuesday. Inventors can begin logging on for the on-line at 1:30 pm.
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Free Patent/Trademark Monitoring at

From the free "Seek IP Smart Watch Service" website:
Want to be informed every time a particular company issues a new patent? Want to know every time other patents refer to your patents? Want complete and easy access to all of your own patents and trademarks? Seek IP gives you this kind of control, and much more.

Seek IP's Smart Vault lets you collect and store patents and trademarks, giving you access to a vast array of information regarding your own intellectual property assets, and those of your competitors. The competitive intelligence edge this gives you provides unique opportunities for you to leverage your intellectual property.

Use Seek IP's IP Watch Setup screens to identify the information you want. Seek IP gathers the patents and trademarks that meet your criteria, and, at your request, stores them for you in your own personalized Smart Vault.

International: Smart Watch searches the the US Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the Patent Cooperation Treaty office (PCT).
Distributed: Use a standard browser to view your Smart Watch results and vaulted patents and trademarks from anywhere via the Internet.
Confidential: Your account is highly secure, thanks to use of both industry standard and proprietary security technologies.
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Archived updates for Friday, September 17, 2004

"Mighty Macro" Patent Helper

According to their website, Silicon Valley Seminars' MightyMacro is a Microsoft Word macro which makes the process of preparing and filing patent applications much simpler. The MightyMacro:
* Automatically renumbers patent claims and their dependencies
* Automatically calculates the USPTO filing fee, without having to manually count the claims
* Automatically calculates, in real time, a table of pictorial references and insures the accuracy of reference numbers
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Infringement Opinions after Knorr-Bremse

Some observers have speculated that the Knorr-Bremse decision ruling could lead to less opinion work at patent law firms. However, Jim Kayden, of Thomas, Kayden, Horstemeyer & Risley in Atlanta flatly rejected that view in a recent article from the September 16, 2004 issue of IP Law Bulletin:

"To the contrary, it can benefit boutique patent firms by removing a 'mythical' conflict issue used by general practice firms to try and pry away the potentially lucrative litigation work. After the work that goes into rendering an opinion, at which boutique patent firms are particularly adept, no other firm is better prepared or qualified to litigate, should the need arise. While a good advocate's job is to keep his clients out of court, the preparation of an exculpatory opinion is excellent preparation for litigation. The nature of opinions may change a bit, as clients won't feel compelled to seek out 'window dressing' opinions just to avert a judgment of willful infringement. But clients will still need a quality assessment of whether their products or services infringe a patent," he said.

In fact, such "infringement risk assessments" are usually much more valuable to clients than a typical non-infringement opinion. By presenting options for minimizing the legal risk of being held liable for money damages, a client can then weigh those options againt any commercial risk associated with each option. Since risk tolerance will vary between clients, and often in proportion to the expected profits for a particular activity, this approach allows attorneys to become participants in their client's problem-solving process, rather than just gate-keepers to the Tower of (Legal)Babel.
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Kenya Claims Rights to Lake Bogoria Bacteria

According to a September 10, 2004 report from, the Kenya Wildlife Service has launched a bid for a share of profits from US-based Genencora biotechnology company for chemicals used to soften and fade denim jeans that were initially derived from bacteria taken from Lake Bogoria without the appropriate permission.

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USPTO Funding Legislation Update

The American Intellectual Property Law Association is reporting that the Senate Appropriations Committee, approved the fiscal year 2005 Commerce, Justice, State, the Judiciary, and Related Agencies Appropriations bill (S. 2809) on September 15, 2004.

Although the Senate's fee provisions call for most of the increases in recently-passed House bill (H.R. 1561), the Senate bill drops the rebate system that would have deposited fee revenues in excess of the appropriation into a trust fund from which the PTO would rebate fees at the end of the fiscal year. The Senate version also drops a House provision to permit the Director to refund part of the application fee if a declaration of express abandonment was filed before examination. Both bills continue to designate separate filing, search and examination fees that are payable upon filing, and both would permit outsourcing of searches by a qualified search authority.
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Software Outsourcing Offshore— Business and Legal Considerations Checklist

According to the authors, this checklistprovides a starting point for the "top-10" business and legal considerations that a company will face before deciding whether to engage in offshore outsourcing of software development.
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TGIF: Yes, but will just sneer back?

Click here to learn more about this parody.

Thank Goodness It's Friday. --Bill
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Archived updates for Thursday, September 16, 2004

EU Proposal to End to Design Protection for Visible Replacement Auto Parts

On September 14, 2004, the European Commission announced its proposal to amend the legal protection of designs Directive (98/71) by removing Member States' option to maintain design protection for "visible" replacement vehicle parts, such as bonnets, bumpers, doors, lamps, rear protection panels, windscreens and wings. The proposal would allow independent part manufacturers not linked to the producers of finished vehicles to compete throughout the EU market for visible replacement parts. Non-visible parts, like engine or mechanical parts, are not concerned by the proposal. Neither are components in new vehicles.

Seven Member States out of the "old" fifteen (Belgium, Ireland, Italy, Luxembourg, the Netherlands, Spain and United Kingdom) have already have a "repairs clause" allowing design protection on new products, but leaving the possibility for alternative parts in repair or replacement in the aftermarket. The Commission estimates that these parts are 6-10% more expensive in Member States where they are subject to design protection.

The 1998 Directive on the protection of designs provides for a revision of the Directive four years after the deadline for implementation, in October 2005. Nontheless, according to the Commission's FAQs on this proposal, now is the right time to introduce EU-wide repairs clause because "it has proved impossible to reach a voluntary agreement within the industry itself."
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Domain Name Registration Reaches All-Time High

According to VeriSign's Quarterly Domain Name Report for September 2004, worldwide domain name registrations reached a peak of 64.5 million domain names, a 7 percent increase over end of year 2003:

Overall Growth: 70 percent of total new .com and .net registrations in 2004 were for domains never previously registered, indicating a steady supply and demand for names with "new" brand appeal.

Increasing Utilization: In addition to being larger than at any point in history, the current domain name base is also being used more actively. Renewal rates for .com and .net remain strong with rates ranging from 50 percent in January 2003 to 71 percent in May 2004. In addition, VeriSign's global Internet Registry for .com and .net is now processing, on average, more than 14 billion lookups per day�more than three times the number of telephone calls made each day in the United States. Of these, 70 percent are for .com and 30 percent are for .net.

Increasing Globalization: ccTLDs account for a growing portion of overall domain names, and currently represent 39 percent of all domain names registered in the world. The majority of ccTLDs are registered in Europe, including .de (Germany) and .uk (United Kingdom), which hold the number one and two spots, respectively, as of September, 2004. ccTLDs represent the fastest growing TLDs in the world, indicating a proliferation in the use of the Internet locally and internationally.
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Reverse Payments by Patent Holders Likely to be Challenged

According to Diane Green-Kelly, of Mayer, Brown, Rowe & Maw LLP, recent decisions make it clear that settlement agreements between drug manufacturers to resolve patent infringement litigation triggered by a paragraph IV certification (for approval of a generic drug under the Hatch-Waxman Act) involving "reverse payments" made by a patent holder to an alleged infringer will be treated as highly suspect. Now that such agreements must be filed with the FTC and the DOJ within 10 days of their execution, drug manufacturers contemplating such agreements should be prepared to defend them on the merits against an almost certain challenge.
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More on Free Patent Copies isn't free anymore, but you can still get free patent copies at which claims to be "based on the original pat2pdf script and is not affilliated with" and now provides free PDF downloads (enter nummber in "jump to patent # box, click view patent images, then click view as PDF).

this update via The Invent Blog
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TIPO "Quarterly Report on Taiwan's Intellectual Property Rights Protection"

According to a report by the Taiwan Intellectual Property Office, "Taiwan remains on the Priority Watch List and is subject to out-of-cycle review, despite the praises Taiwan received from the United States on our efforts in effective raids against night markets and inspections of optical media factories that have significantly reduced the number of retail sale for pirated optical media products. USTR also mentioned in the same report that Taiwan’s "2002 IPR Action Year" has been extended to 2005 and has moved to strengthen enforcement, particularly, against pirated optical media.

"The decision to place Taiwan on the Priority Watch List does not fully acknowledge our endeavors and comes as a disappointment to our people and our enforcement authorities. Nonetheless, IP protection is one of our crucial national development policies and our obligation to world economy. We will beef up enforcement momentum and continue refining legal framework. According to the April 9, 2004 report released by IIPA, Taiwan’s software piracy rate dropped to 41% in 2003, which is the biggest improvement among all nations and is ranked second after Japan in Asia. Also, Taiwan’s records and music piracy rate dropped from 47% in 2002 to 42% in 2003. These figures show that the new Copyright Act and its stipulations for public crime have produced deterrent effects.

"Additional efforts have been made to strengthen IP legal and enforcement mechanisms. These include the enactment of the new Patent Act on July 1 and pushing the institutionalization of the Integrated Enforcement Task Force (IETF). . . ."
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