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Archived updates for Monday, January 31, 2005

USPTO Issues Rules on New Fee Structure

On January 27, 2005, the USPTO issued its final rules for revising the patent fees set forth in the the Consolidated Appropriations Act of 2004. A new section 1.52(f)(2) makes it possible to exclude sequence listings and computer program listings submitted via the Office electronic filing system when determining the application size fee required by § 1.16(s):
That is, for applications filed via the Office electronic filing system, a
sequence listing or a computer program listing is ‘‘filed in an electronic medium as prescribed by the Director’’ for purposes of 35 U.S.C. 41(a)(1)(G) only if the listing is submitted in ASCII text as part of an associated file of the application. Thus, for example, sequence listings or computer program listings submitted via the Office
electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagg(ed) Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j).

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Rader on "Truth in Advertising" for Deference to Trial Courts

In his dissenting opinion in Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc. (Federal Circuit, January 28, 2005) Circuit Judge Rader explains why he thinks it is time for "truth in advertising" with regard to deference to the claim constructions of the lower courts (citations omitted):

Deference to Trial Courts: Time for "Truth in Advertising?"

This is the classic "close case," so close in fact that ultimately two federal judges (one of whom conducted an entire bench trial on this issue) and the United States Patent and Trademark Office agreed with Merck & Co., and two federal judges agreed with Teva Pharmaceuticals. The United States District Court of Delaware tried this case from March 4 – 7, 2003, then issued a 75-page opinion analyzing the claims and arguments in consummate and accurate detail. This court received the typical briefs from the parties, an appendix containing selected portions of the record, and heard a total of approximately thirty minutes of argument by the parties on the issues before this court. Despite the district court’s superior tools and time to evaluate the complete record, to hear and inquire from expert and fact witnesses, to delve into countless related details, to probe the scientific and semantic context, and to entertain argument as long as necessary for clarity, this court with its reading three briefs before its half-hour hearing becomes enamored with its own analysis of a very close issue and reverses the district court.

This court often hears criticism from district court judges that its reversal rate on claim construction issues far exceeds that of other circuit courts. In response, nearly every judge on this court has publicly professed to accord some level of deference to district courts regardless of this court’s de novo. Either the Federal Circuit accords deference in accordance with its public protestations or it does not in accordance with its legal standard barring any deference. If the former, this court has a "truth in advertising" problem. Its actual practice clashes with its professed legal duty. If the latter, this court has a different kind of "truth in advertising" problem.

In this case, this court eschews all deference, a particularly striking choice in the face of a very close case and a district court whose diligent and intelligent process and resolution earned more respect than it received. I am not entirely sure which aspect of the "truth in advertising" problem this case illustrates, but it certainly makes any
protestations of deference in fact sound rather hollow.

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I/P in Perspective

"The Bush administration could put a real dent in sex trafficking if we were to treat it as firmly as we do, say, pirated movies, and this brazen incident in Cambodia would be a fine place to start." Nicholas D. Kristoff, writing in the New York Times about a raid on the Chai Hour II Hotel that was ordered by Cambodia's top-ranking female police officer. The next day, trafficking tycoons raided a shelter where the girls were taken and the officer was suspended.
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Isyay Igpay Atinlay Eadday?

Even if you can't speak pig latin, John Welch at the TTAB Blog makes you wonder why the U.S. trademark application for UCKFAY in connection with clothing, published for opposition on November 16, 2004, isn't at least as "immoral or scandalous" as the one for A**HOLE. "The same applicant owns 32 other pending applications for what might loosely be called a 'family' of pig-Latin marks," he writes. "Included are more marks in the UCKFAY mold: ITCHBAY, UCKSAY, ODAY EMAY (that's a tricky one), ARDHAY, ICKLAY, ICKDAY, and EXSAY. Some of the marks are rather innocuous (OOLCAY, UPIDSTAY, UMBDAY), some rather amusing (IGPAY, ATINLAY)."

Perhaps the USPTO just needs more "bi-lingual" Examining Attorneys to enforce this portion of the Trademark Manual of Examining Procedures:

While foreign words are generally translated into English for trademark comparison purposes under the doctrine of foreign equivalents, works from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English. The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent. Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead.

After all, if you believe that some marks are just too scandalous for registration, then how hard can it be to convince yourself that pig latin is really just a dead language?
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KIPO Sees Application Spike; Lots of Multi-Functional Shoes

According to a January 25, 2005 press release from the Korean Intellectual Property Office, the number of patent applications (excluding utility model, design and trademark) filed in Korea last year was 140,176, a 17.4% increase from 2003. The previous rate of increase in patent applications has been only 2~3% yearly since 2000. It is thought that the reason for the increase was caused by the increase in R&D investments of companies.

An earlier press release by the KIPO also noted that "Patent applications for multi-functional shoes are increasing, with the growing interest in health and safety. On January 13, the total number of patent and utility model applications for multi-functional shoes filed with KIPO from 1994 to 2003 is 363 cases: 36 cases in 2000, 62 cases in 2001, 77 cases in 2002, 81 cases in 2003. As for the type of shoes, applications for 'fatigue relief shoes with finger pressure, massage and fomenting functions' were 167 cases (46.0%), followed by 66 applications for 'temperature controlling shoes with an embedded thermostat'. There were 53 applications (14.6%) for shoes that increase amounts of exercise by heightening or shortening heels. Length controllable shoes and shoes with wireless transmission function for preventing missing children have been introduced as well."

The KIPO also said on January 10 that "typefaces are to have exclusive rights under ‘Design protection law (previous design law)’ from July 2005; the law was announced the end of last year."
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Brunei Seeks Exchange of IP Expertise

According to a January 28, 2005 article from, "Brunei has sought assistance from the United States in understanding and implementing the Intellectual Property Rights Protection (IPRP), which is crucial in attracting foreign direct investment. The Sultanate is also looking up to the US in capacity-building towards implementing the Container Security Initiative (CSI), which makes it mandatory for containers to undergo screening before entering US markets. On the Intellectual Property Rights Protection, the exchange of expertise in this area was proposed as Brunei is still a new player in this area as compared to the US."

Please tell the Sultan that my firm is available at his convenience.
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Archived updates for Friday, January 28, 2005

TGIF for Birthday Card Patents

This patented card brings new meaning to the happy birthday song finale ". . . and many more"

ABSTRACT: "A greeting card is formed to have a pocket for receiving a test kit therein. In one embodiment of the present invention, the greeting card is a fiftieth birthday greeting card and the test kit is a fecal occult blood test kit. The pocket is formed to have a cutout portion for facilitating removal of the kit, and the text and graphics of the greeting card refer to and correspond to the type of kit contained in the pocket. In the example given, competent health authorities recommend use of fecal occult blood test kits annually beginning at age fifty."

CLAIM 5: "An article of manufacture comprising: an occasion greeting card with a pocket formed therein and a cutout portion formed in said pocket, said greeting card containing text and graphics; a kit carried within said pocket, said pocket dimensioned to receive said kit, said kit carrying health information, said text and said graphics corresponding to said occasion, said kit being a device for collecting samples of body fluids for testing."

CLAIM 7: "The article as recited in claim 5, wherein said greeting card is a fiftieth birthday greeting card."

Thank Goodness It's Friday,

--Bill Heinze (born January 27, 1961)
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Paranoia in the Patent World?

According to a January 27, 2005 posting by Intellectual Property Watch, "sources from some developing countries and consumer groups have raised concerns that [next week's closed meeting on patent harmonization at the USPTO, expected to include only the United States, the European Union, Japan, Canada, and Australia] is being held in part to threaten the Geneva-based U.N. World Intellectual Property Organization (WIPO) and certain large developing countries that have pushed for a development agenda within WIPO."

"This exploratory meeting will be an important step in getting substantive patent law harmonisation back on track," USPTO undersecretary and director Jon Dudas said in a statement earlier this month announcing the meetings scheduled for February 3 -4, 2005. "Harmonisation promises to bring substantial benefits such as consistent patent examination standards throughout the world, reduced patent office workloads and higher patent quality. The sooner we can agree on a basic framework, the sooner we can begin providing these benefits to all patents stakeholders – patent applicants, patent offices and the public alike."
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U.S. Copyright Office Investigating Orphan Works

The Copyright Office has requested written comments from all interested parties by March 25, 2005 on whether there are compelling concerns raised by orphan works -- works whose owners are difficult or even impossible to locate -- that merit a legislative, regulatory, or other solution, and if so, what type of solution could effectively address these concerns without conflicting with the legitimate interests of authors and right holders. Through a review of public submissions, the Copyright Office intends to determine the scope of the problem, evaluate appropriate next steps and create a record from which specific legislative proposals, if appropriate, could be considered and developed.

To that end, the official notice lists several sets of questions, organized by issue, in an effort to begin gathering relevant information. Commenters do not need to respond to all questions, but are encouraged to respond to those as to which they have particular knowledge or information. Commenters may also frame additional questions or reframe any of the issues, which are reproduced below.
  1. Nature of the Problems Faced by Subsequent Creators and Users
  2. Nature of “Orphan works�: Identification and Designation
  3. Nature of “Orphan Works�: Age
  4. Nature of “Orphan Works�: Publication Status
  5. Effect of a Work Being Designated “Orphaned�
  6. International Implications
Comments are due by 5:00 p.m. EST onMarch 25, 2005. Click here for detailed information on submission requirements and further information.

Click here for a "Video about the U.S. Copyright Office."
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U.S. Trademark File Wrappers Now On-Line

The United States Patent and Trademark Office (USPTO) is pleased to present TDR - Trademark Document Retrieval. Through TDR, you can view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations.

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.
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Archived updates for Thursday, January 27, 2005

USPTO Annual Report Highlights

Here are a few highlights from the "United States Patent and Trademark Office Performance and Accountability Report Fiscal Year 2004:"

Patent Allowance Error Rates Were Up:

"While the USPTO fell short of its FY 2004 quality target, much of this is due to the intense focus on quality and the significant implementation of all the quality initiatives. The implemented quality initiatives are expected to produce long-term quality improvements as the knowledge, skills, and abilities of our employees are upgraded, helping us to achieve our quality goal."

Patent First Action Pendency Was Up:

"Target met. The initiatives identified in the USPTO 21st Century Strategic Plan will continue to reduce patent pendency, substantially cut the size of the work backlog, and recover our investments in people, processes, and technology."

Total Patent Pendancy Was Up:

"Target met. The initiatives identified in the USPTO 21st Century Strategic Plan will, over several years, reduce total patent pendency."

Trademark First Action Pendancy Was Up:

"Target not met. Although the trademark organization fully met and exceeded production output targets, new application filings drove first action pendency above target. New application filings were 11.7% above the prior year and 9.7% above target. Process changes introduced in the fourth quarter further contributed to the increase in first action pendency results. Current plans, assuming sufficient funding, are to hire additional examiners in FY 2005 to address the increase in filings which will improve first action pendency."

Total Trademark Pendancy Was Stable:

"Target met. Production and office disposals were above plan, which reduced disposal and registration pendency."

During fiscal year 2004, the USPTO granted 187,170 patents, including 169,296 utility (inventions), 16,533 design, and 998 plant patents. U.S. resident inventors received 97,913 U.S. patents in fiscal year 2004. California resident inventors received the highest share (23 percent, 22,389 patents) of these patents, followed by inventors from New York (7 percent, 6,788 patents), Texas (7 percent, 6,424 patents), Michigan (4 percent, 4,260 patents), and Massachusetts (4 percent, 4,109 patents).

The USPTO registered 155,991 trademarks and renewed 34,735 registrations in fiscal year 2004. At the end of the fiscal year, there were 1,216,691 active trademark registrations.

"A strong economy, a vibrant economy, depends directly on effective protection of new ideas and investments in innovation and creativity," said Under Secretary of Commerce for Intellectual Property Jon Dudas, in a press release accompanying the report. "The continuing demand for patents and trademarks underscores the ingenuity of American inventors and entrepreneurs."
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U.S. Copyright Office Reengineering Certificate Form

The U.S. Copyright Office wants you to know that staring February 14, 2005 it is changing the format of copyright registration certificates for motion pictures and other audiovisual works registered on Form PA. The change is as part of a pilot project to test reengineered business processes. The substantive content of all certificates will remain the same.

Click here for a sample of the new certificate.
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EPO Demand Prices Up 32% in Dollar Terms

Although EPO Demand prices in Euros have not changed since January 2003, U.S. applicants have seen a 32% increase due to exchange rate fluctuations, reports John Hornickel in his "January Happenings in PCT Issues of AIPLA"message. He has also asked the USPTO why all National Stage entries cost $1000, regardless of who searched, who examined preliminarily, and how that examination went. He was told that the answer would come when the Final Rules are published.
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Over Two Hundred Million Music Tracks Downloaded in 2004

The International Federation of the Phonographic Industry (IFPI) is reporting that
  • Record companies have digitised and licensed over a million songs. In 2004 the available catalogue on the biggest online services doubled from around 500,000 to around one million tracks
  • The number of online services where consumers can buy music has increased four-fold to more than 230 worldwide – and over 150 of those are in Europe
  • Services like iTunes and Napster have become household names internationally – but local repertoire services in many countries are also developing fast
  • The digital download market is growing geometrically – in 2004 downloaded tracks
    rose more than ten-fold to over 200 million in the US, UK and Germany combined
  • Record companies have seen their first year of significant revenues from digital sales – from practically zero to several hundred million dollars. Jupiter thinks this will double in 2005.
  • Digital sales could rise to as much as 25% of total sales in five years, according to some record companies and third party analysts
  • Consumer attitudes are changing – the latest IFPI European survey shows increasing awareness of, use of, and intentions to use, legal download services
Also according to the report, the aim of the record industry’s educational and anti-piracy actions is to help create "a breathing space for the burgeoning online music market, to raise awareness, change attitudes and contain illegal file-sharing." They even include a clever quip from Steve Jobs:
"iTunes really competes with piracy, not with the other services. Piracy is the
big enemy. Buying music online legally is good karma."

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CNet News on "The Draw of Massive Copyright Infringement"

"While P2P technology unquestionably can be employed for a variety of legitimate purposes without giving rise to rampant copyright infringement, the record...suggests that (the file-swapping software companies) have built their particular P2P networks around the 'draw' of massive copyright infringement," the solicitor general's brief to the Supreme Court in MGM v. Grokster reportedly said. They "cannot evade liability...merely by pointing to other, legitimate uses of the technology."

"The Sgt. Schultz defense for Grokster doesn't work," added RIAA Chief Executive Mitch Bainwol at a press conference on Tuesday. "'See nothing, hear nothing,' doesn't apply."

The draw of potentially influencing the Supreme Court also reportedly led the Christian Coalition, the Concerned Women for America, Morality in Media and others, to write that the lower-court decision relieving file-swapping companies of legal liability could lead to a "proliferation of anonymous, decentralized, unfiltered and untraceable peer-to-peer networks that facilitate crimes against children and that frustrate law enforcement efforts to detect and investigate these crimes."

Yet another group of Internet companies (including CNET Networks, publisher of where these quotes appeared on January 26, 2005) reportedly wrote that they did not approve of copyright infringement on the file-swapping networks but asked the court to retain the Sony decision because it had led to considerable technological innovation over the years.

The massive MGM v. Grokster briefs themselves are available here, via the IP News Blog.
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Sun Tops IBM with Release of 1670 Patents

“Unlike a lot of companies using open source to dispose of end-of-life code, we have taken Solaris 10, the hottest OS on the planet with the latest and greatest features, and committed that to [open source],� said Sun Chairman and CEO Scott McNealy referring to his company's Solaris source code and 1670 patents being made available under Sun’s Common Development and Distribution License (CDDL), which has been approved by the Open Source Initiative. The company will continue to offer the commercial version of Solaris with services and support to meet the needs of enterprise customers, Sun officials also said.
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Copyright Mythbusters Wanted

In "The Poor Man's Copyright, or, why 37 cents won't get you the same protection as the Copyright Office," the I/P News Blog discusses a website which offers to protect your intellectual property rights, all for the extrodinary price of $3. The company in question, World-Wide OCR, merely took an old idea, dubbed a "Poor Man's Copyright," and added encryption and data storage to the mix. What it doesn't do, is adequately protect your work.

The IP News Blog wants you to become a copyright mythbuster. Anyone having similarly curious copyright issues that need some debunking should send them along to

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The Music Plagiarism Project

The stated purpose of the Music Plagiarism Project is "to capitalize on the distributed nature of digital information systems to collect, organize and distribute graphic and audio materials associated with music copyright infringement cases in the United States from the middle of the nineteenth century on." The believe that for cases over twenty-five years old, this information is especially difficult to obtain and has never before been systematically collected or published in print or electronic format. Their goal is to accumulate and publish a complete collection of music copyright infringement opinions, comments about the musical works they consider, and graphic and sound files of relevant portions of these works.
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Archived updates for Wednesday, January 26, 2005

Nanotech Public Science Initiative Figures

According to a January 25, 2005 press release from Lux Research, U.S. states poured more than $400 million into nanotechnology research, facilities, and business incubation programs in 2004 -- on top of greater than $1 billion in federal government spending -- making nanotech the largest publicly-funded science initiative since the space race.

"Multiple stakeholders -- including state and local officials, federal representatives, large corporations, start-ups, investors, and universities -- have a vested interest in making nanotechnology efforts succeed," "Biotechnology created more than 400,000 jobs from 1979 to 1999," said Lux Research Managing Director F. Mark Modzelewski. "Nanotechnology promises a far greater economic impact because it can affect not just biologically derived products, but all manufactured goods. Also, it's not just new jobs that are at risk from nanotech; existing ones in industries impacted by nanoscale science are on the line as well."
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McCarthy on Comparative Dilution

No part of trademark law that has created so much doctrinal puzzlement and judicial incomprehension as the concept of dilution as a form of intrusion on a trademark. It is a daunting pedagogical challenge to explain even the basic theoretical concept of dilution to students, attorneys and judges. Few can successfully explain it without encountering stares of incomprehension or worse, nods of understanding which mask and conceal bewilderment and misinterpretation.

With the advent of the 1988 E.U. Trademark Directive and a growing body of interpretive European Court of Justice (ECJ) case law, it is much easier than in the past to make a comparison of E.U. and U.S. trademark law, including anti-dilution law. While the anti-dilution provisions of Articles 4(4)(a) and 5(2) of the E.U. Directive are optional, in fact, every pre-2004 E.U. nation has adopted them in its domestic law. In the United States, since the enactment of the 1996 federal anti-dilution Act, in theory there is a uniform law consistent throughout the nation.

Click here for more from J. Thomas McCarthy, Senior Professor of Law at University of San Francisco, Founding Director of the McCarthy Institute of Intellectual Property and Technology Law, as well as the author of McCarthy on Trademarks & Unfair Competition.
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WHO Endorses Compulsory Licensing of Anti-Flu Patents reported on January 25, 2005 that "The World Health Organisation yesterday agreed a compromise resolution designed to allow countries to override patents in efforts to tackle a future flu pandemic while limiting the risk to intellectual property rights." This news follows from an earlier report from the that "A session of the 32-nation WHO executive board was bogged down on the issue of whether countries hit by an epidemic could override patents on anti-flu drugs, and the meeting was halted to let delegates call their governments for guidance."

On January 21, 2005, the WHO reported that "laboratory results have confirmed avian influenza infection (H5 virus subtype) in two brothers in the northern part of Viet Nam." There have been nine reported deaths from avian flu in Vietnam during the last three weeks. Scientists monitoring the disease have also reported the first case of avian flu passing from person to person.

Proper cooking destroys the H5N1 virus. In general, the WHO recommends that poultry should be cooked until all parts reach an internal temperature of 70oC. No cases of H5N1 infection have been linked to the consumption of thoroughly cooked poultry and egg products. Click here for "Basic Information About Avian Influenza (Bird Flu)" from the U.S. Center for Disease Control.
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Archived updates for Tuesday, January 25, 2005

EU Software Patentability Directive Stalls Yet Again reported on January 24, 2005, that although ministers had been set to approve the EU "Computer Implemented Inventions Directive" at a Brussels meeting on Monday, the legislation failed to make it as an "A-point" on the agenda of a council of agriculture ministers after continued opposition from Poland. MEPs on the parliament’s legal affairs committee will reportedly meet next week to decide whether to restart the legislative process.
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Five Things to Know About Patents

Stephen Nipper thinks every corporate counsel should know at least these five things about patents, via

  1. What is patentable
  2. Who can be an inventor
  3. Who owns the patent
  4. What can we find out about competitors ptents and patent applications
  5. What is the impact of my company's expansion on our patent portfolio
He should know; he also writes The Invent Blog.
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Another USPTO On-Line Inventors Chat Today

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 next Tuesday, January 25, 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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According to their website,, provides you with "the exposure to promote your invention (patent or patent pending). The service is provided for FREE and on a NON-EXCLUSIVE basis.Potential buyers of technology are able to browse the entire catalog and to contact the right holders if they are interested in a specific technology." Here are their most viewed patents, starting price, current price, and closing date:

1. Hand Tools Free Hands (101 views)
450000.00 $
2005-07-13 20:00:00
2. Tool grinding machine for railway hand cars (92 views)
1000.00 $
1050.00 $
2005-06-12 16:00:00
3. Foodstuff Collating System and Method (45 views)
To be negotiated
2005-07-16 23:00:00
4. GOLF PUTTER HEAD (41 views)
20000.00 $
20000.00 $
2005-07-21 15:00:00
5. Wine conservation (25 views)
To be negotiated
2005-06-12 16:00:00
6. Fence Sprinkler System (24 views)
250000.00 $
250000.00 $
2005-01-30 08:00:00
7. FoodstuffCollating System and Method (21 views)
To be negotiated
2005-07-16 23:00:00

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Making "Free" Work for I/P

According to a January 20, 2004 artricle by Linda Seebach in Online Journalism Review, the Creative Commons' copyright protections are perfect for digital age pioneers looking for new ways to distribute their creative work:

In addition to asking, "What would people buy if we offered it for sale?" the
owners of intellectual property should also ask, "What could we give away that
would increase sales of what we sell?"
She goes on to describe a few folks who have figured how to sell people what they want to buy in a way that is "much more public-spirited, and ultimately more profitable as well."

Has she been reading I/P Updates?
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Archived updates for Monday, January 24, 2005

Today is Most Depressing

According to Dr Cliff Arnalls at Cardiff University via Cordis Express (a weekly briefing on what's new in European research and innovation), bad weather, debts, fading seasonal cheer, a lack of motivation and failed resolutions all conspire to give us the blues. His formula for the day of misery reads
1/8W+(D-d) 3/8xTQ MxNA
where W is weather, D is debt, d is money due on January's payday, T is the time since Christmas, Q is the period since the failure to quit a bad habit, M stands for general motivational levels, and NA is the need to take action and do something about it.
The result reveals that January 24 is the most depressing day, coincidentally a Monday for 2005.

According to doctors, one of the best ways to beat the winter blues is to get plenty of exercise. As far as CORDIS Express is concerned, however, "the only way of making the most depressing day of the year any worse would be by adding jogging into the equation."
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Peruvian Potato Know-How Not Patentable

Peruvian Purple Potato and "Potatisplockning" by Carl Larsson

According to the January 21, 2005 issue of Bridges TradeBioRes, six indigenous communities from Peru reached "a ground breaking agreement" with the Lima-based International Potato Center over the native potato strains and associated traditional knowledge. The agreement requires signatories to ensure that the genetic resources and knowledge remain in the custody of the communities and "not become subject to intellectual property rights" in any form. "These indigenous people are against patents," said Alejandro Argumedo from the Association for Nature and Sustainable Development which helped to broker the deal. "Patents represent a model of property that does not fit into their worldview."

IPC scientists and local farmers will also work to "repatriate" potato varieties from the Center's collection of specimens, and conserve them in a "potato park" that produces about 700 varieties of potato. "Potatoes are important for us as food but also as a cultural symbol,� Argumedo also said. �We have co-evolved with potatoes. Peru gave the potato to the world, they are so important in marriage and religious ceremonies. They mean so much in Andean culture and iconography that goes back thousands of years." In fact, some see a niche market for history's most important vegetable as Peru's best path out of poverty.

Click here for a different worldview from "Global Potato News."
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Google Loses Another Keyword Lawsuit in France

According to a January 20, 205 report from CNet News, a French court has ruled that Google must refrain from using the trademarks of European resort chain Le Meridien Hotels and Resorts to trigger keyword ads. Another French court ordered Google to cease a similar practice involving Louis Vuitton's marks. In December, a judge in Virginia ruled Google's use of Geico trademarks to trigger ads did not constitute trademark infringement.
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Taiwan Moves Off USTR's Priority Watch List

On January 18, 2005, U.S. Trade Representative Robert B. Zoellick announced the results of USTR's Intellectual Property Rights (IPR) Out-of-Cycle Reviews (OCRs) of Poland and Taiwan. As a result of the findings, Poland will remain on the Watch List, and Taiwan will be moved from the Priority Watch List to the Watch List due to the progress it has achieved.

In the 2004 "Special 301 Report" released on May 3, 2004, fifteen trading partners, including Taiwan, were placed on the Priority Watch List and thirty four trading partners, including Poland, were placed on the Watch List. The Report highlighted a series of continued concerns regarding the lack of adequate protection and enforcement of intellectual property in Poland and Taiwan.

The Trade Act of 1974 requires the Office of the US Trade Representative to identify annually those countries that deny adequate and effective protection for IPR or deny fair and equitable market access for persons that rely on intellectual property protection. Countries are placed into a hierarchy of categories, with the ranking of Priority Foreign Country reserved for the worst situations: (1) Priority Foreign Country; (2) Section 306 monitoring; (3) Priority Watch List; or (4) Watch List.

In the most serious cases, countries identified as Priority Foreign Countries can be subjected to a Section 301 investigation and face the possible threat of trade sanctions. These are countries that fail to enter into good faith negotiations or make significant progress in bilateral or multilateral negotiations to provide adequate and effective protection of IPR. Currently, one country (Ukraine) is designated to be in this category and remains subject to $75 million in sanctions. Countries that were previously designated a Priority Foreign Country but entered into good-faith negotiations and/or are making progress are placed under Section 306 monitoring; currently the People's Republic of China and Paraguay fall into this category.

Placement of a trading partner on the Priority Watch List or Watch List indicates that particular problems exist in that country with respect to IPR protection, enforcement, or market access for persons relying on intellectual property. Although the Special 301 review occurs annually each April, out-of-cycle reviews may be conducted at any time to evaluate changes and developments in particular countries.
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Making Patent Laws Work for Traditional Knowledge

In one of the new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," Coenraad J. Visser writes with regard to patents in "Making Intellectual Property Laws Work for Traditional Knowledge" that:

  1. Countries should use the (optional) morality requirement in the TRIPS Agreement to refuse the registration of a patent where the invention to which the application relates has special cultural or spiritual significance for indigenous or local communities, or where the application is likely to be considered culturally offensive to such communities.

  2. Patent statutes should provide that where an applicant for the revocation of a patent for lack of prior informed consent can prove that the invention uses or derives from a genetic resource found within its territory, or from traditional ecological knowledge held by a local or indigenous community in it, it is presumed that the patentee has taken such resource or knowledge without the prior informed consent of the relevant indigenous or local community. Also, instead of revocation, patent statutes can allow the transfer of the patent to the successful applicant, effective from the filing date of the patent application.

  3. Patent statutes should state that prior use by a local community of an invention that utilizes such community’s traditional technical knowledge does not anticipate (or destroy the novelty of) such invention.
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Overprotection of Traditional Knowledge Can Be Detrimental

In one of the new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," Daniel Wüger concludes that there is no single feasible, legal way to alleviate concerns about the misappropriation of intangible cultural heritage. Developing countries that consider using legal means to protect their intangible cultural heritage should carefully evaluate their needs before deciding what legislative action they want to take:

Careful drafting of IP laws can prevent many problems from developing. In addition, sui generis protective systems are available to provide more comprehensive protection and protection adapted to the specific needs of a country. However, legislators have to be aware of the fact that "overprotection" can be detrimental to other cultural, social, or economic interests. IPRs should not be understood as a fixed set of rules, but merely as a toolbox from which the adequate tools can be chosen and combined. Finally, cultural disintegration is also about social and economic opportunities. An intangible cultural asset will be preserved only if the lifestyle embodying these assets provides valuable economic prospects. Eventually, commercialization of certain aspects of intangible cultural property can contribute to the preservation of cultural heritage as a whole. IP laws can contribute such opportunities in a limited way, but countries have to consider a holistic approach that combines prohibitive action with support initiatives. Capacity building and promoting understanding on IP issues, especially within indigenous and local communities, have to be a further important component of that policy.

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Canadian Government Chimes-In on BlackBerry Patent Dispute

In an unusual "friend of the court" brief filed with the Federal Circuit last week, the Canadian Government asked the court to reconsider its decision that Ontario-based RIM is infringing NTP's patents. The Canadian government felt the holding was "a bit off base" when it reportedly contacted RIM's attorney Henry Bunsow. He says that they voiced concern that RIM's system "is partially located in Canada, and U.S. patents shouldn't reach there." Click here for more from The Recorder via

The Globe and Mail is reporting that the five-page brief states that "Canada is especially concerned that the uncertainty resulting from the panel's decision, with its potential for being applied in an inappropriately extraterritorial or discriminatory fashion, may have the further troubling effect of chilling innovation by Canadian companies operating in key industry sectors in Canada, particularly the high-technology sector." The also quote André Lemay, a deputy director of the of the Department of International Trade, as saying "This is something that we take very seriously. So in so doing we decided that this is definitely a case where we could prepare an amicus curia brief." Click here for more from the Globe and Mail.

"We're concerned about the potential implications the decision could have on cross-border electronic, e-commerce and telecommunications services . . . essentially we're seeking clarification," Mr. Lemay reportedly told Reuters. "This potential extraterritorial application of U.S. law makes it very difficult for Canada to just stand on the sidelines."
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Archived updates for Friday, January 21, 2005

TGIF for I/P iTunes

Need some I/P tunes to get your motor running for the weekend? The check out PHOSITA's Celebrity iTunes PlayList, and

Thank Goodness It's Friday,

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Free, Independent, and Non-Profit Access to Worldwide Law

The World Legal Information Institute (WorldLII) is a free, independent and non-profit global legal research facility developed collaboratively by the following Legal Information Institutes and other organisations.

Australasian Legal Information Institute (AustLII)
British and Irish Legal Information Institute (BAILII)
Canadian Legal Information Institute (CanLII)
Hong Kong Legal Information Institute (HKLII)
Legal Information Institute (Cornell) (LII (Cornell))
Pacific Islands Legal Information Institute (PacLII)
Wits University School of Law (Wits Law School)
Over 270 databases from 48 jurisdictions in 20 countries are included in the initial release of WorldLII. Databases of case-law, legislation, treaties, law reform reports, law journals, and other materials include
Europe International


Case Law Law


Legislation Treaties

Domain Name Decisions
International Decisions
Law Journals



Project DIAL
The WorldLII Catalog provides links to over 15,000 law-related web sites in every country in the world. WorldLII's Websearch makes searchable the full text of as many of these sites as WorldLII's web-spider can reach.
Courts & Cases
International Law Journals

Legislation Treaties
For further details, see the WorldLII brochure.
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According to a January 1, 2005 report from, via Be Spacific,
The Office of Management and Budget is working with an interagency project office to launch the new and improved Web site. For the first time, citizens will be able not only to comment on proposed regulations using the Internet - as they do now on the site - but also will have access to supporting agency documents, every public comment and rules that are already in place.
The website is "the central online rulemaking portal of the United States government." It enables you to search, view, and comment on proposed Federal regulations from approximately 160 Federal Departments and Agencies through a single Web site. Each entry provides a quick link to a comment form so that visitors can type in their comments and submit them to the appropriate Department or Agency. The consolidated site enables visitors to easily move from one regulation to the next. "By providing electronic access to open rulemaking actions, gives citizens a greater opportunity to provide their views."

Regulations for which comments are due today are listed here.
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Archived updates for Thursday, January 20, 2005

U.S. Trademark E-Filing Fees Drop on January 31

Effective January 31, 2005, the United States Patent and Trademark Office (Office) is amending its rules of practice to adjust the fee for filing a trademark application for registration based on whether the application is filed on paper or electronically using the Trademark Electronic Application System (TEAS). Trademark applications that are filed on paper will cost $375.00 for each class of goods or services, and trademark application filed through TEAS will cost $325.00 for each class of goods or services.

The Office is also revising 37 CFR § 2.87(b) to provide that where a new separate application is created from a request to divide out some, but not all, of the goods or services in a class, the applicant must pay the fee for dividing the application and the applicable application filing fee as set forth in § 2.6(a)(1). Currently division requests can only be filed on paper, so the applicable filing fee will be $375.00 per class. However, in the future it will be possible to file a request to divide through TEAS, and at that point, if the request to divide is filed through TEAS, the TEAS application filing fee will apply.

Click here for current USPTO fee information.
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No Obviousness without Motivation to Combine References

U.S. Patent No. 5,589,984

1. A mirror assembly, comprising:

(a) a mirror lens having a reflective outer surface and a non-reflective rear surface, the mirror lens comprising a mirror body which terminates in an oval perimetral edge, the edge surrounds the reflective surface and the non-reflective surface of the
mirror lens, the mirror body being a substantially convex ellipsoid
having a major axis and a minor axis which intersects with the major axis, the major axis having a varying radius of curvature
, which radius
decreases from the intersection with the minor axis to the perimetral edge.

In Rosco v. Mirror Lite (Fed. Cir. January 19, 2005; not citable as precedent), Rosco alleged that various prior art oval mirrors with a constant radius of curvature in combination with any number of non-oval prior art mirrors having a decreasing radius of curvature rendered claims 1, 2, 3, 6, 7, and 8 of the ’984 patent obvious. However, Rosco pointed to no specific evidence of motivation to combine. The Federal Circuit concluded that

In the absence of such evidence, Rosco has not carried its burden of establishing obviousness by clear and convincing evidence. . . . The decision of the district court is reversed and the case is remanded for further proceedings solely on the issue of infringement, the determination of which should be made on the existing trial record.
Good Luck with the Request for Reexamination, Rosco . . . .
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Technology Law Journals with RSS Feeds

from the Washington & Lee Law School Library, via Lawsites:

"Technology, Law and Insurance"

Law Report"

& Communications Technology Law"

"International Journal of Law and Information Technology"

Review of Law, Computers & Technology"

"Technology, Law and Insurance"

Create a feed for your journal here.

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Drug Exclusivities Administered by FDA

Click here for the PowerPoint presentation materials by Paul Braier of Greenblum & Bernstein, PLC discussed on January 19, 2005 for his roundtable on "Drug Exclusivities Administered by FDA."
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University Technology Licensing Survey

On November 30, 2004, the Association of University Technology Managers® announced the release of the summary report of the AUTM Licensing Survey: FY 2003. Now in its 13th year of publication, the AUTM Licensing SurveyTM is the most comprehensive report of its kind, providing quantitative information about licensing activities at U.S. and Canadian universities, hospitals and research institutions. A record number of institutions — 236 — contributed data for the 2003 survey, which for the first time is presented in two separate reports, one for U.S. institutions and one for Canadian. In overview, U.S. data from fiscal year 2003 shows:
  • U.S. establishments continue to experience increased investment in areas such as research funding, up 10.1 percent compared with fiscal year 2002; and staffing levels, up 8.2 percent to an average 4.2 licensing FTEs per office.
  • In fiscal year 2003, U.S. offices also experienced growth in invention disclosures, up 7.7 percent; patent applications, up 8.2 percent; and license income, up 5.5 percent since 2002.
  • These results indicate slower growth than in past years, perhaps caused by difficult economic conditions or the maturing of the technology transfer field. These factors also may contribute to a decrease in the rate of new startups formed, down 6.7 percent since fiscal year 2002.

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Federal R&D Prior Art Database

"Federal R&D Project Summaries" provides a portal to information about Federal research projects, complete with full-text single-query searching across databases residing at different agencies. According to their website, "The public may use this tool to stay better informed as to how its investment in research and development is being utilized. It also provides a unique window to the Federal research community, allowing agencies to better understand the research and development efforts of their counterparts in government. "
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Copyright Office Issues New Document Cover Sheet

The U.S. Copyright Office wants you to know that it has made changes on its Document Cover Sheet. The instructions for Space 7 now say, "The date entered in the DATE field should be the date you sign the Cover Sheet." In addition, the spaces for a signature and date in Space 7 have been realigned. This new version of the Document Cover Sheet, which is also page 10 of Circular 12, on "Recordation of Transfers" is available here.
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Limiting Patent Litigation Discovery

"Techniques for Limiting Discovery in US Patent Litigation" presents the following tools for limiting discovery during patent litigation in the U.S.:
  • Time Cut-Offs
  • Attorney-Client Privilege Claims
  • Work Product Immunity Claims
  • Aggressive Document Retention Policies
  • Aggresive Discovery Objections
  • Bifurcation of Liability and Damages
  • Joint Defense Agreements
  • Protective Orders
  • Cost-Sharing Orders
  • Proper Forum Selection
  • Thorough Initial Document Searches to Avoid Follow-Up Searches
  • Avoiding Third-Party Requests

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Archived updates for Wednesday, January 19, 2005

Get Your I/P Updates via E-Mail with "ERA"

The "ERA" Email RSS Aggregator is a free, centralised RSS aggregator which automatically emails updated content to subscribers. Once you have a free ERA account, you can subscribe to any RSS feed. ERA will then monitor those feeds and email you with any changes. It's still in its infancy, and undergoing testing. However, there's an email interface working now.

To use the ERA email interface, send an email to containing one of the following commands. You can send more than one command in each email, but each command needs to be on its own line and ERA won't respond unless it gets a valid command. ERA identifies you by your email address, so you always need to send commands from the same email address. ERA also likes plain text emails; HTML emails and other formatted emails might not work properly. For most commands, ERA will then send you an ID number, which you send back to confirm the commands so that someone else can't impersonate you.

The ERA Email Interface Commands
(Note: the stuff in brackets should be replaced by real URLs, usernames, etc. The brackets themselves shouldn't be in commands.)

  • account [username]
    Creates a new ERA account where
    [username] is the username for your account that will be used once the web interface is functional

  • subscribe [url] [hour, hour, ...]
    Subscribes to an RSS feed where
    [url] is the Uniform Resource Locator of the feed you want to subscribe to, and

    [hour] is the list of hour(s) between 0 and 23 when you want to be emailed. If you don't specify any hours, you'll get mailed every hour.

    For example, after establisng an account (see above) the following command will cause you to receive daily I/P Updates at 6:00 am and 6:00 pm GMT:

    subscribe 6, 18
    To alter your subscription times, just send another subscription request with the new times - these will over-write your old times.

  • list
    Returns an e-mail message with a list of feeds that you're subscribed to (no confirmation required)

  • help
    Returns an e-mail message with descriptions of these commands (no confirmation required)

Here is a sample of today's ERA on I/P Updates, best viewed with your browser encoding set to Unicode (UTF-8):

Subject: I/P Updates (07:00-06:00)
To: William F. Heinze
From: era
Date: Wed, 19 Jan 2005 06:22:32 +0000 (GMT)


Where in the World is WIPO's Newest Member?

Union des Comores - Udzima wa Komori - الاتحاد القمر

On January 3, 2005, the Director General of the World Intellectual Property Organization (WIPO) presented his compliments to the Minister for Foreign Affairs and had the honor to notify him of the deposit by the Government of the Union of the Comoros of its instrument of accession to the Convention Establishing the World Intellectual

First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00


The Economic Development Dimensions of IP

In "Intellectual Property Research and Development Lessons from Recent Economic Research," editors Carsten Fink and Keith E. Maskus conclude that developing countries should carefully assess whether the economic benefits of additional rules
for the protection of IPRs outweigh their costs. In their view, these costs encompass both the net fiscal expenditure of financing relevant government agencies

First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00


Off Patent, Open Source Model for Curing Tropical Disease

According to a January 16, 2005 article from Science Daily, Stephen Maurer, Arti Rai, and Andrej Sali have developed an open source model for curing tropical diseases called the "Tropical Disease Initiative." "As with current software collaborations, we propose a website where volunteers could search and annotate shared databases. Individual pages would host tasks such as searching for

First seen: 2005-01-19 00:00:00
Last updated: 2005-01-19 00:00:00

This e-mail was sent by era, the e-mail RSS aggregator, using content from


The content is subject to any copyright restrictions expressed in the file at the above URL.

Comments, queries, and complaints should be sent to <>. More information can be found at <>.

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Where in the World is WIPO's Newest Member?

Union des Comores - Udzima wa Komori - الاتحاد القمر

On January 3, 2005, the Director General of the World Intellectual Property Organization (WIPO) presented his compliments to the Minister for Foreign Affairs and had the honor to notify him of the deposit by the Government of the Union of the Comoros of its instrument of accession to the Convention Establishing the World Intellectual Property Organization.

Comoros is one of the poorest countries in the world, with a gross domestic product of $441 million (2002 est.) that is roughly equal to the yearly budget of WIPO. This small group of islands in the Indian Ocean is perhaps best known for the Coelacanth fish, once thought by western scientists to have been extinct for millions of years.

Over the centuries, the islands were invaded by a succession of diverse groups from the coast of Africa, the Persian Gulf, Indonesia, and Madagascar. Portuguese explorers visited the archipelago in 1505. "Shirazi" Arab migrants introduced Islam at about the same time. Between 1841 and 1912, France established colonial rule over Grande Comore, Anjouan, Mayotte, and Moheli and placed the islands under the administration of the governor general of Madagascar. Later, French settlers, French-owned companies, and wealthy Arab merchants established a plantation-based economy that now uses about one-third of the land for export crops. After World War II, the islands became a French overseas territory and were represented in France's National Assembly.

Internal political autonomy was granted in 1961. Agreement was reached with France in 1973 for Comoros to become independent in 1978. On July 6, 1975, however, the Comorian parliament passed a resolution declaring unilateral independence. The deputies of Mayotte abstained. As a result, the Comorian Government has effective control over only Grande Comore, Anjouan, and Moheli. Mayotte remains under French administration.

The political situation in Comoros has been extremely fluid since the country's independence in 1975, subject to the volatility of coups and political insurrection. Colonel Azali seized power in a bloodless coup in April 1999, overthrowing interim President Tadjiddine Ben Said Massounde, who himself had held the office since the death of democratically elected President Mohamed Taki Abdoulkarim in November 1998. In May 1999, Azali decreed a constitution that gave him both executive and legislative powers. Bowing somewhat to international criticism, Azali appointed a civilian Prime Minister, Bainrifi Tarmidi, in December 1999; however, Azali retained the mantle of head of state and army commander. In December 2000, Azali named a new civilian Prime Minister, Hamada Madi, and formed a new civilian cabinet.

When Azali took power he had pledged to step down in 2000 and relinquish control to a democratically elected president. Instead, in 2001, Azali resigned from the military and ran as a civilian candidate for the national presidency. He was elected in 2002 in flawed but fair elections. General elections were held in 2004, when Azali suffered a major setback by only winning 6 of the 18 seats in the National assembly, the other going to the supporters of the presidents of the semi-autonomous islands.

The Comorians inhabiting Grande Comore, Anjouan, and Moheli (86% of the population) share African-Arab origins. Islam is the dominant religion, and Koranic schools for children reinforce its influence. Although Arab culture is firmly established throughout the archipelago, a substantial minority of the citizens of Mayotte (the Mahorais) are Catholic and have been strongly influenced by French culture. About 57% of the population is literate with latin letters, more with arabian letters.

Although French , Arabic and malagasy are spoken, the most common language is Shikomor, a Swahili dialect. It is a close relative of Swahili with a very strong Arabic influence, and is one of the three official languages, next to French and Arabic. Each island has a slightly different dialect; that of Anjouan is called Shindzuani, that of Mohel Shimwali, that of Maore Shimaore, and that of Grand Comoro Shingadzija. No official alphabet existed in 1992, but Arabic and Latin scripts were both used. It is also the language of Udzima wa ya Masiwa, the national anthem of the moon islands ("al-qamar" is Arabic for "moon").

A Comorian style of Zanzibar's "taarab" music, called "twarab," is popular on the islands. Leading twarab bands include Sambeco and Belle Lumière, as well as star singer Mohammed Hassan. Comorian instruments include the 'ud and violin, the most frequent accompaniment for twarab, as well as gabusi (a type of lute) and ndzendze. Sega music from nearby Mauritius and Réunion islands is also popular. Modern musicians like Abou Chihabi, who composed the Comorian national anthem and is known for his reggae-tinged pan-African variet music, and reggae/zouk/soukous fusionists like Maalesh and Salim Ali Amir.

Click here for a music sample.

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The Economic Development Dimensions of IP

In "Intellectual Property Research and Development Lessons from Recent Economic Research," editors Carsten Fink and Keith E. Maskus conclude that developing countries should carefully assess whether the economic benefits of additional rules for the protection of IPRs outweigh their costs. In their view, these costs encompass both the net fiscal expenditure of financing relevant government agencies and the opportunity cost of employing possibly scarce human capital in the administration of the intellectual property system.

The economic research presented in their book also suggests that there is an important development dimension to the protection of IPRs:

At the same time, in view of the various tradeoffs associated with alternative IPR standards, a "one size fits all" approach is unlikely to work. Developing countries may want to opt for different standards of protection than the ones that prevail in high income countries that have different technological and financial capabilities. Although the current international framework for the protection of intellectual property provides for some degree of harmonization of global IPR standards, TRIPS, in particular, still leaves important room to adjust IPR norms to domestic needs.

“Countries that sharply strengthen their IPR regime are unlikely to experience sudden boosts in inward Foreign Direct Investment,� says Maskus. “They would be better advised to improve overall investment climate and business infrastructure.�

On the other hand, several studies in the book point to a significant development dimension to the protection of intellectual property. Interviews with firm managers in China show the negative effect of weak trademark protection on innovative Chinese enterprises. “Interestingly, there are strong regional disparities in the enforcements of IPRs�, says Maskus, “with the effect that firms are reluctant to expand into China’s poorer regions, where enforcement is comparatively weak.�
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Off Patent, Open Source Model for Curing Tropical Disease

According to a January 16, 2005 article from Science Daily, Stephen Maurer, Arti Rai, and Andrej Sali have developed an open source model for curing tropical diseases called the "Tropical Disease Initiative."

"As with current software collaborations, we propose a website where volunteers
could search and annotate shared databases. Individual pages would host tasks
such as searching for new targets, finding chemicals to attack known targets,
and posting data from related chemistry and biology experiments. Volunteers
could use chat rooms and bulletin boards to announce discoveries and debate
future research directions. Over time, the most dedicated and proficient
volunteers would become leaders."
The key to TDI's success, they argue, is that any discovery would be off patent.
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Archived updates for Tuesday, January 18, 2005

More MEPs Challenge EU Software Directive Process

After a group of 61 MEPs from 13 countries and four political groups pressed last week for restrting the decision-making process on the EU Software directive, the IDG News Service reported on January 18, 2005 that "Forty-two MEPs from the Green/European Free Alliance group have asked that the legal process be restrated over concerns that the directive allows for the patenting of software."

"We need a new start for the software patents directive," Austrian Green MEP Eva Lichtenberger reportedly said. "The situation in Council is so confused that Parliament must again take the issue into its hands."
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IPO Calls for American Inventor of the Year Nominations

The Intellectual Property Owner's Association has issued a "Call for Nominations" for the 32nd annual National Inventor of the Year Award. To be eligible for the award, an invention (1) must have been patented or commercialized in the past four years, (2) must be patented in the U.S, and (3) must have originated in the U.S.

Nominations are invited from all interested persons BY THE DEADLINE OF MARCH 24.
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Experience Mounts with Foreign Outsourcing of Patent Applications

Some corporations, such as General Electric Co., have set up offices in India to handle some of their legal work. Many others are using Indian law firms or technical shops that specialize in patent work. Some of the most prominent outfits include Evalueserve Inc. and IP Pro Inc., which draft patent applications, and Intellevate LLC, which does prior art searches, illustrations and proofreading of issued patents.

Concerned about the quality of foreign-drawn patents and the burden of overseeing shops in other nations, many U.S. companies and law firms are wary of offshore outsourcing. Indeed, one law firm's initial experience was pretty dismal. As discussed in a January 18, 2005 article from "," the two attorneys had to completely rewrite applications they sent to a couple of Indian shops. But they eventually found the right company and trained its non-lawyer employees how to write solid applications. Now, a year later, the firm has filed more than 100 patent applications that were outsourced to India.

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UKPO to Publicize 100-Year-Old Trademark Registrations

The Trade Marks Registry of the UK Patent Office has commissioned special Centenary Certificates that portray original marks that have been registered for 100 years. There is no charge for the certificates and the Trade Marks Registry will contact the rights owners to ask if they would like to use the centenary of their mark to advertise and publicise their company. Trademark owners are also invited to discuss any other related publicity with the UKPO by contacting (Thanks IP Kat)

Click here for a less conventional way to publicize your mark.
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Dissatisfaction All-Around on $6M Settlement for Japanese Blue LED Inventor

You can bet that a settlement is fair when it leaves just about everyone dissatisfied in one way or another --

"I had no choice but to reach a court-arranged settlement. I am furious," said Shuji Nakamura, a professor at University of California at Santa Barbara, at a press conference on Wednesday regarding his settlement with his former employer over Japanese inventors rights to the blue light-emitting diode (LED). After the Tokyo District Court ordered his former employer, Nichia Corp., to pay him 20 billion yen as a reward for his invention, the Tokyo High Court set the settlement amount at some 608 million yen plus interest. "(Judges) proposed an ungrounded amount and told me to sign a settlement. I think that Japan's judicial system is corrupt," reportedly said Mr. Nakamure.

"The profits that Nakamura has generated for the company, I believe, are much higher (than he is set to receive). I have the impression that the court restricted the amount to avoid adversely affecting corporate activities," said Hidetoshi Masunaga, chief lawyer for the plaintiff.

University of Tokyo Professor Emeritus Hajime Nishimura said the settlement represents total defeat for Prof. Nakamura. "I estimate that Prof. Nakamura should receive 7 billion yen for the invention. If the company had agreed to pay 5 billion yen, it could be called a compromise, but the agreement represents a complete loss for the inventor," he said. "If Nakamura had shown an objective basis for calculating the amount of compensation, he would certainly have won the appeal trial. It's really regrettable."

"The reward amounting to 608.57 million yen is too high and we aren't satisfied with it. However, we chose to accept it to quickly settle the dispute with Mr. Nakamura and concentrate on our business activities," Nichia said in a statement. "Researchers interested in their work find pleasures in the fruits. I don't think many researchers gauge their inventions in financial terms."

The Japan Intellectual Property Association, of which about 1,000 companies are members, claims that the amount to be paid to Nakamura through the settlement is still too high. "It's still extraordinarily high as a reward for an invention that an individual made as part of his job working for an organization," said Hideo Doi, secretary-general of the association. "If the figure is taken for granted, it'll cause trouble in the industry."

A blue LED consists of a two-sided crystal such that the "sides" represent an n-type and a p-type semiconductor. The n-type conducts electrons, and the p-type conducts holes, which are the absence of electrons. The electrons flow along in one direction, and the holes in the other. The place in the crystal where the electrons fall into or are injected into the holes is called the junction, and that is where the photons--the particles of light--are emitted.

What Nakamura did was to figure out how to grow the crystal so that it would have the n and p semiconductor structure that would create "quantum wells" for the electrons at the junction. One key thing he did to create the wells was to add indium to the gallium nitride crystal. Without the indium, the gallium nitride crystal produces a higher frequency ultraviolet light, which is not visible. The addition of indium results in lowering the frequency of the emitted photons to visible blue, but the indium also creates the quantum well effect, so that electrons falling into the passing holes first fall into the well and therefore collect en mass before being injected into the holes. That massing in the well creates a more vigorous injection.
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JPO Seeks Copyright Authority for Benrishi

According to a January 17, 2005 srticle in the Daily Yomiuri, the Japanese Patent Office will submit a bill seeking to revise the Patent Attorneys Law to the ordinary Diet session, which opens this month. The proposed legislation would revise the Law to authorize "benrishi" to represent clients in out-of-court disputes over copyrights for music, movies and other works. (Thanks PHOSITA)
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Enhancing Intellectual Property Exports through Fair Trade

In one of the new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," Ron Layton concludes in "Enhancing Intellectual Property Exports through Fair Trade" that IP exports are attractive for increasing export revenue to poor countries because of open markets and better profit margins than for most agricultural or manufacturing options:

The development community needs to embrace the new challenge of uncovering the most effective ways in which to develop IP exports for maximum impact on poverty alleviation. The products exist and can be stimulated. The markets exist. The IP laws, although somewhat disadvantageous to developing countries, are available for enforcement in the developed markets. Fair trade interventions offer the needed model for market access and delivery systems that ensure that revenues from IP exports do alleviate poverty.

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Thinking About Using the USPTO's EFS?

Are you thinking about using U.S. Patent and Trademark Office's patent electronic filing system, or EFS? Then, according to the EFS Useres Resource Page at, "The single most important thing you can do is to join the EFS listserver. This permits you to learn of developments regarding EFS and you can post questions and answers about EFS." (The posts to that list were enough to scare me away from trying it. I just keep asking myself why can't we just use Internet-based PDF forms like those on the trademark side of the operation?)
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Archived updates for Monday, January 17, 2005

Sour Apples?

by Guest Blogger, Chris Guinn

If I told you that a 19-year-old Harvard student is being sued by Apple Computer, Inc., you might think the case has to do with illegal music swapping using Apple's iTunes service. But, you might be surprised to learn that, instead, Apple is suing one of their biggest supporters for generating a little too much buzz about Apple's upcoming products.

The on-line edition of The Harvard Crimson reports that Nicholas M. Ciarelli, who has run the Think Secret web site since he was 13 years old, is apparently a party to a complaint filed by Apple Computer, Inc. in the Superior Court of California, County of Santa Clara last Tuesday. Apparently, Apple previously sent Ciarelli a letter ordering that the Think Secret website stop publishing Apple's trade secrets. For example, Think Secret recently published plans about the newest model to the Macintosh lineup, the Mac mini, more than two weeks before Apple publicly announced (with much fanfare) at the MacWorld Expo on January 11, 2005.

Apple apparently alleges that the Think Secret website includes solictitations for employees, and others under non-disclosure agreements, to anonymously disclose information which Apple considers confidential.

This case touches a number of legal issues, including the misappropriation of trade secrets and the ability for a reporter to keep sources confidential. For attorneys looking to hone their skills in these areas, Ciarelli is apparently still looking for counsel. Or you can just join the debate here.

Contact Chris via
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World Bank Enters the Debate on Traditional Knowledge Protection

Poor people can turn their own knowledge into higher incomes by using modern methods to protect and market it, says a new World Bank study. Until now, the global perspective has been largely defined by the WTO Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS), which protects knowledge overwhelmingly owned by developed countries.

However, a new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," explores the "other side" -- the ground that TRIPS left uncharted -- by highlighting the knowledge that poor people can commercialize. According to the introduction, this book aims to expand the international discourse by:
  • Calling attention to a broader range of knowledge that has commercial potential
    in developing countries.
  • Bringing an economic dimension into the discussion of traditional knowledge, where legal analysis has thus far been at the forefront.
  • Bringing out the incentives for and concerns of poor people--which may be different from those of corporate research, Northern nongovernmental organizations (NGOs), or already successful entertainment stars.
  • Demonstrating that the best answer is sometimes a commercial one, for example, providing musicians basic training in small business management or reform of regulations that burden small businesses, rather than obtaining formal patent or copyright protection.
  • Calling attention to the many income-earning (rather than the income-using) dimensions of culture--to dispel the notion that culture and commerce are necessarily in opposition.
  • Bringing out instances in which more or less standard legal approaches have been effective as an antidote to the general sense of conflict between traditional knowledge and normal legal conceptions so as to identify the problems in which legal innovation—beyond diligent application--is really needed.
  • Imbuing into the discourse a sense of the legal and commercial tasks needed to solve a developmental problem--away from “knowledgeâ€� as an isolated legal issue.

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One Million PCT Applications and Counting

The World Intellectual Property Organization (WIPO) paid tribute on Friday to the world’s innovators on the occasion of the filing of the one millionth international patent application under the 26-year-old Patent Cooperation Treaty (PCT). Get the video here.
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Refurbished Cameras Cost Jazz $29,765,280.60

In Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1110-11 (Fed. Cir. 2001), the Federal Circuit held that only those disposable cameras (known as lens fitted film packages or "LFFPs," above) that were "sold under" Fuji's United States patent qualified for the repair exclusion to patent infringement under the "first-sale" exhaustion doctrine:

To invoke the protection of the first sale doctrine, the authorized first sale
must have occurred under the United States patent . . . . Our decision applies
only to LFFPs for which the United States patent right has been exhausted by
first sale in the United States. Imported LFFPs of solely foreign provenance are
not immunized from infringement of United States patents by the nature of their
In a parallel district court litigation, the lower court used this direction to hold that Jazz's importation, sale, and use of over forty million refurbished disposable cameras directly infringed Fuji's family of U.S. patents, and awarded total damages to Fuji in the amount of $29,765,280.60. Then, on January 14, 2005, the Federal Circuit affirmed that amount in Fuji Photo Film Co., LTD. v. Jazz Photo Corp., et al. noting that Jazz did not escape application of the exhaustion principle because Fuji or its licensees authorized the international first sale of some of the LFFPs:

[T]his court does not read the above language to limit the exhaustion principle to unauthorized sales. The patentee's authorization of an international first sale does not affect exhaustion of that patentee's rights in the United States. Jazz therefore does not escape application of the exhaustion principle because Fuji or its licensees authorized the international first sales of these LFFPs. The patentee's authorization of an international first sale does not affect exhaustion of that patentee's rights in the United States. Moreover, the "solely foreign provenance" language does not negate the exhaustion doctrine when either the patentee or its licensee sells the patented article abroad.

Read in full context, this court in [its previous decision] stated that only LFFPs sold within the United States under a United States patent qualify for the repair defense under the exhaustion doctrine. Moreover, Fuji's foreign sales can never occur under a United States patent because the United States patent system does not provide for extraterritorial effect. In [the previous decision], therefore, this court expressly limited first sales under the exhaustion doctrine to those occurring within the United States. Accordingly, the district court correctly applied this court's exhaustion precedent.

Jazz also tried to argue that the district court's application of the this part of the exhaustion doctrine should have only prospective effect because the Federal Circuit's explanation decided a matter of first impression that was not clearly foreshadowed. However, the Federal Circuit concluded that it did not need to reach the merits of this "prospective effect" contention because Jazz had waived this argument by failing to raise it in a form that requested or required a decision from the district court.

Jazz contends that it preserved this issue for appeal by moving for a stay pending
appeal: "It seems unlikely - and certainly unfair - that the Federal Circuit
could have intended [the 'exhaustion by first sale' issue], which was not even
raised by Fuji in the ITC or the Federal Circuit, to result in a holding with
devastating retroactive effect." A few phrases in a stay motion, however, are
not sufficient to apprise the district court that it must address another point
of law. Indeed, the district court in its extensive opinion did not address the
retroactive effect of the Jazz exhaustion doctrine. This court observes that the
district court provided a well reasoned and thorough analysis on a multitude of
important issues in this case. The absence of any discussion of retroactivity
strongly suggests that Jazz did not bring this issue to the trial court's
attention in a manner that requested or required analysis. The exhaustive
historical review of the repair/reconstruction doctrine is but one example of
the district court's special care to resolve issues presented by the parties.
Accordingly, this court declines Jazz's invitation to consider its retroactive
effect argument for the first time on appeal.

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