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Archived updates for Thursday, March 31, 2005

USPTO Live On-Line March 31, 2005

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 on Thursday, March 31, from 2 to 3 pm (EST). 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 (EST) on Thursday. Inventors can begin logging on for the on-line at 1:30 pm.

Transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages.
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Who Owns Stem Cells?

The patent landscape for both adult and embryonic stem cells is very crowded, with hundreds of issued patents having claims to methods of isolating stem cells, methods of propagating stem cell lines, methods of differentiating stem cell lines, and methods of using stem cells in treatment. This paper discusses some of the science, medical treatments, ethics, and IP concerns associated with the business of stem cells. For more information, the NIH maintains an excellent Web site at which provides extensive background information on stem cells as well as bioethical, legal, and regulatory information.
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Archived updates for Wednesday, March 30, 2005

Free Teleseminar on IP Valuation

Thursday, April 07, 2005
1:00 PM EST to 2:00 PM EST

This program by David Moss, an Atlanta-based Director of PricewaterhouseCooper's Advisory practice will provide an assessment of methods to determine the value of your client's IP:

  • Why is IP valuation important?
  • What factors make IP valuation difficult?
  • What are the pros and cons of valuation methods?
  • What is Real Option Valuation "ROV"?
    will present.

Register to attend this class by clicking here or contact Caroline Hayden via

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New Japanese I/P Court

On March 30, 3005, the Daily Yomuri On-Line reported that Katsumi Shinohara, a judge of the Tokyo High Court and will become the first chief judge of the Intellectual Property High Court to be established in Tokyo on Friday. The new court will reportedly have 18 judges, and will serve as the court of first instance over whether the Patent Office's decisions are appropriate. It also will serve as a court of appeal, after Tokyo and Osaka district courts, on compensation suits concerning the infringement of patent rights and injunctions.

The new court will appoint 110 part-time experts on two-year contracts. "The participation of first-class scholars in hearings makes us judges understand the background to developments in technology that can't be easily ascertained from relevant proof," said Judge Shohara. "With the system, the parties will be more likely to accept the rulings and the possibility of a court-mediated settlement will increase."
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Verisign Retains Hold on .NET

The legal finance industry, which advances cash to plaintiffs waiting for their lawsuits to be resolved, has launched its first national trade association in an attempt to raise standards and improve its image. According to a March 28, 2005 article in The National Law Journal, the New York-based American Legal Finance Association (ALFA) has been formed by a consortium of 11 national companies that have agreed to adhere to the "best practices" guidelines set out for the future-settlement financing industry, also known as nonrecourse funding or interim financing.
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Legal Finance Industry Launches Trade Group

The legal finance industry, which advances cash to plaintiffs waiting for their lawsuits to be resolved, has launched its first national trade association in an attempt to raise standards and improve its image. According to a March 28, 2005 article in The National Law Journal, the New York-based American Legal Finance Association (ALFA) has been formed by a consortium of 11 national companies that have agreed to adhere to the "best practices" guidelines set out for the future-settlement financing industry, also known as nonrecourse funding or interim financing.
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Archived updates for Tuesday, March 29, 2005

ICC Issues Roadmap to a Worlwide Patent System

"As business, trade and the impact of technology become increasingly global, awareness of the value of intellectual assets grows and the very high costs of obtaining and litigating patents continue to increase, a strong worldwide cost-effective patent system becomes a very desirable objective. A truly worldwide patent system, giving rise to a single patent enforceable within every country within a single legal framework, would however raise major constitutional issues concerning a country's right to determine what commercial
acts are permissible within its borders and what its citizens are allowed to do in relation to local economic issues and imperatives. This is therefore unlikely in the short term but much can be done to harmonize patent grant and enforcement systems by resolving other issues, and by regionalizing patenting and patent enforcement systems." From the sixth edition of “Current and Emerging Intellectual Property Issues for Business: A Roadmap for Business and Policy Makers,� by the International Chamber of Commerce.
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A Primer on Open Source Software for Business People and Lawyers

Over the past several years, market forces have operated to bring about numerous variants of commercial and open source software, all of which have their own distinguishing features. Along that spectrum we can now find:
  1. commercial “closed source� software, for which the source code is not available to anyone other than the original developer;
  2. commercial “closed source� software, for which the source code is licensed to authorized users under strict confidentiality terms for their own use in maintaining and modifying the software;
  3. “shared source� software, for which the source code is made available to licensees for limited purposes and subject to restrictions on use and disclosure;
  4. community source� software, for which the source code is available to a limited community of users for broad purposes but still subject to restrictions on use, modification and distribution; and
  5. true “open source� software, for which the source code is made available for “free� use, modification and distribution, but the license for which may be subject to conditions or obligations that make it unsuitable for commercial use

The goal of this primer is to help the reader gain a basic understanding of the differences between open source and commercial software in terms of some of the practical implications of each and some of the broader issues that software developers, governments and commercial enterprises might want to consider in terms of their own policies and acquisition activities.

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A Primer on Trade Secrets for Managers and In-House Counsel

The first step in policing your company’s trade secrets portfolio is to acquire a working knowledge of trade secret law. Get it here.
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Points to Consider when Using Confidentiality Agreements

According to the UK patent Office, confidential Disclosure Agreements (CDAs), also known as Non-Disclosure Agreements (NDAs), are legally-binding documents that enable you to record the terms under which you exchange secret information. You are strongly advised to consider using one if you are going to disclose the details of your secret technical idea to another party. That is not to say that a duty of confidence cannot arise even in the absence of such a contract. But recording the duty in a written agreement gives added legal certainty. They suggest a few points to consider when using CDAs:
  • It is highly recommended that you consult a lawyer about how to protect your ideas and the risks of communicating these ideas to someone else.
  • Ask the person/company you are communicating with if they have a CDA they may wish to use that serves both of your interests - but read it carefully and consider taking legal advice.
  • Have a CDA prepared and send it to the other party for them to consider
  • Make some sort of record of what was disclosed at a meeting. For example, you could ask the other party to acknowledge a paper copy of a computer presentation, or drawings etc. that describe the technical details of your idea and the date on which you first showed it to them, in whatever form (eg. paper, an email attachment or an Internet video streaming player).
  • There is no "one-fits-all" CDA. Their example of a CDA shows the types of clauses that are often found in these documents. This typical agreement is merely an example and therefore may not apply directly to your particular circumstances.
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USCO Announces Satellite Rate Negtiation Period

The U.S. Copyright Office has announced the voluntary negotiation period for the purpose of determining the royalty fees for the retransmission of digital over-the-air television broadcast signals by satellite carriers under the statutory license. The voluntary negotiation period commences on March 25, 2005 and concludes on April 25, 2005. Voluntary agreements must be submitted no later than April 25, 2005.

The satellite carrier compulsory license establishes a statutory copyright licensing scheme for satellite carriers that retransmit over- the-air television broadcast signals to satellite dish owners. 17 U.S.C. 119. Section 119(c)(2) provides that “[t]he process and requirements for establishing the royalty fee payable . . . for the secondary transmission of the primary digital transmissions of network stations and superstations shall be the same� as that set forth in section 119(c)(1) for the amendment of the rates paid for the retransmission of analog signals. Section 119(c)(1) provides that “the Librarian of Congress shall cause to be published in the Federal Register [notice] of the initiation of the voluntary negotiation proceedings for the purpose of determining the royalty fee to be paid by satellite carriers� for the retransmission of digital broadcast signals. This notice initiates the voluntary negotiation period.
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USCO Issues New Rules on Photograph Applications

Effective March 28, 2005, the U.S. Copyright Office is amending its final regulations concerning group registration of published photographs to limit to 750 the number of photographs that may be identified on continuation sheets submitted with a single application form and filing fee.

The regulation continues to place no limit on the number of photographs that may be included in a single group registration when the applicant elects not to use continuation sheets and instead identifies the date of publication for each photograph on the deposited image. The regulation also clarifies that the date of publication for each photograph may be identified in a text file on the CD-ROM or DVD that contains the photographic images or on a list that accompanies the deposit and provides the publication date for each image.

According to the Notice:

[T]he Office did not contemplate that it would receive continuation sheets listing nearly 15,000 photographs, nor did it contemplate that the production of such certificates would be as disruptive as it has been to Office operations. Recent experience with the end-stage processing of continuation sheets of a group of photographs that include more than 750 photographs listed on more than 50 continuation sheets has proved administratively burdensome. Whatever the technical capability of Office equipment might be to produce certificates with an unlimited number of continuation sheets, the practical reality of doing so requires an excessive amount of staff, time, equipment, and materials. As a consequence, the cost effectiveness of making these group registrations, at the current filing fee of $30.00 per group, is seriously out of balance.

To relate recent empirical evidence, one recent claim consisted of a staggering total of 1,776 continuation sheets. The Office required three hours for initial processing of the claim, including stamping, examining, labeling, scanning and packaging the claim for imaging. The next step to process the claim, producing the image for the registration record, required four and one-half hours to complete and used 1777 registration number bar code labels. To print the 1777 page certificate took an additional one and one-half hours during which no other printing could be accomplished on that equipment. Then, the certificate had to be packaged and mailed, at an inordinate expenditure of three and one-half reams of certificate paper, postage and packaging costs. Altogether, at the end stage of the registration process, this single registration required more than 12 hours to complete. Making matters worse, the Office currently has on hand 15 additional claims of this kind, at various stages in registration processing. Each of these claims is accompanied by continuation sheets ranging from approximately 1090 to 2423 in number. The Office production structure for registration of claims simply does not accommodate such a time frame for a single registration—group or otherwise—in a system which registered nearly 661,500 claims in fiscal year 2004.

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Are You a Patent Troll?

According to a March 21, 2005 article in Managing Intellectual Property, the speakers at a "Patent Trolls and Patent Property Rights" conference on March 14 agreed that some strategies labelled as "patent trolling" can have legitimate business purposes.

For example, Peter Detkin, who coined the term "patent troll" while at Intel (but now works for reputed troller Intellectual Ventures) now beleives that enforcing patents for technology that a company has itself not developed into a product is not trolling. Hewlett-Packard's vice-president of licensing, Joe Beyers, reportedly echoed those sentiments and suggested two defining criteria: 1) a company whose primary business model is to acquire patents and assert them against another company, and 2) a company that is only interested in money and not, for instance, cross-licensing. The worst patent trolls send out thousands of letters to companies, threatening lawsuits if they do not receive payment.

"In the end, we're all in violent agreement here," Detkin reportedly said at an Intellectual Property Owners Association conference on patent reform. "Patent quality is the real issue."

Click here for more patent Foolishness.
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WIPO Publishes Overview of Panel Decisions on Selected UDRP Questions

The World Intellectual Property Organization has a free "Overview of WIPO Panel Views on Selected UDRP Questions" that considers common and important substantive and procedural questions that have been extracted from the over 7,000 UDRP cases handled so far by WIPO. The identification of questions and evaluation of opinions is based on the 7,000 UDRP cases it has administered through February 2005. More detailed information on all views is available from WIPO's online Legal Index of WIPO Panel Decisions, as well as from the decisions themselves which are also available on-line.
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Archived updates for Monday, March 28, 2005

Bangladesh Sees Drug Export Opportunity in Indian Patent Law Revisions

Pharmaceutical firms in Bangladesh are hoping a new Indian patent law banning Indian companies from manufacturing cheap generic drugs could prove a tonic for their exports. “We are eyeing to export medicine worth about Taka 50 billion in the year 2006 as the government of India is going to impose a ban on copy-patented medicines,� said SM Shafiuzzaman, President of Bangladesh Association of Pharmaceuticals Industries (BAPI) in a March 26, 2005 article. "India's law is a big advantage for us because our companies will continue to copy patented drugs whereas the Indians cannot," Nazmul Hassan, chief executive officer of Bangladesh's second biggest drug maker Beximco Pharmaceuticals, said Saturday. MA Hassan, managing director of Aristo Pharma Limited also admitted that local pharmaceutical exports could make a boom as India is going to impose a ban. But he pointed out that this is the time for the government to come forward with helping hands.
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EPO Filings Up Again for 2004

Click here for Axel Horn's discussion of this chart from the European Patent Office Applicant Panel Survey 2004 Report.
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Paris Convention Not Controlling for Surname Registration in the U.S.

In In Re Dr. Matthias Rath, (Fed. Cir.; March 24, 2005), Dr. Matthias Rath had appealed from the decisions of the Trademark Trial and Appeal Board affirming the United States Patent and Trademark Office’s ("PTO") refusal to register the marks "DR. RATH" and "RATH" on the principal register. The court affirmed the TTAB's decision, but refused to decide whether the "primarily merely a surname" rule conflicts with the United States’ obligations under the Paris Convention:

It is well established that executory treaties (those treaties that are not self-executing) have no direct effect until implemented by domestic law. [citation omitted.] Our predecessor court held that "[t]he Paris Convention was not . . . self-executing and required implementing legislation." Kawai v. Metlestics, 480 F.2d 880, 884 (C.C.P.A. 1973). Rath argues, however, that the older CCPA decision of Master, Wardens, Searchers, Assistants & Commonalty of Co. of Cutlers v. Cribben & Sexton Co., 202 F.2d 779 (C.C.P.A. 1953), conflicts with Kawai. In that case, the CCPA concluded that the Paris Convention "is part of our law and no special legislation in the United States was necessary to make it effective here."

We are obligated to follow the later decision in Kawai because
"the Court of Customs and Patent Appeals always sat in banc and therefore later decisions overcome earlier inconsistent ones." [citation omitted] It is also plain that Kawai is correct. The Paris Convention itself suggests that it is not self-executing. Article 25 states that "[a]ny country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention" and that "[i]t is understood that, at the time a country deposits its instrument of ratification or accession, it will be in a position under its domestic law to give effect to the provisions of this Convention." The majority of other Courts of Appeals that have considered the issue have also held that the Paris Convention is not self-executing.

. . . Rath relies upon Davidoff Extension S.A. v. Davidoff Int’l, Inc., 221 U.S.P.Q. 465 (S.D. Fla. 1983), for the proposition that the Paris Convention is self-executing. Davidoff holds that the Paris Convention is self-executing. However, we are not bound by this decision and we do not find it persuasive.

Rath alternatively argued that section 44(e) of the Lanham Act is congressional legislation implementing the Paris Convention, and that section 44(e) itself requires registration because the Paris Convention requires registration. However, again, the court was not persuaded:
A mark is not "eligible" for registration on the principal register under the statute unless it satisfies the section 2 requirements, including the surname rule. The legislative history cited by the concurrence does not support a contrary conclusion. There is no question but that Congress generally intended section 44 of the Lanham Act to implement the Paris Convention. But this does not mean that Congress intended to do so in every respect or that it actually accomplished that objective in all respects or that it correctly understood the requirements of the Paris Convention in enacting section 44. To the extent that there was any consideration of the continued applicability of United States
eligibility requirements to foreign marks, the legislative history cited by the concurrence suggests, at most, that Congress intended to permit registration of otherwise ineligible marks on the supplemental register, not the principal register. There is simply no way to read this history as suggesting that Congress intended to require registration on the principal register despite United States eligibility requirements. If anything, the history confirms that the principal register was available to foreign registrants and United States
citizens on equal terms—both had to meet the eligibility requirements of United States law.
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Second Circuit Broadly Construes Copyright Defense for Computer Programs

In Krause v. Titleserv, Inc. (2d Cir.; March 21, 2005) The Court of Appeals held that 17 U.S.C. § 117(a) authorized the defendants to adapt their copies of software programs because, within the meaning of §117(a) of the Copyright Act, they (i) owned the copies; (ii) created the adaptations as an "an essential step in the utilization of the computer program in conjunction with a machine;" and (iii) used the adaptations "in no other manner."

Krause terminated his relationship with Titleserv after learning that Titleserv intended that he take direction from its new Director of Information Technology. Krause told Titleserv that it was free to continue using the executable code as it existed on the day Krause left, but asserted that Titleserv had no right to modify the source code. According to the court, "Inability to modify the source code would have severely limited the value of those programs to Titleserv. Many routine functions such as the addition of a new customer or a change of a customer address could be performed only by changing the source code. In addition, changes were required to fix bugs from time to time to keep the system from crashing."

The court first noted that the absence of other evidence that Titleserv’s right to possess and use a copy indefinitely without material restriction, as well as to discard or destroy it at will, gave it sufficient incidents of ownership to make it the owner of the copy for purposes of applying § 117(a):

"[F]ormal title in a program copy is not an absolute prerequisite to qualifying for § 117(a)’s affirmative defense. Instead, courts should inquire into whether the party exercises sufficient incidents of ownership over a copy of the program to be sensibly considered the owner of the copy for purposes of § 117(a). The presence or absence of formal title may of course be a factor in this inquiry, but the absence of formal title may be outweighed by evidence that the possessor of the copy enjoys sufficiently broad rights over it to be sensibly considered its owner.

"We conclude that Titleserv owned copies of the disputed programs within the meaning of § 117(a). We reach this conclusion in consideration of the following factors: Titleserv paid Krause substantial consideration to develop the programs for its sole benefit. Krause customized the software to serve Titleserv’s operations. The copies were stored on a server owned by Titleserv. Krause never reserved the right to repossess the copies used by Titleserv and agreed that Titleserv had the right to continue to possess and use the programs forever, regardless whether its relationship with Krause terminated. Titleserv was similarly free to discard or destroy the copies any time it wished. In our view, the pertinent facts in the aggregate satisfy §5 117(a)’s requirement of ownership of a copy."

With regard to whether the modifications were and"essential step," the court noted that the modifications fell into four main categories: (1) correcting programming errors or “bugs,� which interfered with the proper functioning of the programs; (2) changing the source code to add new clients, insert changed client addresses, and perform other routine tasks necessary to keep the programs up-to-date and to maintain their usefulness to Titleserv; (3) incorporating the programs into the Windows-based system Titleserv designed and implemented between 1997 and 1998; and (4) adding capabilities, such as the ability to print checks, and, to a limited degree, allowing customers direct access to their records, which made Titleserv’s copy of the programs more responsive to the needs of Titleserv’s business.

"The only category of Titleserv’s modifications requiring additional analysis is the fourth category: the addition of new features, such as check printing and providing for direct client access. Such changes were not strictly necessary to keep the programs functioning, but were
designed to improve their functionality in serving the business for which they were created. . . ."

"We can see no reason why the modest alterations to Titleserv’s copies of the programs should not qualify. We need not address whether other types of improvements might be too radical, or might fail to qualify because they somehow harm the interests of the copyright owner. The sentence of the CONTU Report after the one speaking of the right to add features states that the rights granted by § 117(a) could “only be exercised so long as they did not harm the interests of the copyright proprietor.� CONTU Report at 13. A different scenario would be presented if Titleserv’s alteration somehow interfered with Krause’s access to, or ability to exploit, the copyrighted work that he authored, or if the altered copy of Krause’s work were to be marketed by the owner of the copy. But on our facts, we see no harm whatsoever to Krause’s enjoyment of his copyright. The changes made by Titleserv were made only to its copies of Krause’s programs. Krause enjoyed no less opportunity after Titleserv’s changes, than before, to use, market, or otherwise reap the fruits of the copyrighted programs he created.

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Resources for International Competition Law Research

Jean M. Wenger's "Resources for International Competition Law Research" has now been updated at, a free Web journal dedicated to providing the most up-to-date information on a wide range of Internet research and technology-related issues, applications, resources and tools. The guide originally published as part of the AALL Workshop, Shopping in the Global Marketplace: Information Sources for International Trade, July 9, 2004, AALL Annual Meeting in Boston, MA. The guide was originally titled, Ensuring That Corporations Play Nice on the World Playground: Resources for International Competition Law Research. Click here for the Table of Contents.
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TTABVue Database Date Has No Legal Effect

In Only The Best, Inc. v. OPS Sales, Inc., Opposition No. 91163053 (TTAB, March 17, 2005), the application was published for opposition on November 9, 2004, but the Notice of Opposition was expressed mailed on November 3rd. The Opposer argued that the Office did not actually received the Notice until November 15, 2004 as reflected in the United States Patent and Trademark Office (USPTO) TARR database print-out attached to opposer’s response. But, the TTAB was not persuaded:
As can be seen from opposer’s "Certificate of Mailing" it was, in fact,
mailed with an express mail label and the Office, accordingly, stamped the notice of opposition, with an "Office date label" of November 3, 2004. Further, as can be seen from the USPS tracking print-out, this correspondence was actually received by the Office on November 5, 2004. Opposer’s reference to the date entered in the TARR database is not controlling. This date merely reflects the date the notice of opposition was entered into the database and has no legal effect.
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Protectionist Interests Blocking Community Patent

"It is a mystery to me how Ministers at the so-called "Competitiveness Council" can keep a straight face when they adopt conclusions for the Spring European Council on making Europe more competitive and yet in the next breath backtrack on the political agreement already reached on the main principles of the Community Patent in March of last year" said EU Commissioner Bolkestein in a press release following the Competitiveness Council of Ministers meeting in Brusselson March 11, 2004. "I must stress that this is despite the very courageous and determined efforts by the Tánaiste Mary Harney to broker a compromise. I can only hope that one day the vested, protectionist interests that stand in the way of agreement on this vital measure will be sidelined by the over-riding importance and interests of European manufacturing industry and Europe's competitiveness. That day has not yet come."
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What is the Background of an Invention?

Ask ten different patent practitioners about how they write their background sections and you may get ten different answers. After taking care of the bare minimum requirements, the differences tend to come down to personal style. Here is an explanation of Russ Krajec's personal style. I prefer to think of think of the Background section as the opening argument for why the claims are patentable.
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Brand Loyalty at Harvard?

''I was shocked to see they had done this to our cereals," said Harvard senior Cameron Moccari, who last week launched the group ''Harvard Students for the Reimplementation of Brand-Named Cereals" on, a popular website that allows students to meet new friends or form study groups. ''They replaced all of the familiar cereals with ones that have weird names and don't taste good."
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A Methodical Approach to Patent Claim Drafting

Here is an outline of a methodical approach to patent claim drafting for any area of technology, as discussed in "Structure, Function, and the Spectrum of Patent Claiming:"

  • Carefully identify the advantageous "effect" of the invention
  • Identify the fewest "elements" that will create that effect
  • Start with structure plus function claim type format to link the elements and effects, e.g. "element A for effecting (a, to, with, of, in, on, over) element B"
  • Use dependent claims to "structurally" define elements and/or "functionally" define effects
  • Use "claim-type differentiation" to expand that format with the same elements and effects
  • Use even uncommon claim types for your area of technology
  • Avoid unnecessary "hybrid structural/functional" recitations
  • Appeal rejections that are merely demands for additional structure

Please feel free to contact me for a more-detailed presentation of these ideas to your patent organization, practice group, or class.

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And the Truth Shall Make You Free?

From Media Law Reporter, Publication date March 22, 2005:

Creationism advocates, who agreed to be interviewed for a television program they were told had not yet been named and would not be satirical, cannot proceed with their defamation claims, the U.S. District Court forthe Northern District of Georgia ruled Feb. 28, 2005. The court found that the plaintiffs failed to allege that any of the statements about them on "Penn & Teller: Bullshit!", though"emphatic and often mocking," were false (Brock v. ViacomInternational Inc., N.D. Ga., No. 1:04-CV-1029-CAP,2/28/05) . The plaintiffs had spoken before the Cobb County, Ga., school board about adding creationism to the curriculum and later alleged that the Showtime episode constituted "'a personal attack on Plaintiffs for their desire to have both Creationism and Evolution taught as alternate theories."

The Cobb County Board of Education had required stickers to be pasted into high school biology textbooks, saying that evolution "is a theory, not a fact, regarding the origin of living things. The material should be approached with an open mind, studied carefully, and critically considered." A federal judge later ordered the school system to remove the stickers.
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Archived updates for Friday, March 25, 2005

Working Group of Industrialised Nations Issues Statement

At a meeting hosted by the European Patent Office on March 21 - 22, 2005, the Working Group of industrialized nations on intellectual property and development issued the following statement entitled "Communiqué from the Working Group of Industrialised Nations on Intellectual Property and Development":

The Working Group of industrialised nations on intellectual property and
development set up by the meeting in February 2005 at the United States Patent
and Trademark Office in Alexandria met at the European Patent Office in Munich
on 21 and 22 March 2005. The meeting was attended by 53 delegates from Austria,
Belgium, Canada, the Czech Republic, Denmark, the European Commission, the
European Patent Office, Finland, France, Germany, Hungary, Italy, Ireland,
Japan, Lithuania, Luxembourg, the Netherlands, New Zealand, Norway, Poland,
Portugal, Romania, Spain, Sweden, Switzerland, United Kingdom and the United
States of America.

The meeting reaffirmed its support for the World Intellectual Property
Organization's long-standing work in the area of development-related aspects of
IP. The meeting recognised that we should do more to ensure that capacity
building is targeted to the expressed needs of developing countries and that we
should adopt a "demand driven" approach. We should find ways in which
development partnerships can be created, shared and monitored to avoid
duplication and assess effectiveness. Capacity building covers not only the
building of IP expertise and resources, but should include ensuring that IP
systems in developing countries function to facilitate growth and development.

The meeting noted the need to go beyond issues of capacity building and
deepen our understanding of the relationship between IP and economic, social and
cultural development. The meeting also discussed existing proposals,
including those from Switzerland, the European Union and the United States on
the disclosure of the origin/source of genetic resources and related traditional
knowledge in patent applications. There was consensus to discuss this matter
further within WIPO.

In summary, an active meeting at which all confirmed their commitment
to working together with all countries within WIPO to develop the IP system for
the benefit of all and with needs of developing countries integral to our

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USPTO Publishes New Recordation Form Cover Sheets

In March 2005, the USPTO published new Recordation Cover Sheet Form PTO1595 for patents and Form PTO-1594 for trademarks.
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TGIF for U.S. Patent No. 35,600

U.S. Patent No. 35,600 for Plow (with gun)

Good for the settlers, bad for the natives, and worse for the mules.

Thank Goodness It's Friday,

--Bill Heinze
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Archived updates for Thursday, March 24, 2005

The Ultimate Trademark Link List?

This site is is maintained by Greg Guillot, of Gregory H. Guillot, PC.
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Archived updates for Wednesday, March 23, 2005

India Product Patent Bill Moves Forward

India's lower house of parliament, the Lok Sabha, passed a patents bill on Tuesday making it illegal to copy patented drugs, a practice that has made cheaper medicines available in India and abroad. The bill, which is expected to become law once it is approved by the Rajya Sabha council of states, also covers other products such as chemicals, mobile phones and computers.

According to the Asia Times, the Patents (Amendment) Bill, 2005, introduces product patents in pharmaceuticals, food and agrochemicals - the three sectors where the process could be patented but not the product. The bill was passed after 13 amendments, many of them suggested by leftist parties, and agreed to by the government in order to bring that powerful political bloc on board.

International aid groups have strongly criticised the legislation as being harmful to developing countries which depend on inexpensive generic drugs imported from India. But the government has said that patent recognition is an essential pre-condition for India's drug industry to further its own drug research and development and attract foreign partners.

India's pharmaceutical industry is now the fourth-largest in the world in terms of volume, with exports reaching an estimated 200 countries globally. However, developed countries had complained to the World Trade Organization that this success was achieved largely by unfairly refusing to allow the patenting of pharmaceutical products, and India was obliged to provide product patents in these sectors starting January 1, 2005. The government met the deadline by issuing a temporary ordinance in December which is to be replaced by the new legislation.
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Find in a Library: The Macmillan Visual Dictionary

The Open WorldCat program makes records of library-owned materials in OCLC's WorldCat database available to Web users on popular Internet search, bibliographic, and bookselling sites.

A Web user simply visits a site such as Yahoo! Search or Google and enters a search phrase that matches the title of a library-owned item. The returned search results include a link to the Open WorldCat "Find in a Library" interface, where they can enter geographic information that helps them locate the item at a library in their city, region or country.

For example, click here to find The Macmillan Visual Dictionary in a library near Atlanta.

Web users can also find Open WorldCat built into popular search applications. A special version of the Yahoo! Toolbar provides an ever-present browser pane with links to Yahoo! services and input box for direct search of WorldCat libraries.

Click here for more from Information Today.
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A View from the CAFC by Judge Gajarsa

“I’m sure we’ll create more legal discussion and provide more professors with tenure. . . . The Supreme Court has reminded us that we are all inferior courts and inferior judges.� -- Judge Arthur Gajarsa of the Court of Appeals for the Federal Circuit reportedly speaking at a seminar in London on March 16.
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How to Get a Job in IP Law

Thanks to Dennis Crouch at the Patently-O Blog for pointing out that PLI is hosting a free audio webcast On March 28, 2005 entitled titled “How to Get a Job in IP Law," from 1:00 - 2:00 p.m. (EST) (also available as a teleconference).

While your waiting, click here for
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Archived updates for Tuesday, March 22, 2005

Hatch to Chair New Senate I/P Subcommittee

Happy Birthday Senator Hatch!

According to a March 17, 2005 report in The Washington Post, Orrin G. Hatch (R-Utah) has been named to head a new U.S. Senate subcommittee on intellectual property. The corresponding press release issued by Hatch’s office announced that the new Intellectual Property Subcommittee will have jurisdiction over all intellectual property laws and oversight on patent, copyright, trademark, and international intellectual property policies. Hatch named Bruce Artim, former staff director and chief counsel for the Judiciary Committee, as the subcommittee’s staff director and chief counsel.

Over the next few weeks, Hatch and Sen. Patrick Leahy (D-Vt.), the subcommittee’s ranking minority member, intend to initiate a series of hearings on patent reform with the objective of developing any necessary and appropriate legislation. The issues Hatch would like to address include increasing the quality of patent reviews, considering new post-grant opposition procedures, and shoring up the long-term resources of the Patent and Trademark Office.
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A Search Engine for People Information

According to their website, ZoomInfo is a unique summarization search engine that finds, understands and extracts the latest online information about people and companies and instantly delivers it to you in concise and useful summaries. After entering a name into the search box, a user is presented with a list of matching individuals. Click here for more information from
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EPO Information Day in Brussels on March 30

Alain Pompidou, President of the European Patent Office will be hosting the first European Patent Office (EPO) Information Day in the European Parliament on March 30, 2005.

The festivities include a 10:00 Seminar on the European Patent System, chaired by Ms Arlene McCarthy discussing "The European patent system: Benefits to society, Computer-implemented inventions:Patent practice at the EPO, and Knowledge from patents." A presentation to Parliament's the ITRE Committee by Professor Alain Pompidou will follow at 3:00.

According to the notice, "access to the European Parliament is restricted to those with the appropriate accreditation or security clearance."
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Legislative Initiatives in European Patent Law

Click here for more from the European patent Office.
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Archived updates for Monday, March 21, 2005

UK Proposes Tentative Rules on Postponing Translations

The UK Patent Offivce has isssued a Guidance Note explaining changes to UK patent law, made by the Patents (Translations) Rules 2005, regarding the filing of translations upon grant of a European patent application, designating the UK and having been filed in French or German. The changes will affect any patent applicant or agent who wishes to maintain protection in the UK for a granted European patent, filed and prosecuted before the EPO in either French or German.

Currently, an applicant who receives a granted European patent in either French or German and wants to obtain protection within the UK is required after grant by the EPO to file a translation with the UK Patent Office within three months. The Agreement on Translations will enter into force three months after the Agreement has been ratified by eight states, including specifically the UK, France and Germany as the three states in which the most European patents were granted. After the appointed day, a patent application in French or German granted by the European patent office and designating the UK, will have legal effect in the UK in the same way as a patent granted in English. However, during court proceedings, or in proceedings before the comptroller, the rules of procedure may require that a translation will be required. Before the appointed day, the Patents (Translations) Rules 2005 have no effect, and applicants will continue to need to file translations under section 77(6) if they wish to have patent protection in the UK.

Further information on the Agreement on Translations is available, via this website.
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TTAB Affirms 80% of Refusals

"Based on a review of the TTAB's summaries of its 2004 final decisions, I counted 92 reversals of 464 appealed refusals to register," writes John Welch at the TTAB Blog. "That comes out to a reversal rate of 19.8%, or conversely, an affirmance rate of 80.2%."
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WIPO RSS 1.0 Feeds

Click here for the latest list of WIPO RSS 1.0 feeds from the IP::JUR Blog. "If you don't know what RSS is and/or how it works then perhaps you might wish to read this and that," writes Axel Horn.
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Top 10 Universities Receiving Most Patents in 2004

On March 18, 2005, the USPTO announced the top 10 U.S. universities receiving the most patents during calendar year 2004. Listed below are the 10 universities receiving the most patents for inventions in 2004, along with their 2003 ranking. The University of California tops the list for the 11th consecutive year.
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NFL Bans Words on Official Jerseys

I understand the National Football League has the right to control what goes on its officially licensed products and applaud them removing “gay� from the list after realizing the absurdity of, in essence, singling out one of its players. (Although a reader points out that you can't buy a Jets jersey with "TONGUE" on it, even though there is a Jets player named Reggie Tongue. This shows how dumb their filter is). But it still rankles to see “Lesbian� on a list of banned words and to realize that at some point “gay� was considered off-limits. Masonson did not know the inner workings of how the list was compiled or updated. -- Jim Buzinski, writing at on March 2, 2005.

Click here for the list of 1,159 banned words on jerseys. Warning! Not for the squeamish.
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Searching the USPTO Website for Patent Information

This screencast from the PHOSITA Blog walks you through the steps of keyword searching the US Patent and Trademark Office’s online issued patent and pending application database.
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Archived updates for Friday, March 18, 2005

TGIF for the Happy Birthday Song Copyright

According to the folks at, "If you have seen someone singing Happy Birthday in a restaurant, a park, or at a school, you should tell ASCAP so that they can arrange for a license. If you are an offender, you should apologize and offer to pay whatever is due — a nickel, a quarter, a dollar — whatever ASCAP demands. There is an overwhelming amount of copyright infringement of Happy Birthday. Let's right the balance and tell ASCAP about every one of these violations!"

According to, "Happy Birthday to You" brings in about $2 million in royalties annually.

Happy Friday to You,

--Bill Heinze
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Spring 2005 Business Methods Partnership Meeting

The United States Patent and Trademark Office (USPTO) announced today its Spring 2005 Business Methods Customer Partnership Meeting on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313

The partnership meeting is an opportunity for an informal discussion on topics such as public pair, quality initiatives, determination of statutory subject matter, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross- section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the partnership meeting should be submitted to the attention of Joe Thomas via facsimile at (703) 746-5897, or by electronic mail through the Internet to Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by April 20, 2005. For more information, contact Joseph Thomas by telephone at (703) 305-9588.
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Richmond IP Holdings Requests Unfair Import Investigation of Weather Stations from Asia

On March 15, 2005, Richmond IP Holdings, LLC of Richmond, Virginia filed a "Section 337" unfair import complaint at the U.S. International Trade Commission.

The complaint requests that an unfair import investigation be instituted involving "Certain Weather Stations and Components Thereof." The proposed respondents are: Hideki Electronics, Inc., of Oregon; K&P International Holdings Limited, Hong Kong; Hideki Electronics, Ltd., Hong Kong; Springfield Precision Instruments, Inc., of New Jersey; Homedics-USA, Inc. Michigan and Taylor Precision Products LLC, of Illinois.

The complaint has been designated as confidential and assigned Docket No. 337-2420 for indexing in the Commission's database. The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

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

For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (, at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.
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Archived updates for Thursday, March 17, 2005

Sigma Tel Requests Unfair Import Investigation of Actions Semiconductor Company

On March 14, 2005, Sigma Tel, Incorporated of Austin, Texas filed a "Section 337" unfair import complaint at the U.S. International Trade Commission.
The complaint requests that an unfair import investigation be instituted involving "Certain Audio Processing Integrated Circuits, and Products Containing Same." The proposed respondent is: Actions Semiconductor Company, Tangjia, Zhuhai, Guangdong, China.

The complaint has been designated as confidential and assigned Docket No. 337-2419 for indexing in the Commission's database. The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

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

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

On March 14, 2004, the European Commission sent the following remarks to the European Parliament in connection with the position of the "common position" of the European Council adopted on March 4 regarding the proposed directive on the patentability of computer-implemented inventions:

. . . The Council, acting by qualified majority, has adopted a common position
which incorporates the substance of some 25 of Parliament’s amendments at first

. . . In general, the Commission believes that the common position strikes an acceptable balance between the interests of right holders and those of competitors and consumers (including in the open source community). This balance is further
safeguarded by the new requirements in Article 7 for the Commission to monitor the impact of computer-implemented inventions in particular on small and medium-sized enterprises and on the open source community.

. . . A failure to adopt a directive would prevent Community institutions from exercising control in this strategic area of the European economy, which would thus remain within the remit only of national patent offices and courts and the European Patent Office in Munich. . .


The Commission considers that Council’s common position maintains the balance aimed for in the original proposal and it can, therefore, accept it. In particular, the current wording provides for sufficient incentives to innovation in this field and maintains the freedom to commercialise new products while allowing right holders to enforce their rights in an effective yet proportionate way against infringers. The fact of harmonisation at a Community level ensures that the enforcement of these rights is consistent across the European Union and therefore facilitates the efficient functioning of the Single Market.

The Commission invites the Parliament to engage constructively in further inter-institutional dialogue so as to ensure adoption of a directive which meets these objectives and is ready to engage further with both Parliament and Council on key issues concerning the directive, notably in the light of the Commission's commitments to the promotion of interoperability.

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The Life of an RIAA Defendant

". . . For me, the experience of settling with the RIAA was almost painless except for the thousands I agreed to pay. Dragging my "shared" folder to the trash icon, promising not to download anymore, and acknowledging that illegal downloading is wrongful were easy enough. I happened to know an intellectual-property lawyer who agreed to handle the negotiations pro bono. He was the one who called the RIAA settlement center number and spoke not to a lawyer, but to a staffer empowered and trained to negotiate. 'It feels like they're doing a volume business,' my lawyer told me. . . ." -- Nick Mamatas writing on March 7th, 2005 in the Village Voice
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Archived updates for Wednesday, March 16, 2005

Free Seminar tomorrow on Obviousness in Overlapping Ranges

Date: March 17, 2005
Time: 12:30 PM Eastern
Duration: 1 Hour
Please RSVP to in order to obtain toll free dial in number

"Prima Facie Obviousness In Overlapping And Encompassing Range Cases"

The Patent Office states in Rule 1.56 that prima facie unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden of proof standard. Yet the patent office always holds (as a matter of law) that any claim to ranges which are encompassed, or overlapped, by the prior art are "prima facie obvious," regardless of the evidence. This imposes on the applicant the burden of proving "surprising and unexpected results," commensurate in scope with the claims, which in some arts can be very costly. This presentation explores the appropriateness of the PTO's "per se, matter of law" approach, in situations, for example, where the prior art suggests a very broad, with no support for a range of such breadth, no claims to that broad disclosed range, and no examples within the range claimed in the rejected claims.

James A Mitchell, [] from Price Heneveld Cooper DeWitt & Litton
Gunther Evanina, [] from Price Heneveld Cooper DeWitt & Litton
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USPTO TC 2800 Technology Fair Invitation

USPTO Technology Center 2800 is holding a technology fair on May 17 and 18.

Technology Center 2800 covers a broad range of electrical and optical technologies. The Fair will consist of having inventors, who have expertise in the technology that falls under TC 2800, coming to the PTO to share their knowledge with our patent examiners. The Tech Fair will consist of a combination of lectures and a product demonstration expo. At the product demonstration expo, inventors can provide a product or a model of their invention. Due to time constraints, the presentations and products should be centered on cutting edge technology and not on the history of the technology.

Unfortunately, since they are a Government Agency, they are unable to pay for travel, hotel, food or other expenses incurred by those attending this event. The date we have set for the technology fair is May 17-18. The event will last two days and there will be morning and afternoon sessions. The product expo will be held the morning on May 17, only. There will not be any lectures during the time set for the product expo.

Please share this information with inventors who you believe would like to participate in the product demonstration expo, present a lecture, or participate in both activities. Persons who wish to participate in this event can contact:

John Lee,
SPE, Art Unit 2881
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WTO Issues Panel Report on EC GIs, Sides with U.S.

According to a press release from the USPTO, yesterday, the World Trade Organization (WTO) released its panel report affirming the United States' assertion that European Community (EC) regulations discriminate against foreign owners of geographical indications (GIs), and that the EC cannot deny trademark owners their rights. Accordingly, the panel found the EC's GI Regulation inconsistent with the EC's WTO obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), as well as the General Agreement on Tariffs and Trade (GATT 1994).

"Geographical indications" (GIs) under the WTO TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) are "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographic origin.� Examples could include Parma ham, Roquefort cheese, Florida oranges, Vidalia onions, or Idaho potatoes.

The EC Regulation creates a system for registering and protecting geographical indications for agricultural goods sold in the EC market. But while the Regulation allows EC rightholders to apply directly to register and protect their GIs for EC products, non-EC nationals must rely on their government to apply for the protection in the EC on their behalf, as well as to object to GI applications in the EC. Furthermore, foreign governments must adopt a system of GI protection that mirrors the EC’s and that provides reciprocal protection to EC products in order for their foreign rightholders to be considered for benefits of the EC Regulation’s protections.

Lois Boland, Director of the Office of International Relations explained that “the discrimination against U.S. GI owners has been all the more frustrating because the United States provides robust protection for GIs, whether of domestic or foreign origin. The U.S. system has proved to be very flexible, easy to use, and a powerful tool against infringement for the owner’s of these valuable intellectual property rights. We were also concerned that under the terms of the EC Regulation, U.S. trademark owners were losing their ability to preserve the distinctiveness of their marks in Europe if they had to market their products alongside products using a similar geographical indication. USPTO is very pleased with the Panel’s findings and looks to the resolution of this case as providing an opportunity to move towards a closer working relationship with the European Communities on geographical indications issues.�

The United States requested WTO dispute consultations on the EU GI Regulation in June 1999. On August 18, 2003, the United States requested the establishment of a panel, and panelists were appointed on February 23, 2004. The panel issued a confidential draft interim report on November 19, 2004, and a final report to the Parties on December 21, 2004. Yesterday, that report was made public by the WTO.
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China Business Leader Wants Better Domestic I/P Protection

"The state should adopt more substantial and feasible measures to protect the indigenous brands in the fields of trademark and intellectual property rights," Yang Mianmian, the CEO of China's electric appliance giant Haier Group, reportedly told the Chinese State News Agency. Yang also said the government should set up some special coordinating bodies to give timely guidance to the "inexperienced enterprises" over such cases, so as to "better protect the rights and interests of the indigenous brands overseas."

People's Daily On-Line previously reported on another story about the domestic piracy that is threatening China's porcelain.
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An Alternative Forum for Fighting False Advertising

In an effort to sustain "truth and accuracy in national advertising" through self-regulation, a two-tier system was created by the advertising community in 1971. The National Advertising Review Council, or NARC, now consists of the National Advertising Division of the Council of the Better Business Bureaus, Inc., the "NAD;" and the National Advertising Review Board, the "NARB."

The NAD is the investigative body, while the NARB is the appeals body of the system. When an advertiser or challenger disagrees with NAD's findings, NAD's decision can be appealed to the NARB for additional review. The advertiser (whose ad claims are in question) has an automatic right to a review by an NARB panel, however, the complainant (also referred to as the challenger) must have approval from NARB's chairman. The NARB Chairman will only grant a challenger's request for an appeal if he determines that there is a likelihood that a NARB panel would reach a decision different from NAD's decision.

"Three-quarters of the complaints it hears come from marketers," James R. Guthrie, President and Chief Executive at the Council reportedly told the New York Times on December 29, 2004. Marketers that do not win appeals, or that do not ultimately comply with the recommendation, are reportedly "referred to the Federal Trade Commission for government scrutiny."

According to their website, the NARC benefits advertising in at least 10 ways:
  1. Litigation Alternative
  2. Public Criticism Forum
  3. Reduce Government Intervention
  4. Level Playing Field
  5. Cutting-Edge Response
  6. Build Brand Loyalty
  7. Trend Identification
  8. Lower Costs
  9. Strengthen Self-Regulation
  10. Target "Hot Spots"
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Archived updates for Tuesday, March 15, 2005

Requirements for a Competent In-House Noninfringement Opinion

According to "Requirements for a Competent In-House Opinion," by Vineet Kohlia, competent and reasonably relied upon opinion letter can be of great value to defeat a charge of willful infringement:
[I]t appears that the test for competency of an in-house opinion letter is that, the opinion demonstrates (a) the authors expertise and experience, (b) the absence of a material, financial or other interest, and (c) the existence of other indicia of reliability and objectivity. . . . The competency of the opinion letter depends not only on its overall thoroughness but also on the competency of its author. In addition to being competent, the evidence must also establish the infringer’s good faith reliance on the opinion letter to justify a good faith belief that a court of competent jurisdiction will likely find the adverse patent invalid, not infringed or unenforceable. That the ultimate conclusion of law reached by the author of the opinion are found to be incorrect, matters not, as long as the opinion letter is objective and reliable."
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Lab Notebooks Document Inventive Activities

An appropriately maintained laboratory notebook can often mean the difference between gaining recognition for a discovery and not. U.S. patent law states that
inventorship is determined by the first to invent, not the first to file. (Foreign patent offices determine inventorship by the first-to-file method.) Your lab notebook can be the key piece of evidence in helping to make that determination. Click here for more from the Office of Technology Development of the University of Oklahoma
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New Leadership for DOJ IP Task Force

On March 9, 2005, Attorney General Alberto R. Gonzales announced the continuation of the Justice Department's Task Force on Intellectual Property and renewed the Department's commitment to aggressively enforce intellectual property laws. The Attorney General also named Kyle Sampson, Deputy Chief of Staff and Counselor to the Attorney General, as the new Chairman of the Task Force. Federal prosecutor Arif Alikhan was named Vice Chairman and Executive Director.
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Boutique Darwinism?

According to Blane Prescott, a partner with Hildebrandt International in San Francisco. "IP law firms are the most management-resistant law firms in the profession," Prescott says. He lists a host of management sins: Boutiques are "overly democratic, tend not to have strong leadership, lack succession planning, and are the least knowledgeable about what aspects of their practice are profitable." IP firms are also backwards when it comes to compensation, Prescott says, rewarding partners solely on the basis of client billings and billable hours, and not looking at nonmonetary contributions.
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IP Crucial for Crossing the Innovation "Valley of Death"

According to "Role of Intellectual Property in Innovation and New Product Development," (WIPO SME-ARTICLE/39213, March 1, 2005) the "valley of death" between conception and launch of a new product is the period where most inventions collapse due to the absence of external support or lack of commercially viability. During this time, IP assets, and particularly patents, often play a crucial role in facilitating access to "business angel" providers of early stage capital who can provide a lifeline for an invention to reach the marketplace. Ideas which are protected by IP stand a greater chance of crossing the valley because IP ownership plays an important role in influencing the decisions of such external partners and supports a strong negotiation position when it comes to entering into and maintaining business partnerships.
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Time for Mediation at the Federal Circuit?

This week's IP Bulletin asks, Time for Mandatory Mediation at Federal Circuit?. But I'm too cheap to buy a subscription. Nonetheless, according to Professor Gilbert J. Ginsburg, in "The Case for a Mediation Program in the Federal Circuit American University Law Review, Vol. 50:1379 (2001):

The U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit�) is the only Circuit Court of Appeals that does not have a mediation program that provides third party assistance to parties seeking an alternative to appellate litigation. The other twelve Circuit Courts of Appeal—the regional Circuit Courts—all have well established mediation programs and only the Eighth Circuit’s program is voluntary. All the regional Circuits have settlement conference programs that provide mediation services when requested by the parties. The Federal Circuit does not provide any form of mediation or alternate dispute resolution (“ADR�) when the parties desire, leaving unassisted settlement negotiations or appellate litigation as the only options. I believe that the Federal Circuit should join the other twelve Circuits and establish a formal, court-sponsored mediation program.
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"TICK TAPE" Merely Descriptive for Patented Insect Removal Device

In In Re Innovation Development Group, Inc. (Fed. Cir.; March 14 2005; not citable as precedent), Innovation Development filed an intent-to-use application to register the mark TICK TAPE for the hand tool device described in the U.S. Patent No. 6,718,686 (above) as "a foam backing with an adhesive surface" that "will adhere to the body of the tick while the device is pulled away from the skin, resulting in the removal of the tick." The court held that substantial evidence supports the Board’s findings that TICK TAPE is merely descriptive:

The Board found that "tape" has a broad definition that includes "adhesive tape." In addition, the Board found that Innovation Development intended to use the mark in the following context:

A device for the removal of insects, particularly ticks, from a human or
animal host includes a foam backing with an adhesive surface that folds
along a central folding axis. The adhesive surface will adhere to the body
of the tick while the device is pulled away from the skin, resulting in the
removal of the tick.

Innovation Development disputes this finding, arguing that it did not concede that "tape" means "adhesive tape," but only that "[a]dhesive tape is one of many possible types of tape." For purposes of this appeal, we assume that adhesive tape is one type of tape. (quoting the ’686 patent’s abstract). It would seem, therefore, that an essential feature of Innovation Development’s product is a foam structure
that folds around an insect, such as a tick, and has adhesive qualities so as to
be capable of removing the tick from the host. Innovation Development’s product
consequently falls squarely within the definition of "tick tape." Thus, we
think substantial evidence supports the Board’s finding that, as used in the
context of Innovation Development’s hand tool, "the mark TICK TAPE would
immediately indicate that one component of [the] hand tool is an adhesive tape
and that the hand tool is particularly useful for removing ticks," and that the
mark is therefore merely descriptive.

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Undecided Inavilidity Counterclaim Precludes Appellate Jurisdiction

In Pause Technology LLC v. Tivo, Inc. (Fed. Cir., March 14, 2005) the court was confronted with an appellate jurisdictional defect caused by an undecided invalidity counterclaim that preclude the court from considering a noninfringement holding in favor of TIVO:
For whatever the reasons, parties too frequently are not reviewing the actions
of the district courts for finality before lodging appeals. When such actions
later are discovered to be not ripe for review, needless delay and inefficiency
result, as reflected in the proceedings in this appeal. To promote the policies
explained in Firestone, our court will insist upon diligent compliance by
counsel with the rule of finality. The importance of the rule of finality is
underscored by the court’s recent amendment of Federal Circuit Rule 28(a)(5),
which now requires that the jurisdictional statement also include a statement
that the judgment or order appealed from is final or otherwise appealable.

In the present case, the district court did not expressly dispose of
the invalidity counterclaim. Indeed, there was no adjudication of it and no
indication that TiVo concurred in a disposition that would permit a
dismissal without prejudice and without a finding of mootness. Furthermore,
there was no finding that there was no longer a "controversy," i.e., no finding
that the counterclaim was moot. Thus, the invalidity counterclaim remains
pending. A "judgment that does not dispose of pending counterclaims is not a
final judgment." Nystrom, 339 F.3d at 1351 (quoting Pandrol, 320 F.3d at 1362).

Pause contends that we should deem the invalidity counterclaim impliedly dismissed. However, even if the district court could impliedly dispose of the invalidity defense in its ruling on infringement, the invalidity counterclaim is a separate claim that remains unresolved. See Altvater v. Freeman, 319 U.S. 359, 363 (1943); see also Pandrol, 320 F.3d at 1361-63 (noting distinction between invalidity defense and counterclaim but recognizing finality of judgment where district court found invalidity defenses waived after counterclaim dismissed without prejudice and not revived).

There is no dispute that the district court did not expressly dismiss the invalidity counterclaim and that a pending counterclaim precludes jurisdiction absent certification under Rule 54(b) of the Federal Rules of Civil Procedure. Instead, Pause would have us find that the district court impliedly dismissed the invalidity counterclaim, that the judgment is final, and that no Rule 54(b) certification
is necessary. Such a finding would be contrary to the text and purpose of Rule
54(b), including its "negative effect" on whether an appeal is ripe for review. Moreover, such a ruling, that the district court impliedly dismissed claims in a multiple claims suit, would be the first step toward eviscerating Rule 54(b).

. . . Nevertheless, because this court has held that a premature notice
of appeal ripens upon subsequent action of the district court, we grant Pause leave to seek remedial action at the district court and thereafter to reinstate the appeal.
Accordingly, this appeal is dismissed for lack of jurisdiction, subject to
reinstatement under the same docket number without the payment of an additional
filing fee if, within 30 days of the date of this opinion, a party appeals from
the entry of a final judgment on the entire case or obtains a certification for
appeal pursuant to Rule 54(b). If the appeal is reinstated, it will be decided
by the present panel, based on the briefs already filed and the oral argument
heard on January 13, 2005.

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Alicante News Discusses Community Design Registration and Invalidity

According to European Trademarks and Designs Newsletter No. 4 from the Office for Harmonization of the Internal Market (OHIM) from the the the Designs Department at the OHIM wants you to know that it "cares about your application, its smooth registration and error-free publication:"

The Department is made of a sort of a “melting-pot� of 25 people coming from
different countries with their own cultures, approach to situations, different
languages and so on. In spite of these differences they are able to behave as an
efficient and harmonized body. The examiners speak on average three languages
each and are able to treat applications from numerous different countries. Many
languages are spoken in the course of everyday work. Since May 2004, the whole
Office has been working in 20 languages (for forms and letters: altogether, in
2004, a total of 32,300 letters were generated and sent) and in June 2004, the
first design was published in 20 languages
Click here to learn more about how they process, register and publish your design. Click here to learn more about their invalidity division.
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Archived updates for Monday, March 14, 2005

Lessigists Target the WIPO Development Agenda

The following is excerptd from the WIPO Manifesto for Transparency, Participation, Balance and Access, Petition to WIPO - World Intellectual Property Organization, created by and written by Pedro de Paranaguá Moniz, Cory Doctorow, and Pedro A. D. de Rezende:

A Call for Reform

We demand TRANSPARENCY within WIPO and strongly reject any kind of disproportionate representation.

Yet, we call for an immediate PARTICIPATION of civil society and consumer-interest non-governmental organizations (NGOs) within WIPO's activities. Specifically, but not limited to accepting applications from NGOs to serve as ad hoc observers at the upcoming Inter-sessional Intergovernmental Metting next 11-13 April 2005, and for the Permanent Committee on Cooperation for Development Related to Intellectual Property, next 14-15 April 2005, in order to provide a BALANCED discussion on the Development Agenda and on the IP system in general, observing an equilibrium between IP right holders and consumers.

Furthermore, we urge that WIPO, as a United Nations (U.N.) specialised agency responsible for promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development, plays its role in making ACCESS to knowledge feasible for humanity, bearing in mind different needs (including, but not limited to, those of the visual and audio impaired) and stages of development. . . .

Click here for more about Marxist-Lesigism and the current "culture war" over the means of production for creative content.
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The Development Agenda's Main Observations and Issues?

According to Pedro de Paranaguá Moniz, Cory Doctorow, Pedro A. D. de Rezende's petition to WIPO entitled "WIPO Manifesto for Transparency, Participation, Balance and Access," the Development Agenda's main observations and issues are

i) development remains a challenge, and a significant “knowledge gap� as well as a “digital divide� continue to separate the wealthy nations from the poor;

ii) the protection of intellectual property rights (IPRs) is not an end in and of itself; rather IPRs are tactical instruments used to bridge the knowledge gap and the digital divide;

iii) equally, harmonisation efforts on IPRs must be subservient to the different development needs in Member states; these nations being able to afford the flexibility they need to serve their national ends;

iv) the protection of IPRs shall never come at the expense of the legitimate interests of the public, and the cost of IP regimes shall always be weighed against the public benefit;

v) the WTO's Doha Declaration on the TRIPs Agreement and Public Health is an important milestone, as it recognises TRIPs as an international instrument for supporting public health objectives in Member states, not as an instrument for merely expanding IPRs;

vi) as a member of the U.N., WIPO must comply with and be guided by the broad development goals of the U.N.;

vii) despite WIPO already being mandated to take into account the U.N. system, the WIPO Convention (1967) shall be amended to ensure that the “development dimension� is inequivocally taken into account;

viii) WIPO treaties are generally extending existing obligations under the WTO's TRIPs Agreement, which unduly increases the burden put on developing and least developed countries, thus WIPO instruments should not expand upon TRIPs obligations;

ix) the WTO's TRIPs Agreement includes two articles – 7 and 8 – that set out objectives and principles for international instruments on knowledge goods. They call on these instruments to promote technological innovation, transfer and dissemination of technology, to the mutual advantage of producers and users so as to conduct to social and economic welfare, and to the balance of rights and obligations; adoption of measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to socio-economic and technological development, and to prevent the abuse of IP rights by right holders or the resort of practices which unreasonably restrain trade or adversely affect the international transfer of technology. Language drawn from these clauses should appear in all future WIPO instruments;

x) higher standards of IP protection have failed to foster the transfer of technology through foreign direct investment and licensing;

xi) besides including clear provisions on transfer of technology in treaties under negotiation in WIPO, a new subsidiary body within WIPO (Standing Committee on IP and the Transfer of Technology) shall be established in order to ensure an effective transfer of technology to developing countries, including the creation of an international regime that would promote access by the developing countries to the results of publicly funded research in the developed countries;

xii) creation of a Treaty on Access to Knowledge and Technology;

xiii) accordingly, it is important to bear in mind the relevance of open access models and knowledge sharing for the promotion of innovation and creativity, like free and open source software, as well as to safeguard the exceptions and limitations existing in domestic laws;

xiv) regarding enforcement, there must be a concern not only to take into account right holders, but its obligations as well, in a way that right holders take fair and equitable procedures, not restraining legitimate competition or abusing their rights (articles 8 and 40 of the TRIPs Agreement should be brought into WIPO's framework);

xv) WIPO, as a U.N. specialised agency, shall considerably expand programmes for technical cooperation in IP related matters and qualitatively improve them, as well; bearing in mind the requirements of U.N. operational activities: neutral, impartial and demand-driven;

xvi) all sectors of society should be served, including its participation in all norm-setting activity;

xvii) WIPO, besides being responsible for fostering the active participation of public interest non-governmental organisations, shall take appropriate measures to distinguish between user organisations representing the interests of IP right holders, and NGOs representing the public interest, in a way to prevent confusion and to make things more transparent;

xviii) WIPO shall jointly organise an international seminar with the WTO and UNCTAD on IP and development, with the active and unlimited participation of all relevant stakeholders, including public interest NGOs, civil society and academia; xix) WIPO could stablish a Working Group on the Development Agenda to further discuss the implementation of the Development Agenda and work programmes for WIPO, and

xx) the very credibility of the IP system is undermined if a vision that promotes the absolute benefits of IP protection without acknowledging public policy concerns is taken, thus the development dimension shall be brought into the IP system and WIPO's activities.

Is it any wonder why these folks are being branded as Marxist-Lessigists?
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New PCT Wheel Coming Soon

According to the March 2005 PCT Newsletter, a new PCT Wheel, containing priority dates from January 2004 to December 2005, is in the process of being printed. It has been necessary to redesign the wheel to take into account the amendments to the PCT Regulations which entered into force in January 2004, in particular, the new time limit for filing the demand.

As soon as the new wheel is available, we will insert it in the PCT Newsletter and announce its availability by e-mail via the PCT e-mail updating service and in the Newsletter. To subscribe, free-of-charge, to the PCT e-mail updating service, you simply go the PCT website (, click on “subscribe� in the box on the bottom right-hand corner of the screen, and then fill in your e-mail address.
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Gallery of Notable PCT Inventions and Inventors

Discover some of the notable inventions that have passed through the PCT system and some of the notable inventors who have used it. The Office of the Patent Cooperation Treaty (OPCT) welcomes suggestions for additions to its gallery of notable PCT inventions and inventors ( The main criterion used by the OPCT is acknowledgement—most often in the popular media—of the importance or contribution of the invention or inventor.

Suggestions for additions should be sent by e-mail to and should include citations of media references.
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Change in General PCT Fax Number

According to the March 2005 PCT Newsletter, the general PCT fax number of the International Bureau, which can be used for all PCT matters relating to specific international applications except those relating to the International Bureau as receiving Office, has changed, as follows: (41–22) 338 82 70. The previous general PCT fax number ((41–22) 740 14 35) will no longer be available as from 1 August 2005.

Note that faxes can also be sent to the processing team dealing with the international application concerned, the number for which can be found at the bottom of Form PCT/IB/301 (Notification of receipt of record copy).
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PCT Contracting States on March 1, 2005

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Archived updates for Friday, March 11, 2005

TGIF for Why There Are Over Six Million U.S. Patents

"Great minds don't think alike. If they did, the Patent Office would only have about fifty inventions." -- Wally, Dilbert's colleague and fellow engineer, on March 10, 2005

"Thank Goodness It's Friday." --Bill Heinze, Dilbert's fan and former engineer on March 11, 2005
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Infringement Beyond the Contemplation of Fair-Minded People

U.S. Pat. No. D321,347

In Colida v. Sharp Electronics Corp., et al. (Fed. Cir., March 9, 2004, not citeable as precedent), the differences between the ’347 patent and the CDM-7900 handset wer "so obvious and pronounced that Tony Colida’s allegation that the CDM-7900 handset infringes his patent and that the district court erred in granting summary judgment is beyond the reasonable contemplation of fair-minded people."
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Reverse Payments to Genric Drug Manufacturers OK'd

In Schering-Plough Corp. v. F.T.C., (11th Cir.; March 8, 2005), the court reversed the Federal Trade Commission’s "reverse payments" ruling:

Simply because a brand-name pharmaceutical company holding a patent paid its
generic competitor money cannot be the sole basis for a violation of antitrust
law. This alone underscores the need to evaluate the strength of the patent. Our
conclusion, to a degree, and we hope that the FTC is mindful of this, reflects
policy. Given the costs of lawsuits to the parties, the public problems
associated with overcrowded court dockets, and the correlative public and
private benefits of settlements, we fear and reject a rule of law that would
automatically invalidate any agreement where a patent-holding pharmaceutical
manufacturer settles an infringement case by negotiating the generic’s entry
date, and, in an ancillary transaction, pays for other products licensed by the
generic. Such a result does not represent the confluence of patent and antitrust
law. Therefore, this Court grants the petition for review. Accordingly, we SET
ASIDE the decision of the Federal Trade Commission and VACATE its cease and
desist order.
Schering-Plough holds a formulation patent for K-DUR, which gives the company the right to exclude infringing products into 2006. In 1995, Upsher- Smith and ESI Lederle filed separate Abbreviated New Drug Applications (ANDA) with the U.S. Food and Drug Administration (FDA) seeking to market generic versions of K-DUR. Schering-Plough brought separate actions against both companies alleging that their products infringed Schering-Plough's patent. In each case, Schering-Plough and the parties settled before trial. Under the settlements, licenses were agreed to allowing Upsher-Smith to bring its product to market in September 2001 and ESI Lederle to bring its product to market in January 2004.

The FTC Bureau of Competition in March 2001 filed a complaint in Washington, D.C. before an FTC administrative law judge charging that the patent litigation settlements involving K-DUR were anti-competitive and violated the Federal Trade Commission Act.

Schering-Plough was reported to be pleased with the ruling.
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