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Archived updates for Thursday, November 09, 2006

I/P Updates on Hiatus

But we're still keeping up with all the news and information for intellectual property practitioners. If that's something that you look for in an attorney, then drop me a line.


William F. Heinze
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948 (USA)

Tel.: (770) 738-2382
Fax: (770) 951-0933
Mobile: (404) 729-0729
E-Mail: (business)
E-Mail: (personal)
News Service:
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Archived updates for Tuesday, November 07, 2006

USPTO Eliminating Disclosure Document Program

Effective February 1, 2007, the U.S. Patent and Trademark Office is eliminating the Disclosure Document Program.

The United States Patent and Trademark Office (Office) implemented the Disclosure Document Program in 1969 in order to provide an alternative form of evidence of conception of an invention to, for example, a ‘‘self-addressed envelope’’ containing a disclosure of an invention. It appears, however, that few, if any, inventors obtain any actual benefit from a disclosure document, and some inventors who use the Disclosure Document Program erroneously believe that they are actually filing an application for a patent. In addition, a provisional application for patent affords better benefits and protection to inventors than a disclosure document and could be used for the same purposes as a disclosure document if necessary.
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Archived updates for Monday, November 06, 2006

What's New in Law Department Management

A recent set of posts from the "Law Department Management" blog by Rees Morrison: CMC
  1. Two more techniques to calculate the value delivered by a law department (DaimlerChrysler UK)
  2. Worry when your primary law firms require 2000 minimum billable hours a year!
  3. To measure a process-improvement ratio is a fool’s errand
    One laughable metric (total liability); one new metric (budget to actual)
  4. Law departments compared to tax departments on management
  5. Payments to firms based on Total Cost of Resolution (TCR)
  6. Notional cost per hour to calculate value delivered by a law department (DaimlerChrysler UK)
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Archived updates for Friday, November 03, 2006

TGIF for Deadbeat Clients . . .

. . . who refuse to pay their bills, complain to the managing partner, and then ask for free subscriptions to the "I/P Updates" news service.

Thank Goodness It's Friday (and necessity isn't always the mother of invention),

--Bill Heinze
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Creative Commons and Revver Video-Hack for Charity

Watch this clip by Justin Cone, who won Creative Commons' Moving Images Contest, to learn how CC works and make them some money:

Creative Commons has now uploaded all of their short videos to Revver, a video-sharing platform that uses Creative Commons licenses to help creators make money from their work. Revver attaches a short ad at the end of each video on its network. When a viewer clicks on the ad, Revver splits the resulting ad revenue with the video's creator. Usually, it's a 50/50 split, but Revver is generously giving Creative Commons 100% of the money the videos make through the end of CC's fundraising campaign on December 31, 2006.

Want more? Check out Creative Commons newest clip — "Wanna Work Together?"
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Archived updates for Thursday, November 02, 2006

Anticircumvention Prohibition Regulations Extended

On October 28, 2006, the Librarian of Congress announced that he has temporarily extended the existing regulation designating the classes of works subject to an exemption from the prohibition on circumvention of technological measures that control access to copyrighted works. The prohibition on circumvention in 17 U.S.C. § 1201(a)(1) shall not apply to persons who engage in noninfringing uses of works in the classes of works currently set forth in 37 CFR § 201.40(b).

Within the next few weeks, the Librarian shall announce the new classes of works to be subject to exemption during the period ending October 27, 2009.
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Purpose and Meaning of Work Supports Transformative Nature of Jeff Koons' Copying

In Blanch v. Koons, 05-6433 (Oct. 26, 2006), the Second Circuit concluded that Jeff Koons' appropriation of "Silk Sandals by Gucci" by Andrea Blanch from the August 2000 issue of Allure magazine (above) for his "Niagra" collage (below) was fair use.

To create the “Easyfun-Ethereal” paintings, Koons culled images from advertisements or his own photographs, scanned them into a computer, and digitally superimposed the scanned images against backgrounds of pastoral landscapes. He then printed color images of the resulting collages for his assistants to use as templates for applying paint to billboard-sized, 100 x 140 canvasses. The “Easyfun-Ethereal” paintings, seven in all, were exhibited at the Deutsche Guggenheim Berlin from October 2000 to January 2001.

Like the other paintings in the series, “Niagara” consists of fragmentary images collaged against the backdrop of a landscape. The painting depicts four pairs of women's feet and lower legs dangling prominently over images of confections-a large chocolate fudge brownie topped with ice cream, a tray of donuts, and a tray of apple danish pastries-with a grassy field and Niagara Falls in the background. The images of the legs are placed side by side, each pair pointing vertically downward and extending from the top of the painting approximately two-thirds of the way to the bottom. Together, the four pairs of legs occupy the entire horizontal expanse of the painting.

In an affidavit submitted to the district court, Koons stated that he was inspired to create “Niagara” by a billboard he saw in Rome, which depicted several sets of women's lower legs. By juxtaposing women's legs against a backdrop of food and landscape, he intended to “comment on the ways in which some of our most basic appetites-for food, play, and sex-are mediated by popular images.” According to Koons, “certain physical features of the legs [in the photograph] represented for me a particular type of woman frequently presented in advertising.” He considered this typicality to further his purpose of commenting on the “commercial images ··· in our consumer culture.” Koons Aff. at ¶ 10.

Koons scanned the image of “Silk Sandals” into his computer and incorporated a version of the scanned image into “Niagara.” The legs from “Silk Sandals” are second from the left among the four pairs of legs that form the focal images of “Niagara.” Koons did not seek permission from Blanch or anyone else before using the image.

Deutsche Bank paid Koons $2 million for the seven “Easyfun-Ethereal” paintings. Koons reports that his net compensation attributable to “Niagara” was $126,877. Deutsche Bank received gross revenues of approximately $100,000 from the exhibition of the “Easyfun-Ethereal” paintings at the Deutsche Guggenheim Berlin, a total that includes admission fees and catalogue and postcard sales. The record does not reflect Deutsche Bank's expenses for that exhibition other than the commission of the paintings.

The subsequent exhibition of the paintings at the Solomon R. Guggenheim Museum in New York sustained a net loss, although when profits from catalogue and postcard sales are taken into account, Guggenheim estimates that it earned a profit of approximately $2,000 from “Niagara.” fn.2 In 2004, the auction house Sotheby's reportedly appraised “Niagara” at $1 million. The work has not, however, been sold, nor does the record indicate that it or any other painting commissioned by Deutsche Bank has been offered for sale or been the subject of a bid.

Allure paid Blanch $750 for “Silk Sandals.” Although Blanch retains the copyright to the photograph, she has neither published nor licensed it subsequent to its appearance in Allure. Indeed, Blanch does not allege that she has ever licensed any of her photographs for use in works of graphic art or other visual art. At her deposition, Blanch testified that Koons's use of the photograph did not cause any harm to her career or upset any plans she had for “Silk Sandals” or any other photograph in which she has rights. She also testified that, in her view, the market value of “Silk Sandals” did not decrease as the result of Koons's alleged infringement.

Koons has been the subject of several previous lawsuits for copyright infringement. In the late 1980s, he created a series of sculptures for an exhibition entitled the “Banality Show” (“Banality”). In doing so, he commissioned large three-dimensional reproductions of images taken from such sources as commercial postcards and syndicated comic strips. Although many of the source images were copyrighted, Koons did not seek permission to use them. In separate cases based on three different sculptures from “Banality,” two district courts concluded that Koons's use of the copyrighted images infringed on the rights of the copyright holders and did not constitute fair use under the copyright law. See Rogers v. Koons, 960 F.2d 301 (2d Cir.), cert. denied, 506 U.S. 934 (1992); Campbell v. Koons, No. 91 Civ. 6055, 1993 WL 97381, 1993 U.S. Dist. LEXIS 3957 (S.D.N.Y. Apr. 1, 1993); United Feature Syndicate v. Koons, 817 F.Supp. 370 (S .D.N.Y.1993).

Unlike in those decisions, the Second Circuit concluded here that the use in question was transformative:

Koons asserts-and Blanch does not deny-that his purposes in using Blanch's image are sharply different from Blanch's goals in creating it. Compare Koons Aff. at ¶ 4 (“I want the viewer to think about his/her personal experience with these objects, products, and images and at the same time gain new insight into how these affect our lives.”) with Blanch Dep. at 112-113 (“I wanted to show some sort of erotic sense[;] ··· to get ··· more of a sexuality to the photographs.”). The sharply different objectives that Koons had in using, and Blanch had in creating, “Silk Sandals” confirms the transformative nature of the use. See Bill Graham Archives, 448 F.3d at 609 (finding transformative use when defendant's purpose in using copyrighted concert poster was “plainly different from the original purpose for which they were created”); see also 17 U.S.C. § 107(1) (first fair-use factor is the “ purpose and character of the use” (emphasis added)).

Koons is, by his own undisputed description, using Blanch's image as fodder for his commentary on the social and aesthetic consequences of mass media. His stated objective is thus not to repackage Blanch's “Silk Sandals,” but to employ it “ ‘in the creation of new information, new aesthetics, new insights and understandings.” ’ Castle Rock Entm't, 150 F.3d at 142 (quoting Leval, supra, 103 Harv. L.Rev. at 1111). When, as here, the copyrighted work is used as “raw material,” Castle Rock Entm't, 150 F.3d at 142 (internal quotation marks and citation omitted), in the furtherance of distinct creative or communicative objectives, the use is transformative. Id.; see also Bill Graham Archives, 448 F.3d at 609 (use of concert posters “as historical artifacts” in a biography was transformative); Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113 (2d Cir.1998) (parody of a photograph in a movie poster was transformative when “the ad [was] not merely different; it differ[ed] in a way that may reasonably be perceived as commenting” on the original).

The test for whether “Niagara's” use of “Silk Sandals” is “transformative,” then, is whether it “merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Campbell, 510 U.S.
at 579 (internal quotation marks and citation omitted, alteration incorporated); Davis, 246 F.3d at 174 (same). The test almost perfectly describes Koons's adaptation of “Silk Sandals”: the use of a fashion photograph created for publication in a glossy American “lifestyles” magazine-with changes of its
colors, the background against which it is portrayed, the medium, the size of the objects pictured, their details and, crucially, their entirely different purpose and meaning-as part of a massive painting commissioned for exhibition in a German art-gallery space. We therefore conclude that the use in question was transformative.

. . . Because Koons's appropriation of Blanch's photograph in “Niagara” was intended to be-and appears to be-“transformative,” because the creation and exhibition of the painting cannot fairly be described as commercial exploitation and the “commerciality” of the use is not dispositive in any event, and because there is insufficient indication of “bad faith,” we agree with the district court that the first fair-use factor strongly favors the defendants.

More about Jeff Koons here.
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Tips from the Federal Circuit Court of Appeals

In an effort to assist counsel in filing briefs and motions that comply with the Federal Rules of Appellate Procedure, the Federal Circuit's Clerk's Office has prepared lists of the "Top Ten Reasons" why such documents are rejected. Click here for the Top Ten Reasons Why Briefs Are Rejected, and here for the Top Ten Reasons Why Motions Are Rejected.
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Archived updates for Wednesday, November 01, 2006

U.S.D.O.J. Provides IP Guidance on VITA Standards-Setting Policy

On October 30, 2006, the U.S. Department of Justice announced that it would not oppose a proposed policy by the VMEbus International Trade Association on disclosure and licensing of patents during its standards settings process. Among other things, the policy requires declaration of a maximum royalty rate that "may become essential to implementation of a draft VSO specification."

The current proposal requires each working group member to make a "good faith and reasonable inquiry" into the patents owned, controlled, or licensed by the company she represents(13) and to disclose all patents or patent applications that the company owns, controls, or has a license to, that she believes may become essential to the VSO specification the working group is developing. With regard to timing, the proposed policy identifies three specific periods during the standard-setting process when working group members must identify any previously undisclosed essential patents, patent applications, and third-party patents.

First, a VITA member that proposes a new specification must make a patent declaration before a working group is formed to begin drafting the specification. Second, all working group members must make declarations within sixty days after the working group is formed. Third, all working group members must make declarations within fifteen days after the draft specification is published. In addition to these three specific periods, the proposed policy requires each working group member to disclose any previously undisclosed essential patents at the beginning of all face-to-face meetings of the working group. Any such disclosures made at face-to-face meetings must be followed by a declaration within thirty days.(19)

A working group member who fails to disclose a known essential patent, and/or fails to declare the associated most restrictive licensing terms according to the timing process described above, commits the VITA member company he or she represents to license the essential claims of the undisclosed patent for implementation of the VITA standard to all interested parties on a royalty-free basis and with the restricted non-price terms.(21)

According to the Justice Department:

VITA's proposed patent policy is an attempt to preserve competition and thereby to avoid unreasonable patent licensing terms that might threaten the success of future standards and to avoid disputes over licensing terms that can delay adoption and implementation after standards are set. The proposed policy does so by requiring working group members to disclose patents and patent applications that may become essential to implement a draft VSO standard, to commit to license on FRAND terms, and unilaterally to declare the most restrictive
licensing terms that will be required. In addition, the proposed policy establishes an arbitration process which may be used to resolve compliance disputes. Adopting this policy is a sensible effort by VITA to address a problem that is created by the standard-setting process itself. Implementation of the proposed policy should preserve, not restrict, competition among patent holders. Any attempt by VITA or VSO members to use the declaration process as a cover for price-fixing of downstream goods or to rig bids among patent holders, however, would be summarily condemned.

The Department has no present intention to take antitrust enforcement action against the conduct you have described. This letter expresses the Department's current enforcement intention. In accordance with our normal practices, the Department reserves the right to bring an enforcement action in the future if the actual operation of the proposed conduct proves to be anticompetitive in purpose or effect.

In its press release, VITA claims that it is now "the first standards developer in the world to receive guidance for 'ex ante' procedures from any legal authority."
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Patent Invalidity Holding In Different Lawsuit Did Not Terminate Royalty Obligation

In Go Medical Indus. v. Inmed Corp. (October 27, 2006), the Federal Circuit concluded that a holding of patent invalidty won by a third party in a different lawsuit did not relieve the defendent from its royalty obligations in this case:

The district court erred in applying the Lear doctrine to relieve MMG of the obligation to pay any royalties after the finding of patent invalidity during Go's litigation against C.R. Bard in March 1999. That ruling had no effect on the contractual relationship between Go and MMG. Although the 1997 amendment tied the term of the contract to the life of the '259 patent, the license did not automatically terminate with the district court's ruling, as MMG believed, because the invalidity finding was still pending appeal. In fact, MMG's June 21, 1999 letter to Go stated that it was placing its royalty payments "in an escrow account until such time as the appeal is decided" (emphasis added). This was an implicit acknowledgment that Go was entitled to the royalty payments, meaning the funds would be transferred out of escrow, in the event that the district court's invalidity finding was reversed.

Moreover, MMG's June 21, 1999 letter did not state that its reason for ceasing payment of royalties was that it deemed the '259 patent to be invalid. Instead, it merely indicated that MMG was placing its royalty payments in escrow until the validity of the patent was resolved on appeal. (Even if it had been sufficient to constitute the requisite notice, the district court still erred in finding that Lear relieved MMG from all royalty payments after March 1999 instead of the date of this notice—i.e., June 1999.)

MMG is trying to have it both ways. As the exclusive U.S. distributor of the urinary catheter described in the '259 patent, MMG not only urged Go to sue C.R. Bard, but was the primary beneficiary when we later reversed the invalidity finding from that litigation. Significantly, it did not file its own declaratory judgment suit to challenge the patent's validity after it learned about the district court's March 1999 ruling. Indeed, until the agreement was terminated by Go in August 1999, MMG was contractually obligated to share the costs of enforcing the '259 patent, including the costs of pursuing the appeal.

Because the district court misapplied the Lear doctrine, we vacate and remand for a recalculation of the contract damages.

In Lear, the Supreme Court held that a licensee was not estopped from challenging the validity of the licensor's patent. 395 U.S. at 671. A licensee may cease payments due under a license—i.e., contractual royalty provisions will not be enforced—during the time it is challenging patent validity in the courts. However, the Lear doctrine does not prevent a patentee from recovering royalties until the date the licensee first challenges the validity of the patent. Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1568 (Fed. Cir. 1997). In other words, a licensee "cannot invoke the protection of the Lear doctrine until it (i) actually ceases payment of royalties, and (ii) provides notice to the licensor that the reason for ceasing payment of royalties is because it has deemed the relevant claims to be invalid."
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USPTO EFS-Web Slowdown and Maintenance

This just in from the USPTO Electronic Business Center on November 1, 2006:
Dear EFS-Web Users:

We are aware that some of our customers are currently experiencing problems with response time in EFS-Web. Resolving this problem is our highest priority. We understand that our continued success is based on your
confidence level in EFS-Web, and we apologize for the inconvenience and appreciate your patience while resolving the problem.

Thank you,

The EFS-Web Team

The following USPTO systems will be unavailable on Sunday, November 5, 2006, starting at 1:00 AM and ending at 5:00 due to system maintenance:
  • Public and Private Patent Application Information Retrieval (PAIR);
  • Electronic Filing System WEB (EFS-Web);
  • Electronic Freedom of Information Act (eFOIA);
  • Revenue Accounting and Management (RAM); and
  • Trademark Electronic Application System (TEAS) for both domestic filings and filings under the Madrid.

The USPTO’s Electronic Trademark Trial and Appeals (ESTTA) system will be unavailable on Saturday, November 4, 2006, starting at 10:00 PM and ending at midnight.

The USPTO’s Electronic Trademark Assignment System (ETAS) will be unavailable on Thursday, November 2, 2006, starting at 12:01 AM and ending at 1:00 AM due to server maintenance.

The USPTO’s Electronic Patent Assignment System (EPAS) will be unavailable on Thursday, November 2, 2006, starting at 12:01 AM and ending at 1:00 AM due to server maintenance.

The USPTO Enterprise Call Center (ECC) will be unavailable to accept customer calls at 1-800-786-9199 and 571-272-1000 on Sunday, November 5, 2006, starting at 12:01 AM and ending at 2:00 AM due to system maintenance.

Current USPTO system status reports here.

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C-I-P Claim to Best Mode Leads to Invalid Parent Application

In Go Medical Indus. v. Inmed Corp. (October 27, 2006), the claims of continuation-in-part U.S. Patent No. 4,652,259 required a catheter sheath to be inserted "about 1.5 cm" or up to a "known position of maximum pressure" because most of the bacteria are concentrated in the first 1.5 cm to 2 cm of the urethra, due to a natural pressure barrier located about 1.5 cm from the outer end. The question before the Federal Circuit was whether the inventor failed to satisfy the best mode requirement in the parent application where the 1.5 cm distance was not disclosed.

According to the opinion by Chief Judge Michel:

In determining whether the best mode requirement of 35 U.S.C. § 112, ¶ 1 is met, we first determine whether Dr. O'Neil subjectively considered a particular mode of practicing the invention to be superior to all other embodiments at the time the 1979 application was filed. See, e.g., Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1223 (Fed. Cir. 2006). If so, we
then ask whether he provided a sufficient disclosure to allow others to practice that best mode. Id.

As to the first prong of this test, Dr. O'Neil admitted during his deposition that at the time he filed his patent application in 1979, he had already made sample catheters where the distance from the stop member to the distal end of the sheath was 1.5 cm. He further characterized it as "the preferred embodiment at that stage." O'Neil Dep. 228:12-14, Sept. 21, 1994. The '259 patent, at col.2, ll.65-69, describes this distance as "crucial" to
preventing bacteria from being pushed into the bladder by the catheter or by the sheath itself. The district court thus correctly concluded that Dr. O'Neil possessed a best mode—i.e., a sheath length of 1.5 cm. SJ Order, slip op. at 13.

We also agree with the district court that the 1979 application lacked sufficient disclosure to allow others to practice the best mode. Id., slip op. at 14. There is no dispute that the preferred length of 1.5 cm was not expressly disclosed. Dr. O'Neil even testified at his deposition that when drafting the 1979 application, he purposely "avoid[ed] any comment with relation to length" because he "was aware that numbers would become limiting themselves." O'Neil Dep. 228:23-229:6.

Nor were the drawings submitted with the 1979 application sufficient. There is no indication that Figure 1 was drawn to any particular scale, much less one where the distance between the "X" and the outer end of the urethra is exactly 1.5 cm. "[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the pecification is completely silent on the issue." Hockerson-Halberstadt, Inc. v. Avia Group. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000); see also In re Wright, 569 F.2d 1124, 1127 (C.C.P.A. 1977) ("Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."). Moreover, Dr. O'Neil also testified that "[i]t took [him] a few weeks of experiments to define the distance" and others would "have to do a small amount of experimental work" to reach the same conclusion. O'Neil Dep. 229:12-19. In other words, one of ordinary skill would not know from reading the 1979 application that the preferred length between the stop member and the distal end of the sheath was 1.5 cm.

In sum, we conclude that the invention of the '259 patent was not disclosed in the 1979 application in a manner that satisfies the best mode requirement—and no reasonable jury could find otherwise—such that Go is not entitled to claim the priority date of that application. Thus, the 1982 article anticipates. In light of this ruling, we need not address whether the district
court erred in finding that the 1979 application also failed to meet the written description requirement. We affirm the grant of summary judgment of patent invalidity.

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More Strikes at the European Patent Office

According to Helena Spongenberg writing for EUOBSERVER/FOCUS on October 25, 2006, patent examiners at the Munich-based European Patent Office (EPO) held a "staff rally" strike on Wednesday (25 October) due to quality v. quantity concerns over the implementation of a new system in 2007 to assess the work of the examiners. Emma Barraclough adds in Managing Intellectual Property on October 30, 2006, that EPO patent examiners are holding further strikes this week to protest against the introduction of a new way of assessing their productivity.

According to the Staff Union of the EPO (SUEPO) website these "industrial actions" have been sparked off by a number of issues, including
a move by the Office for the introduction of a new reporting system for examiners, ironically labelled PAX. Staff are objecting to the focus on and drive for production (measured in patents granted) at the expense of recognition of quality and the time required to examine patentability to a high level of legal certainty. So far, the cumulative participation of strike actions this year is conservatively estimated at well over 7500 man-days.
A declaration was passed by Munich staff as part of a demonstration outside of the Administrative Council also demands that the President of the EPO:
  • respect the requirements of the European Patent Convention and the EPO Service Regulations, and stop the further degradation of the Service Regulations,
  • respect prior commitments of the administration concerning the reporting system and the pension contributions,
  • give staff both the technical means and the time to fulfil their obligations vis-à-vis the European public as demanded from them by the European Patent Convention,
  • put an immediate stop to the degradation of the rights and working
    conditions of the EPO Staff, which degradation does not seem justified by any internal or external necessities.
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Twenty-Seven Minutes at the USPTO

“Promoting Innovation: Today’s USPTO” is a video program about the agency’s history, what it does, how it works and why it is a vital part of our economy and culture. You can view the 27-minute video now at the following links:
View Video [requires RealPlayer ]
Video with Caption. [requires RealPlayer version 10 or later]
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USPTO Forms Updated in September 2006

The following U.S. Patent and Trademark Office Forms were updated in September 2006:

PTO-2038 Credit Card Payment Form and Instructions

SB08A (pg 1)SB08B (pg 2) Information Disclosure Statement by Applicant. Click Here for a listing of kind codes used on U.S. patent documents.

SB25 Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application

SB26 Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patent

SB30 Request for Continued Examination (RCE) Transmittal

SB32 Request for Oral Hearing before the Board of Patent Appeals and Interferences

SB47 "Fee Address" Indication Form

SB62 Terminal Disclaimer to Accompany Petition (Period Specified)

SB63 Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)

SB64 Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [2 pages]

SB64a Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))

SB96 Statement Under 37 CFR 3.73(b)

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TRIPS Council Enforcement Discussions Stall

According to BRIDGES Weekly Trade News Digest on November 1, 2006, fundamental disagreements persisted during debates on the enforcement of intellectual property rights (IPR) at the WTO Council for Trade-related Aspects of Intellectual Property (TRIPS) which met on 25-26 October:

These discussions are being driven largely by the EU which has been pushing for the implementation of effective measures to enforce IPRs at the regional and international levels, for instance through the EU Directive on criminal measures aimed at ensuring the enforcement of IPRs and proposals in the TRIPS Council.

In a paper submitted jointly with the US, Switzerland and Japan, the EU highlighted the need for intervention from the TRIPS Council to assist efforts to curb the rapid increase in piracy and counterfeiting world wide. While the EU recognised that Members are allowed to implement suitable enforcement provisions domestically, it felt that such measures must ultimately help to achieve the objectives of the TRIPS Agreement. The EU has previously submitted a paper (IP/C/W/448) suggesting that the Council should assess Members' compliance with the TRIPS Agreement's enforcement provision (see BRIDGES Weekly, 22 June 2005,

During the Council meeting, several developing countries, including China, Chile, India, South Africa, Argentina and Brazil, strongly opposed the initiative and objected to a presentation by the EU on its experiences, which they felt would amount to implicitly accepting the EU's proposal to share country experiences. The developing countries felt that enforcement was an issue outside the scope of the TRIPS Agreement. Referring specifically to Article 1.1 of the TRIPS Agreement, which stipulates that Members are free to determine the appropriate method to implement the TRIPS Agreement's provisions, they argued that discussing enforcement in the TRIPS Council would mean restraining countries' flexibility to draft domestic legislation on this issue.

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