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Archived updates for Monday, February 12, 2007

Sock it to me at the airport?

"Sanitary Security Sock System"
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Archived updates for Friday, February 09, 2007

China Says Digital Radio Standard "Will Shake Few Foreign Companies' Dominance"

On January 20, 2007 the Chinese Ministry of Information Technology released a national standard on multi-channel digital radio coding and decoding technology for the digital radio industry. According to the State Intellectual Property Office, "The standard which be widely used in digital television and digital radio will shake few foreign companies' dominance in the field."

According to Nick Farrell at the Inquirer, "Although the Chinese standard is similar to the US one, there are enough differences to prevent foreign televisions being used." China is "pushing home-bred innovations and standards to be not so dependent anymore on foreign patents," adds the IP Dragon. Watch for more Chinese standards to affect your business.
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Archived updates for Thursday, February 08, 2007

EU Plant Variety Rights Case Law Database

The Community Plant Variety Office has a new database on Plant Variety Rights case law. It consists of a compilation of cases combined with a search tool.

The database provides summaries of case law exclusively in English. It also provides the full text judgments in their original language. Please note that the documents supplied are not the official version of the decisions taken by jurisdictions within the EU. If you wish to have access to the official text, please directly consult the organism which officially took the decision concerned.
The Community Plant Variety Office (CPVO) implements the European system for the protection of plant variety rights. The system allows intellectual property rights, valid throughout the Community, to be granted for plant varieties.
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Dealing Patents in the Idea Economy

"Patent trolls" are more accurately described as patent dealers because they act as market intermediaries in the patent market. Once the activities of patent dealers are isolated from other distinct problems that have been identified with the patent system, specifically the issuance of poor quality patents and the problem of the patent thickets, it becomes clear that the emergence of patent dealers marks a stage in the natural evolution of the patent market. Patent dealers make the patent market more efficient by realigning market participant incentives, making patents more liquid, and clearing the
patent market. The article concludes by rebutting the common complaints that patent trolls stunt innovation and spur unnecessary litigation.
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US BPAI Clarifies Interference Deposition Guidelines

Thanks to The Patent Propsector for noting that the USPTO Board of Patent Appeals and Interferences (BPAI) last month laid out a rare precedental ruling regulating attorney conduct during patent interference cross-examinations in Pevarello v. Lan, Patent Interference 105,394. The decision involved objections to the admissibility of evidence based on alleged violations of the Board's Cross Examination Guidelines, and includes the following admonitions:
  • Our guidelines are essentially those which appear in
    Hall v. Clifton Precision, a Division of Litton Systems, Inc.,
    15 150 F.R.D. 525 (E.D. Pa. 1993). We recommend that the practicing bar read Judge Gawthrop's opinion because the deposition philosophy expressed in his opinion was adopted by the Trial Section—now the Trial Procedures Section of the Trial Division. Many questions which the bar may have are answered in Judge Gawthrop's opinion. Fundamentally, however, it should be remembered that a deposition is an opportunity for an opposing counsel to have a conversation with the witness:

    "A deposition is meant to be a question-and-answer conversation between the deposing lawyer and the witness. There is no proper need for the witness's
    own lawyer to act as an intermediary, interpreting questions, deciding which questions the witness should answer and helping the witness to formulate answers." 150 F.R.D. at 528, col. 1.
  • Any objection to the admissibility of evidence during cross examination must be stated concisely and in a non-argumentative and non-suggestive manner and must include the legal basis for the objection.

  • Motions to exclude based on blanket objections will not be considered because blanket objections during a deposition fail to comply with Guideline.

  • It is up to the witness to indicate that the witness is confused. It is not up to counsel to note any confusion.

  • There is nothing wrong on cross examination to inquire into whether a witness would like to reconsider and possibly change or otherwise clarify direct testimony.

  • When a defending lawyer attempts to clarify what the witness said, the defending lawyer has determined that the Board's Guidelines do not apply. The lawyer takes over control of the case from the Board.

  • "I'm going to object because there's no question pending" translated into plain English means "Do not say anything more." If ever there was an example of improper coaching, this is it.

  • It is up to the witness to inform questioning counsel that the witness's testimony has been mischaracterized or misstated. The proper procedure would have been for counsel for Pevarello to clear up the "misstatement" on redirect.

  • In patent interference practice before the Board, there is no such thing as an objection to the form of the question.

  • The administrative patent judge assigned to manage an interference is "but a phone call away."

  • Absent a compelling reason, we counsel against any attempt to inquire on cross-examination into how direct testimony declarations came to be prepared:

"First, we can advise the bar that (1) we assume that ordinarily an attorney prepares at least the first draft of a declaration after discussion with the witness, (2) the witness is probably paid for time involved in testifying, either because the witness is an outside expert or is employed by the real party in interest, (3) drafts, possibly numerous drafts, are created and revised through discussions between the witness and the attorneys and (4) ultimately a draft is agreed to which is signed. We have
no problem whatsoever with the process.

"Second, a tension exists between (1) an inquiry into details of how a direct testimony declaration came to be prepared, on the one hand, and (2) both the attorney work product doctrine and attorney-client privilege, on the other hand. An attorney needs to be able to freely talk with a client witness or a non-client witness to formulate a litigation strategy (or even to see if there is a case to present). After-the-fact cross examination inquiries into declaration preparation tend to chill an inquiry an attorney might initially make into what the facts are and who should testify concerning particular facts.

"Third, what matters is what is said on the merits, e.g., (1) identification of credentials, (2) explanation of an invention, (3) explanation of prior art, (4) explanation why an invention sould not be expected to "work," (5) an underlying basis for opinions stated by experts and (6) events related to conception, diligence and actual reduction to practice. Cross examination to inquire into whether the witness has a basis for facts asserted and opinions stated in a declaration is fair game. Indeed, inquiry into facts and opinions should be the focus of cross examination.

"Obviously there will be cases where qualification of a witness and possible witness bias may need to be addressed and inquiry into these subjects is also fair game for cross examination. Cross examination which "sticks" to the relevant technical facts will shorten cross examination time and will probably be more effective in helping a party establish its position on a particular point."

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New Parties to WIPO-Administered Treaties in 2006

In 2006, the Paris Convention saw the adherence of Yemen and Montenegro made a declaration of continued application, bringing the total number of States to 171.

Bahrain, El Salvador, Guatemala, Honduras, Lao People’s Democratic Republic, Malaysia and Malta adhered to the PCT and Montenegro made a declaration of continued application, bringing the total number of States to 136.

Montenegro made a declaration of continued application in Montenegro of the Madrid Agreement and Protocol, bringing the total number of States in the Madrid Agreement to 57, while Botswana, Uzbekistan and Viet Nam adhered to the Madrid Protocol, bringing the total number of States to 71.

Brunei Darussalam and Samoa adhered to the Berne Convention and Montenegro made a declaration of continued application in Montenegro of the said Convention (3), bringing the total number of States to 163.
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New TTAB Citation Policy

The U.S. Trademark Trial and Appeal Board will now permit a party to bring to the TTAB's attention any prior decisions, even those that have not been designated as precedential, as follows:
  • The TTAB will continue its current practice of designating all finaldecisions as either precedential or not precedential. Unless specificallydesignated as precedential, an order on a motion should be considered notprecedential.
  • The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
  • A decision designated as not precedential is not binding upon the TTAB butmay be cited for whatever persuasive value it might have.
  • Citation to all TTAB decisions should be to the United States PatentQuarterly, if the decision appears therein; otherwise, to a USPTO publicelectronic database. If a non-precedential decision does not appear in theUnited States Patent Quarterly or the USPTO's public electronic databases,the citing party should append a copy of the decision to the motion orbrief in which the decision is cited.
  • Decisions of other tribunals may be cited to the extent allowed and forthe purposes permitted by the tribunal that issued the decision.
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USPTO Seeks Feedback on TEAS Form

The USPTO would like input as to how the the current Trademark Electronic Application System (TEAS) Response to Office Action (ROA) form could be changed to increase overall usage or reasons why electronic filing of ROA's may not meet applicants' needs. While the TEAS new application filing level is about 95%, the ROA form is only being used for approximately 50% of all responses.

Please send any ROA form feedback to If you would prefer to discuss this issue directly, please simply note this in an e-mail and provide your name and telephone number. The TEAS project manager will then call you at a later point.
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Archived updates for Wednesday, February 07, 2007

Free Webinar Series on Intellectual Property Rights In China

The U.S. Department of Commerce offers a monthly China IPR webinar series. The programs are free. However, preregistration is required. To register, send your contact information to A registration confirmation, and dial-in/log-in instructions will be sent to you a week before the program.

Upcoming Programs:
  • Civil IP Litigation in China-February 8, 2007 2:00pm – 3:30pm EST
  • Other 2007 Dates: March 8, April 12, May 10, June 14, July 12, August 9, September 13, October 11, November 8 and December 13

Past Programs Now Available for Viewing:

Mark Cohen on the Future of China's IP Regime: Mark Cohen, Senior IP attaché at the U.S. Embassy in Beijing will discuss priorities on the protection and enforcement of IP in China for 2007 and beyond. He will also share his views on the significant events of 2006. Most recently interviewed for CNBC, NPR, and featured in the Wall Street Journal, Mark Cohen is the US government's premier expert on China's IP system.-December 14, 2006 2:00pm - 3:30pm EST "Download Here"

The Latest on Trademark Protection in China: A discussion of China's Proposed Revisions to Trademark Law, Best Practices for Managing International Trademark Portfolios, Starbucks' Trademark Protection Strategies for China-November 9, 2006 2:00pm - 3:30pm EST "Download Here"

Stopping Fakes at China’s Trade Fairs: New Regulations and Initiatives Aimed at Protecting Intellectual Property Rights for Patents, Trademarks and Copyrights at Trade Fairs in ChinaCommerce Department Market Access and Compliance Division leads a discussion of best practices for protecting IP at Trade Fairs in China covering China’s new regulations and US initiatives.-October 12, 2006 2:00pm-3:30pm EST "Download Here"

Patent Protection in China: A briefing on China's Proposed Patent Law Amendments, and a Best Practices Panel discussion on Registration and Enforcement Strategies-September 14 from 2:00 pm - 3:00 pmPlease join U.S. Patent and Trademark Office Attorney-Advisor Elaine Wu in a discussion of China’s proposed Patent Law amendments, top industry concerns and recent delegation visit from China’s Patent office; Tom Moga, attorney at Butzel Long on registration options; and Skip Fisher, attorney at Schwabe, Williamson & Wyatt, P.C. on enforcement strategies. "Download Here"

The Battle at the Border - China’s Fake Products in the US -August 10 2:00pm - 3:30pm ESTStories from US law enforcement officers and border protection options for US companies "Download Here"

Industry Organizations: Innovative Programs to tackle China IPR Issues-July 13 2:00pm - 3:30pm ESTPresentations by industry organizations on programs to aid members protect their IP in China and direct China toward a better enforcement system "Download Here"

Joint Enforcement Actions -June 8 2:00pm - 3:30pm ESTA discussion of collaboration and joint efforts within industries for anti-counterfeiting and piracy enforcement in China. "Download Here"

China’s 2006 IPR Action Plan-May 18 2:00pm – 3:30pm ESTBriefing by China’s Counselor for Intellectual Property from the Embassy of the People’s Republic of China in the United States. "Download Here"

Latest on IPR in China: JCCT & Special 301-May 11 2:00pm – 3:30pm ESTBriefing by U.S. Government officials on the 2006 Joint Commission on Commerce and Trade (JCCT) and the Special 301 Report. "Download Here"
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Archived updates for Tuesday, February 06, 2007

Brits Feel Inventive Step Tougher than US Obviousness

On February 5, 2006, the U.K. Patent Office published the final report on the its "Public consultation on level of the inventive step required for obtaining patents:"

The overall message of the responses is that respondents are happy with current law and practice. Where there are difficulties, these are mostly confined to specific situations rather than ‘across the board’ failings. For example the ‘obvious to try’ formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents involved in that sector. There were also some suggestions that it is too easy to obtain a patent for software (computer implemented inventions), although it may be that, rather than this being an issue relating specifically to inventive step, it was part of a more general opposition to patents in this field. . . .

The Office is seen as slightly more generous in what it will allow than are the courts. To some extent this will be due to the greater wealth of evidence that is usually available in adversarial litigation, possibly including testimony of expert witnesses. Moreover, at the application stage, the Office gives the benefit of reasonable doubt to applicants where debatable questions of fact arise. This approach does not appear to give rise to problems in most areas and most respondents were satisfied with the approach. Generally, examiners are seen as responsive to arguments from the applicant to an appropriate degree.

The consultation document offered suggestions for potential amendments to the patent rules, but most respondents showed little enthusiasm for changing the law of inventive step. The opinion from all of the collective groups of patent professionals
who responded to the consultation was that change to statute or rules was neither necessary nor likely to be helpful. Respondents also showed little enthusiasm for changing the way in which inventive step is analysed in practice.

What users do however expect from the Office is a rigorous application of the existing law and legal precedents provided by the courts. In particular, where documents are combined to justify an objection to obviousness, an explanation should
usually be given as to why it is considered that the skilled man
would make such a combination. . . .

There is no evidence of any serious disparity between the UK Patent Office and the European Patent Office (EPO) when dealing with inventive step. It appears that, bar some minor variations, the UK and EPO are seen to be broadly equivalent in the ‘level’ of inventive step applied. This is reassuring given that both offices examine patents under (essentially) the same law. On the other hand, the United States Patent and Trademark Office (USPTO), which operates under a different legal framework, was felt by many to require a lower level of inventive step. Interestingly the Scandinavian countries (which operate within the European system) were felt to be somewhat stricter than the either UK or the EPO.

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FTC Sets Maximum Royalty Rates for Rambus Memory Technology

On February 5, 2007 the U.S. Federal Trade Commission issued its final order in the Rambus matter. In addition to barring Rambus from making misrepresentations or omissions to standard-setting organizations, the order also
  • requires Rambus to license its SDRAM and DDR SDRAM technology and sets maximum allowable royalty rates it can collect for the licensing,

  • bars Rambus from collecting or attempting to collect more than the maximum allowable royalty rates from companies that may already have incorporated its DRAM technology, and

  • requires Rambus to employ a Commission-approved compliance officer to ensure that Rambus’s patents and patent applications are disclosed to industry standard-setting bodies in which it participates.
According to the Opinion of the Commission:

"Royalty rates unquestionably are better set in the marketplace, but Rambus’s deceptive conduct has made that impossible. Although we do not relish imposing a compulsory licensing remedy, the facts presented make that relief appropriate and indeed necessary to restore competition. . . .

"[W]e find that a maximum royalty rate of .5% for DDR SDRAM, for three years from the date the Commission’s Order is issued and then going to zero, is reasonable and appropriate. We also find that a corresponding .25% maximum rate for SDRAM is appropriate. Halving the DDR SDRAM rate reflects the fact that SDRAM utilizes only two of the relevant Rambus technologies, whereas DDR SDRAM uses four. . . . "

In June 2002, the FTC charged Rambus with violating federal antitrust laws by deliberately engaging in a pattern of anticompetitive acts to deceive an industry-wide standard-setting organization, which caused or threatened to cause substantial harm to competition and consumers. The Commission complaint alleged that Rambus participated in the Joint Electron Device Engineering Council (JEDEC), a standard-setting organization that “maintained a commitment to avoid, where possible, the incorporation of patented technologies into its published standards, or at a minimum to ensure that such technologies, if incorporated, will be available to be licensed on royalty-free or otherwise reasonable and non-discriminatory terms.”

According to the FTC complaint, Rambus nonetheless participated in JEDEC’s DRAM standard-setting activities for more than four years without disclosing to JEDEC or its members that it was actively working to develop, and possessed, a patent and several pending patent applications that involved specific technologies ultimately adopted in the standards.
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USPTO Sets Record Low Allowance and Error Rates

According to statistics released by the U.S. Patent and Trademark Office, last year's 54% patent allowance rate also was the lowest on record. Last year also saw the lowest patent allowance error rate -- 3.5% -- in over 20 years.

On February 5, 2007, it was also announced that the fiscal year 2008 budget request for the United States Patent and Trademark Office (USPTO) is $1.916 billion. The proposed budget recommends "full access to the agency's anticipated fee collections," i.e. no fee diversion. In FY 2008, the USPTO anticipates hiring an additional 1,200 patent examiners and to continue expanding the agency's award-winning telework efforts.
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Archived updates for Monday, February 05, 2007

Fun with a Golf Club?

"Weed Cutting Golf Club"
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Archived updates for Friday, February 02, 2007

No Supplemental Jurisdiction in the U.S. for Infringement of Foreign Patents

In Voda, M.D. v. Cordis Corporation (February 1, 2007), the Federal Circuit held that the lower court erred in granting Voda leave to amend his complaint to add infringement claims based on foreign patents under 28 U.S.C. § 1367.

Voda’s amended complaint alleged infringement taking place outside the United States in violation of patents issued by various foreign countries.

Section 1367(a) provides the statutory authority for district courts to exercise supplemental jurisdiction over certain claims outside their original jurisdiction:

Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such
original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. Such supplemental jurisdiction shall include claims that involve the joinder or intervention of additional parties.

The Federal Circuit refrained from deciding whether Voda’s foreign patent infringement claims fall within the scope of the "same case or controversy" requirement of § 1367(a) and instead concluded that the district court’s exercise of supplemental jurisdiction over Voda’s foreign patent infringement claims was limited by Section 1367(c):

The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
(1) the claim raises a novel or complex issue of State law,
(2) the claim substantially predominates over the claim or
claims over which the district court has original jurisdiction,
(3) the district court has dismissed all claims over which it has original jurisdiction, or
(4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.

The lower court’s order contained no § 1367(c) analysis, and, according to the appellate court's opinion by Justic Gajarsa, "considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under § 1367(c) in this case. . ."

In summary, several reasons in this case would compel the district court to decline supplemental jurisdiction under § 1367(c): limitations imposed by treaties that are the "supreme law of the land" and considerations of comity, judicial economy, convenience, and fairness. The district court undertook none
of this analysis. Accordingly, we hold that the district court abused its discretion in exercising supplemental jurisdiction.
As with the § 1367(a) factors of Mars, this is a non-exhaustive list, not a test, for district courts to consider under § 1367(c). In addition, we emphasize that because the exercise of supplemental jurisdiction under § 1367(c) is an area of discretion, the district courts should examine these reasons along with others that are relevant in every case, especially if circumstances change, such as if the United States were to enter into a new international patent treaty or if events during litigation alter a district court’s conclusions regarding comity, judicial economy, convenience, or fairness. However, "[d]iscretion is not whim, and limiting discretion according to legal standards helps promote the basic principle of justice that like cases should be decided alike . . . a page of history is worth a volume of logic." eBay, 126 S. Ct. at 1841-42 (Roberts, C.J.,
concurring) (quotation marks and citations omitted).

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A Review of USPTO Electronic Office Action Delivery

In December 2006, the USPTO launched a beta test of its system of electronic office action delivery system. Under the new system, USPTO customers receive an email message from USPTO mentioning the serial number of the case that has received an Office Action. If the customer fails to log in and view the Office Action within a week, the USPTO drops a post card in the mail reminding the customer that the Office Action is there in Private PAIR, waiting to be viewed. If the customer subsequently views the Office Action within the one-week period, then no post card gets mailed.

Carl Oppedahl's firm is part of the test and he has offerrd these initial impressions on the EFS-Web list serv:

I would guess that of the last twenty Office Actions we received, we received ten post cards. In fifty percent of cases, our firm never got around to looking at the Office Action in IFW after receiving the email notification. In fifty percent of cases, USPTO found itself having to physically mail a post card to us.

How can that possibly be? How can a seemingly alert patent firm fail, in fifty percent of cases, to go look at an Office Action after receiving USPTO's email notification about the Office Action?

The answer is Partridge. We run Partridge every day, and when it says we have an Office Action, we go look in IFW and we download and view the Office Action. And we docket it, and we report it to the client, and we load the image of the Office Action into our database.

Most Office Actions are in cases that have been published (or to say this in different words, it is extremely rare that USPTO gets around to examining a case sooner than 18 months after filing). And USPTO says you are not allowed to install its crypto software on more than two computers. So sometimes the person in our office who downloads the Office Action into our
system is doing that using Public PAIR and not Private PAIR. Of course it does occasionally happen that an Office Action cannot be seen in Public PAIR but requires a secure login to see it -- a design case, or a US case in which there had been a Request Not To Publish. Or against all odds a case might get
examined sooner than 18 months. In those cases the only way to see the case is to log in to Private PAIR.

Anyway, we obtain an image of the Office Action, because Partridge told us it is there. The a day or two or three later (and it is *always* at least a day later) comes the email message from USPTO telling us about the Office Action. Well, at that point we have already viewed the Office Action so there is no reason for us to view it *again*, none at all. So a week later the post card gets mailed. Partridge, of course, sees this event in PAIR and
Partridge tells us that a post card was mailed to us. Three days later, the post card shows up in the mail. We haven't really made a decision around the office what to do with these post cards. As I say, out of the last twenty Office Actions, I think we received about ten post cards. We haven't quite decided whether to simply throw them away, or whether to carefully file them in our files.

Partridge tells us about the Office Action at least a day sooner than the beta-test email system, and often two days earlier. We have seen instances where it tells us three days earlier. There is no way we would willingly give up this extra day or two or three. We want to know of an Office Action as soon as is humanly possible, so that we can docket it sooner, and report it to the client sooner. And respond to it sooner (sometimes if the issues are formal issues we can respond the same day) and the patent gets issued sooner.

A second reason we would never give up Partridge is that it tells us a wealth of things that the email system does not. Partridge will tell us that an IDS has been considered, and that very fact tells us that the Examiner has picked up the case and is examining it, and likely as not we will see a first Office Action within a week or two. Partridge will tell us that the Examiner has changed, so we know to ring up the new Examiner to introduce ourselves and keep the case moving along. Partridge will tell us that a case that had a filing date has lost the filing date (because OIPE pulled the case back) and we know to start pestering OIPE to restore the filing date. Partridge will tell us that a case has received a filing date, so that we know
we can now for the first time order the urgently needed certified copy for Paris purposes. Partridge will tell us that a case has gained or lost some item of continuity data or foreign priority, so we know to get on it right away if OIPE has mistyped a serial number or overlooked some item of priority.

Partridge will tell us if a continuation or divisional has been filed, which is of particularly great interest to us if we did not ourselves file that continuation or divisional application. One wonders what might be done differently in future so as to reduce the number of unnecessary mailed post cards.One thing is that (as far as we can tell) the setting of the one-week timer is presently getting triggered by the mailing of the email message. Maybe it would be better if the setting of the one-week timer were triggered instead by the loading of the Office Action
into IFW. If USPTO were to do that, then when we learn of the Office Action by means of Partridge and download the Office Action from IFW, that would clear the timer and no post card would be needed. Of course this only works if the way we obtained the Office Action from IFW is from Private PAIR. If in a particular case we obtain the Office Action from IFW from public PAIR, then USPTO has no way to know who exactly it is that downloaded the Office Action and thus ought not to clear the timer.

But I suppose maybe it is two-thirds of the time that when we download an Office Action from IFW, it is from Private PAIR and not Public PAIR. And so it would be possible for USPTO to detect that we downloaded the Office Action, and thus it would be possible for USPTO to clear the timer, and then USPTO would not need to mail the post card. Importantly, it would not even be needed for USPTO to send the email notification.

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