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Archived updates for Wednesday, May 20, 2009

Website "Means" Requires Algorithm Disclosure

In Ex parte Catlin, __ Westlaw __ (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C.  Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:
According to Administrative Patent Judge Horner,
. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

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UKIPO "Green Channel" for Expedited Searching and Examination of Eco-Friendly Technology; SIPO to Follow

The UK Intellectual Property Office has initiated a "Green Channel" where applicants will be able to request accelerated processing of their application if the invention relates to a 'green' or environmentally-friendly technology.  To enter the Green Channel, the applicant must make a request in writing, indicating:
  • that their application relates to a ‘green’ or environmentally-friendly technology and
  • which actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.

The Office will require no further reasons for accelerated processing.  This service will apply to existing applications as well as to applications filed after May 12, 2009. You can find further information about the various accelerated services in the patents fast grant guidance.

According to the press release, "the ‘green’ patents initiative was one of the key deliverables announced at the UK/China Economic and Financial Dialogue on May 11, with China already agreeing to adopt the proposal.  The Intellectual Property Office is working with other major trading partners to get them to sign-up to the green patents fast-track system."

In the U.S., so-called "petitions to make special" (except those based on applicant’s health, age, or the PPH pilot program), are required to comply with the detailed requirements for the accelerated examination program as set forth in this notice.

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Federal Circuit Standard of Review for ITC Decisions

In Erbe Elektromedizin GMBH v. International Trade Commission (Fed. Cir. 2009; May 19, 2009), the court restated its standard of review for decisions of the U.S. International Trade Commission:
We review the rulings of the ITC under the Administrative Procedure Act, 5 U.S.C. § 706. 19 U.S.C. § 1337(c); Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). "Rulings of law by the ITC are reviewed for correctness, and findings of fact are reviewed to ascertain whether they were supported by substantial evidence on the record as a whole." Osram, 505 F.3d at 1355. . . . 

We review claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). We generally do not construe claim language to be inconsistent with the clear language of the specification; "[u]sually, it is dispositive." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). . . .

. . . the fundamental disagreement between the parties boils down to whether fixed optics are a "working channel." . . . the parties agree that infringement requires the accused devices to be used with an endoscope having at least two "working channels" and that the accused devices have only a single "working channel" if the fixed optics are not a "working channel." Based on our claim construction, the ITC correctly concluded that ERBE presented no evidence that any accused device had been used with an endoscope that had at least two "working channels" and, therefore, that there was no evidence of direct infringement and thus no basis for finding induced or contributory infringement. In light of this holding, we need not address the other arguments raised on appeal. Accordingly, we affirm.

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Archived updates for Friday, May 01, 2009

Federal Circuit Clarifies Materiality Test for Geographically Deceptively Misdescriptive Marks

In In re Spirits International, N.V., (April 29, 2009), the U.S. Court of Appeals for the Federal Circuit vacated the TTAB's decision in which the Board found the mark MOSKOVSKAYA to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here  via the TTABlog). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived:

In this case, as in every case, in order to establish a prima facie case of materiality there must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark. Here the Board properly recognized that in order to be deceptive, foreign language marks must meet the requirement that “an appreciable number of consumers for the goods or services at issue will be deceived.” In re Spirits, 86 USPQ2d at 1085.

The problem with the Board’s decision is that it elsewhere rejected a requirement of proportionality, and discussed instead the fact that Russian is a “common, modern language[] of the world [that] will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue,” such number being in this case 706,000 people, according to the 2000 Census. Id. The Board, however, failed to consider whether Russian speakers were a “substantial portion of the intended audience.” Because the Board applied an incorrect test, a remand is required.

We express no opinion on the ultimate question of whether a substantial portion of the intended audience would be materially deceived. We note that only 0.25% of the U.S. population speaks Russian. Appellant’s Br. 26. If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

We remand to the Board for a determination of whether there is a prima facie case of material deception under the correct legal test in the first instance. Because of our disposition on the question of the prima facie case, we do not reach the questions raised by the appellant as to the Board’s rejection of the survey as rebutting the prima facie case, though we note that the Board’s holding as to this issue was heavily influenced by its incorrect view of materiality.

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USTR Releases 2009 Special 301 Report

The Office of the U.S. Trade Representative (USTR) released its annual “Special 301” Report on April 30, 2009 covering the adequacy and effectiveness of intellectual property rights (IPR) protection by U.S. trading partners.    Significant developments in this year’s Report include: 

·         Canada is being elevated to the Priority Watch List for the first time, reflecting increasing concern about the continuing need for copyright reform, as well as continuing concern about weak border enforcement. 

·         USTR is also elevating Algeria and Indonesia to the Priority Watch List, reflecting growing concern about the IPR situation in those countries.  

·         Korea is being removed from the Watch List in recognition of the significant improvements it has made during the past year, and the Korean Government’s policy direction of continuing to place a priority on improving its IPR regime.  This marks the first time in the history of the report that Korea has not appeared on either the Watch List or the Priority Watch List.  USTR will, however, continue to monitor closely the ongoing problem of Internet piracy in Korea, and will be prepared to consider returning Korea to the Watch List in the future if it does not respond effectively to this challenge through its implementation of newly enacted legislation and other steps. 

·         Again this year, USTR’s Special 301 Report highlights the prominence of IPR concerns with respect to China and Russia, despite some evidence of improvement in both countries:   

o        USTR announced that it would maintain pressure on China by including it on the Priority Watch List.  “I am particularly troubled by reports that Chinese officials are urging more lenient enforcement of IPR laws, motivated by the financial crisis and the need to maintain jobs,” said Ambassador Kirk. “China needs to strengthen its approach to IPR protection and enforcement, not weaken it.” 

o        The Administration also continues to seek improvements to the intellectual property regime in Russia.  The United States is committed to ensuring that Russia fulfills the promises it made to improve its IPR protection and enforcement regimes as part of a bilateral agreement with the United States. 


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U.S. TTAB: No Famous Marks Doctrine

In Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 6, 2009) [precedential], the U.S. Trademark Trial and Appeal Board held that their is no famous marks Doctrine in the U.S.
Bayer alleged that its mark was "well-known" in this country prior to Belmora's filing date and that Belmora copied its mark and packaging for the FLANAX product.  The Board pointed out that the Paris Convention is not self-executing, and that "Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings." Nor does Section 44 of the Trademark Act "provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding.  According to the TTAB,

Turning next to petitioner’s claim under Article 6bis of the Paris Convention, “the Paris Convention is not selfexecuting. As such, Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings.” International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603 (TTAB 2002); see also, In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1175 (Fed. Cir. 2005) (“the Paris Convention is not a self-executing treaty and requires congressional implementation”), and Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir.1990); compare, British-American Tobacco Co. v. Philip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000) (denying motion to dismiss claim under Pan American Convention in part because Convention is self-executing).

Furthermore, while Section 44 was “generally intended” to implement elements of the Paris Convention, In re Rath, 402 F.3d at 1207, 74 USPQ2d at 1177, it does not, through subsections 44(b) or (h) or otherwise, provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding, absent use of the mark in the United States. See, ITC Ltd. V. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414, 1433 (2d Cir. 2007), cert. denied, 128 S.Ct. 288 (2007) (“Congress’s specificity in dealing with registered marks cautions against reading a famous marks exception into sections 44(b) and (h), which nowhere reference the doctrine, much less the circumstances under which it would appropriately apply despite the fact that the foreign mark was not used in this country.”).

We acknowledge that the Second Circuit in Punchgini discussed the possible recognition by this Board and by the U.S. Court of Appeals for the Ninth Circuit of a famous mark exception to the territoriality principle, the latter Court apparently recognizing the doctrine “as a matter of sound policy,” in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004). Punchgini, 82 USPQ2d at 1430. However, the Second Circuit also noted that neither the referenced Board cases, one of which addressed the possible exception only in dictum, nor the Grupo Gigante decision found the exception to arise in the context of an Article 6bis claim. Id. at 1429-30. And petitioner’s claim is, as noted, based on Article 6bis of the Paris Convention. fn4 For all of these reasons, respondent’s motion is GRANTED with respect to petitioner’s claim under Article 6bis of the Paris Convention, and the claim is hereby DISMISSED, WITH PREJUDICE.

fn4. In any event, respondent amply demonstrates that a famous mark exception, whatever its possible basis in law, is a minority view, and that most courts which have considered the issue find that there is no cause of action under such an exception where, as here, the plaintiff relies on foreign use alone. Respondent’s Motion to Dismiss at pp. 5-10. More importantly, in Grupo Gigante, the Ninth Circuit found that “the Paris Convention creates neither a federal cause of action nor additional substantive rights” beyond those in the Lanham Act. Id., 73 USPQ2d at 1266. And Board decisions discussing the possibility of a famous foreign mark exception in the common law do not hold to the contrary. See, First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 77 USPQ2d 1334 (TTAB 2005), rev’d on other grounds, 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007), The All England Lawn Tennis Club (Wimbledon) Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983) . . .

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U.S. Trademark Fraud Cured Post-Registration

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 that adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,
It appears from this decision that fraud may be curable even after
registration, as long as the false statement regarding use is corrected before
the registration is challenged. Note well that this is a non-precedential
decision by one panel of the TTAB, so it is not etched in stone. But it is
certainly a promising approach to the fraud problem. . . .

Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]
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TTAB Clarifies Requirements for Intent-to-Use Application Based on Foreign Registration

In Honda Motor Co., Ltd v. Friedrich Winkelmann (Opposition No. 91170552), the U.S. Trademark Trial and Appeal Board (the "TTAB") recently ruled that even though actual "use in commerce" is not required, the applicant must possess a bona fide intent to use a mark in U.S. commerce at the time it files a trademark application with the U.S. Patent and Trademark Office under Section 44(e). Under that section of the trademark statute, a mark registered in a foreign country may be registered on the U.S. registry, but the application must state the applicant has a bona fide intent to use the mark in commerce for the described goods and services. See Lanham Act § 44(e), 15 U.S.C. 1126(e). Although Section 44 does not require evidence of actual use in U.S. commerce prior to registration, the recent TTAB decision has put some teeth into Section 44(e)'s intent-to-use requirement.
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New U.S. Patent Status Monitoring Service

PriorSmart ( will monitor the docket of any application, reexamination, or issued patent and then e-mail reports. "Track documents affecting your litigation or freedom–to–operate opinion; Monitor competitors en masse; Be alerted to new continuations or divisionals."

You just select how long you want your document(s) monitored, how often you want to be alerted, and what billing code to assign to the document. The pricing structure is shown below.

Monitoring frequency Cost

Monthly $3.97 $47.64 per year
Weekly $7.97 $95.64
Daily $15.97 $191.64
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