Norway and Croatia Accede to EPC

The European Patent Office (EPO) recently announced via separate news releases that Norway and Croatia have acceded to the European Patent Convention (EPC). As noted by the EPO release for Norway, on October 5, 2007, the Government of the Kingdom of Norway deposited the instrument of ratification of the European Patent Convention and the instrument of accession to the Act revising the EPC of November 29, 2000. Similarly, on October 31, 2007, the Government of the Republic of Croatia deposited its own instruments, and as of January 1, 2008, Norway and Croatia will join the other 32 member states of the European Patent Organization. As of January 1, 2008, the 34 member states will be Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom. Specific details pertaining to the designation of each new state within European patent applications, corresponding updates to Patent Cooperation Treaty (PCT) practice, and the issuance of European patents for Norway and Croatia are provided in the first two links below.

EPO Norway News Release: LINK
EPO Croatia News Release: LINK
Norwegian Industrial Property Office Website: LINK
Croatian Intellectual Property Office Website: LINK

Knievel and West Settle Trademark Dispute

Daredevil Evel Knievel and rapper Kanye West have settled their recent trademark dispute, agreeing not to publicly disclose the terms of their settlement. As reported by the Daily Dose of IP back in December, 2006, Knievel filed suit in the U.S. District Court for the Middle District of Florida, Tampa Division, against rapper Kanye West, Roc-a-Fella Records, LLC, Chris Milk, and AOL LLC, formally alleging trademark infringement, trademark dilution, unfair competition, and unauthorized use of Knievel’s likeness by West in his music video for “Touch the Sky.” In the video, West acts as “Evel Kanyevel” and attempts to use a rocket-powered motorcycle to jump over a canyon. According to the Yahoo! News article (link below), Knievel and West settled their lawsuit “amicably”, with Knievel referring to West as “a wonderful guy” and “quite a gentleman” after they recently met to settle their dispute.

DDIP Article (December, 2006): LINK
Yahoo! News Article: LINK
Copy of the Lawsuit: LINK
Evel Knievel Official Website: LINK
Kanye West Official Website: LINK

WIPO Provides Summary of 18th SCT Session

The World Intellectual Property Organization (WIPO) recently posted a summary of the 18th Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) on its website, highlighting a number of areas discussed earlier this month. According to the WIPO summary (link below), this particular session was held from November 12 to 16, 2007, and was attended by 74 member states and 14 other intergovernmental and non-governmental organizations focusing "on key issues that aim to establish more clarity for the international protection of trademarks and industrial designs." Some of the specific topics discussed included new types of marks, with the Committee considering some of the approaches adopted by some of its member states for new types of marks including three-dimensional marks, color marks, sound marks, scent marks, movement marks, hologram marks, slogans and position marks. Trademark opposition procedures were also discussed, noting that delegates at the Session "worked on a set of key approaches regarding issues such as the grounds of opposition, third-party observations made in the course of opposition procedures, cooling off periods allowing for settlement negotiations, member states’ experience with introducing new opposition systems and the effect the abolition of office examination as to prior rights can have on the number of oppositions filed." Additional topics discussed include industrial designs (and an analysis of that type of registration among member countries), the protection of state emblems and names and abbreviations of non-governmental organizations (under Article 6ter of the Paris Convention for the Protection of Industrial Property), and International Nonproprietary Names for Pharmaceutical Substances (INNs), which provide "a common generic designation of given pharmaceutical substances" in accordance with World Health Organization (WHO) resolutions. Details on each topic discussed are available at the WIPO link below.

WIPO Session Summary: LINK

2007 Federal Circuit Patent Decisions, Week 46, Part 2 of 3

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the next two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 46th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Connell, et al. v. KLN Steel Products Company, LTD. (doing business as KLN Steel Products Company), et al. (11/15/2007, non-precedential): appeal from a district court order transferring the appellee’s affirmative defense (under 28 U.S.C. § 1498(a)) to the Court of Federal Claims (vacated and remanded); discussion of patent related to a bedding assembly having a storage area integrated therewith (U.S. Patent No. 6,611,973, entitled “Bed structure with storage area”); KLN’s challenge to the federal circuit’s appellate jurisdiction rejected because the district court was, in fact, transferring the case under 28 U.S.C. § 1631 to cure what it perceived to be its “want of jurisdiction”; 28 U.S.C. § 1404(a) cannot provide a basis for the transfer order in this case because the Court of Federal Claims is not a “district or division” under § 1404(a); 28 U.S.C. § 1631 cannot form the basis for the district court’s transfer to the Court of Federal Claims because it did not lack jurisdiction over KLN’s § 1498(a) defense; the United States is not an indispensable party to this dispute between private parties for the reason that “[w]hen a plaintiff is harmed by the acts of several persons, all may be essential sources of evidence in a suit against any. But if this possibility automatically requires that all be joined, the rule that joint tortfeasors are not by virtue of their jointness indispensable parties . . . would be overthrown”

Canon, Inc. v. GCC International Limited, et al. (11/16/2007, non-precedential): appeal from grant of preliminary injunction enjoining the defendants from “making, using, offering for sale, or selling in the United States, or importing into the United States, any product that falls within the scope of claim 58 of U.S. Patent No. 6,336,018, including, without limitation, [certain identified] toner cartridges . . . .” (affirmed because no abuse of discretion); discussion of patent related to toner cartridges (U.S. Patent No. 6,336,018, entitled “Electrophotographic image forming apparatus, process cartridge, and drive mount for photosensitive drum”); “[i]n patent cases, traditional rules of equity apply to requests for injunctive relief”; “[i]n considering whether to grant a preliminary injunction, a court must consider whether the patent owner has shown: (1) a reasonable likelihood of success on the merits; (2) the prospect of irreparable harm to the patent owner in the absence of the injunction; (3) that this harm would exceed harm to the alleged infringer when subject to the injunction; and (4) that granting the injunction is in the public interest” (from Pfizer v. Teva Pharmaceuticals); regarding (1), the court stated that “Canon has established a substantial likelihood—albeit not a certainty—of success on its claim that Defendants have infringed Claim 58 of the '018 Patent” in part because the replacement of the toner cartridge part of the combination (of the toner cartridge and the claimed "hole defined by twisted surfaces”) would not constitute a permissible repair, noting that instead, the extend of the refurbishment (namely the replacement of the entire toner cartridge” would be “disproportionate to the overall value of the parts that were not replaced”; regarding (2), the court agreed with the district court’s conclusion because of Canon’s demonstration of the potential of substantial irreparable harm and the Defendants’ failure to make any such demonstration; the public interest favors a free market and enforcement of patents, so that aspect of the analysis does not favor either party; “[a] request for a preliminary injunction is evaluated in accordance with a ‘sliding scale’ approach: the more the balance of irreparable harm inclines in the plaintiff’s favor, the smaller the likelihood of prevailing on the merits he need show in order to get the injunction”; grant of preliminary injunction affirmed because “the district court reasonably evaluated Canon’s likely success on the merits and the irreparable harm balance and did not abuse its discretion in granting the preliminary injunction”

2007 Federal Circuit Patent Decisions, Week 46, Part 1 of 3

(After a brief hiatus from case review)

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 46th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Amini Innovation Corporation v. Anthony California, Inc., et al. (11/13/2007, non-precedential): affirmed appeal from the United States District Court for the Central District of California (case no. 03-CV-874); no reasoning provided within the opinion

HIF Bio, Inc., et al. v. Yung Shin Pharmaceuticals Industrial Co., LTD (doing business as Yung Shin Pharmaceuticals and Yung Shin Pharm, Ind. Co. Ltd.), et al. (11/13/2007): appeal from decision of district court remanding case to state court (remand order entered in response to a motion to dismiss brought by a defendant); appeal dismissed for lack of jurisdiction to review appeal; dispute involving inventorship and ownership of patent applications; 28 U.S.C. § 1447(d) deemed to bar the court’s review of the remand order; the district court held that “the inventorship and ownership of inventions are valid state law claims,” over which it lacked original (i.e. federal question or diversity) jurisdiction; “In short, because every § 1367(c) remand necessarily involves a predicate finding that the claims at issue lack an independent basis of subject matter jurisdiction, a remand based on declining supplemental jurisdiction can be colorably characterized as a remand based on lack of subject matter jurisdiction. Accordingly, a remand based on declining supplemental jurisdiction must be considered within the class of remands described in § 1447(c) and thus barred from appellate review by § 1447(d).”

Slaby v. Berndt, et al. (11/14/2007, non-precedential): affirmed appeal from the United States District Court for the Western District of Wisconsin (case no. 06-CV-250); no reasoning provided within the opinion

USPTO Announces FY2007 Year-End Results

Last Thursday, the USPTO announced “record breaking year-end numbers” demonstrating “historic improvement in the quality of patent and trademark reviews and subsequently the quality of issued patents and registered trademarks.” According to the USPTO announcement (link below), in FY2007 the USPTO reviewed over 360,000 patent applications achieving 96.5% quality compliance, and the decisions of its examiners were upheld by the USPTO’s patent appeals board nearly 70% of the time. During the same period, the USPTO reviewed over 323,000 trademark applications achieving over 97% quality compliance, noting that the average time from the filing of an initial trademark application to a first action from an examining attorney was less than three months. According to Jon Dudas, the Director of the USPTO, “The sustained trend of quality improvements are a tribute to the internal quality initiatives of our managers and employees," and "Of course, the quality of patent and trademark examination is a shared responsibility that begins with the application." Additional comments and statistics are provided in the announcement and the full FY2007 Performance and Accountability Report linked below.

USPTO Announcement: LINK
FY2007 Report: LINK

Chinese Customs Announces IP Infringement Summary

According to the China Economic Net article (link below), Chinese customs authorities uncovered nearly 2,000 individual cases of intellectual property infringement in China during the first nine months of 2007. Specific examples of such infringement mentioned in the article include the following:

- 23 cases and the seizure of over 32,000 fake Louis Vuitton, Nokia, and Adidas products in Hangzhou

- 1 case of an individual with almost 2,000 fake Rolex, Patek Philippe, and Vacheron Constantin watches at the Beijing Capital International Airport

- The seizure of 10 sets of pirated Beijing Olympic Mascot cartoons (presumably on video)

According to the President of the World Trade Organization Research Institute under the University of International Business and Economics, Zhang Hanlin, “Since its WTO entry, China has made tremendous progress in IPR protection,” and “China is attaching greater importance to IPR protection not only because of pressures from foreign countries but also from the need to protect its (own domestic) products.” The total value of the goods seized by Chinese customs in 2007 has exceeded US$30 million.

China Economic Net Article: LINK
China Customs Website (English) With IPR Enforcement Links: LINK
China Customs Recent List of Counterfeit Seizures: LINK

Recent USPTO Fee Changes

The USPTO has recently published its third fee schedule for November, 2007. A brief summary of the fee changes since the beginning of the month are provided below.

Fees Prior to November 9, 2007:

PCT Fees – International Stage

Fee code 1602 (Under 37 C.F.R. § 1.445(a)(2)): “PCT search fee – no prior I.S. application filed under USC 111(a)”: $1,000.00

Fee code 1603 (Under 37 C.F.R. § 1.445(a)(2)): “PCT search – prior U.S. application filed under 35 USC 111(a) with basic filing fee under 37 CFR 1.16(a) paid, identified at time of filing international application”: $300.00

Fee code 1604 (Under 37 C.F.R. § 1.445(a)(2)): “Supplemental search fee when required, per additional invention”: $1,000.00

PCT Fees to Foreign Offices

Fee code 1701: “International filing fee (first 30 pages) – filed in paper w/PCT Easy file or electronically w/o PCT Easy file”: $1,008.00

Fee Code 1710: “International filing fee (first 30 pages) - filed electronically w/ PCT Easy file”: $931.00

Fee Code 1702: “International filing fee (first 30 pages)”: $1,086.00

Trademark Processing Fees

Fee code 6212 (Under 37 C.F.R. § 2.6(a)(9)): “Certificate of correction, registrant’s error”: $100.00

As of November 9, 2007:

PCT Fees – International Stage

Fee code 1602 (Under 37 C.F.R. § 1.445(a)(2)): Description changed to “Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16”: Fee increased to $1,800.00

Fee code 1603 (Under 37 C.F.R. § 1.445(a)(2)): Removed from the fee schedule

Fee code 1604 (Under 37 C.F.R. § 1.445(a)(2)): Same description, but fee increased to $1,800.00

As of November 10, 2007:

Trademark Processing Fees

Fee code 6212 (Under 37 C.F.R. § 2.6(a)(9)): Same description and fee, but fee code 7212 added

As of November 15, 2007:

PCT Fees to Foreign Offices

Fee code 1701: Description changed to “International filing fee (first 30 pages) –PCT Easy”: Fee increased to $1,080.00

Fee Code 1710: Same description, but fee increased to $997.00

Fee Code 1702: Same description, but fee increased to $1,163.00

USPTO Fee Schedule (as of November 4, 2007): LINK (cached)
USPTO Fee Schedule (as of November 10, 2007): LINK
USPTO Fee Schedule (as of November 15, 2007): LINK

MOU Signed at 25th Annual Trilateral Conference

Last Friday, the USPTO announced that lead representatives of the three busiest international patent offices signed a memorandum of understanding (MOU) to best coordinate and improve their collective efforts. According to the USPTO press release (link below), the 25th Annual Trilateral Conference, the USPTO, the European Patent Office (EPO), and the Japanese Patent Office (JPO) signed the MOU to “coordinate work sharing; develop a means to improve quality of applications; coordinate electronic business developments; harmonize or standardize search strategies, tools and procedures; and promote dissemination of patent information.” According to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, “Over the past quarter century, trilateral cooperation has resulted in significant progress. We look forward to doing even more. Our offices intend to strengthen cooperative efforts in ways that promote innovation and focus on 21st-century realities by reducing redundancies, streamlining processes, and encouraging quality applications.” As part of the MOU (as reported in the link below), these three patent office also agreed to “undertake a comprehensive approach to technology focused cooperation in examination. This approach will include collaboration among examiners; development of comparative studies; development of search guidelines; exploration of use of common search tools to facilitate common search techniques and resources; and continual collaboration after the development of products.”

USPTO Announcement: LINK
USPTO Website: LINK
EPO Website: LINK
JPO Website: LINK

WIPO Conference Discusses Criminal Enforcement of IP Rights

Earlier this month, the World Intellectual Property Office (WIPO) Advisory Committee on Enforcement (ACE) met in Geneva, Switzerland, to discuss the criminal enforcement of intellectual property laws around the globe. According to the WIPO meeting summary (link below), the ACE was founded in 2002 and serves “as a forum for discussion of enforcement matters with a mandate to cooperate with other intergovernmental organizations and the private sector to combat counterfeiting and piracy activities; undertake public education; provide assistance to member states on request; [and] to coordinate national and regional training programs for all relevant stakeholders and the exchange of information on enforcement issues.”

This particular meeting discussed a number of topics of particular interest, each presentation now being available to the public:

- Recent Activities of WIPO in the Field of Intellectual Property Enforcement and Future Work of the Advisory Committee on Enforcement (ACE) (PDF LINK)

- The Enforcement of Intellectual Property Rights by Means of Criminal Sanctions: An Assessment (PDF LINK)

- Accreditation of Certain Non-Governmental Organizations (PDF LINK)

- Criminal Measures for Enforcement of Intellectual Property Rights - Sanctions in the Andean Community (PDF LINK)

- Submission from the Russian Federation (Analysis Conducted in Accordance with Instructions in Annex I) (PDF LINK)

- A Comparative Analysis of the Legal Enforcement of Intellectual Property Offences in Barbados and Trinidad and Tobago (PDF LINK)

- The Socio-Economic Implications o Piracy to the Indian Entertainment Industry, as Well as Current Trends Related to the Criminal Enforcement Against That Kind of Piracy (PDF LINK)

The WIPO has created a webpage containing all presentations in English, French, and Spanish at the Presentation link below.

WIPO Meeting Summary: LINK
WIPO Presentation Summary: LINK

Peterlin Testifies on USPTO Telework Programs

On Tuesday, Margaret J.A. Peterlin, the Deputy Director of the USPTO and the Deputy Under Secretary of Commerce for Intellectual Property, testified in favor of the progress made by the USPTO’s telework program. Testifying before the House of Representatives Committee on Oversight and Government Reform, Peterlin noted that “Our experience shows telework programs result in greater employee productivity, higher levels of sustained performance, reduced traffic congestion and air pollution, and reduced real estate costs.” According to the USPTO announcement (link below), and at the close of FY2007, the USPTO had over 3,600 employees participating in some for of telework under 17 formal telework initiatives and 3 additional pilot programs. Specific information was also provided regarding the Trademark Work-at-Home (TWAH) program and the Patent Hoteling Program, starting in 1997 and 2006, respectively, noting that over 240 trademark attorneys and over 1,000 patent examiners participate in those two specific programs. Peterlin also commented on what the future may hold for USPTO employees, noting that there is a “goal” of having some employees work full-time at the USPTO, some employees telecommute once a week, some participate in a hoteling program, and some living outside of the main metropolitan area and only “rarely” coming in to the office. Additional details regarding Peterlin’s testimony is provided in the announcement link below.

USPTO Announcement: LINK
Margaret J.A. Peterlin USPTO Biography: LINK

USPTO Hosting China IP Seminar This Week

The USPTO will be hosting a two-day seminar this week (November 7th and 8th) in San Jose, California, to educate companies and individuals as to how to protect themselves against intellectual property theft from China. This seminar, entitled “USPTO China Road Show – Protecting Your Intellectual Property in China & The Global Marketplace,” will include seminars on copyright, international trade, export resources, design patent v. copyright protection, electronics counterfeiting, U.S. Customs and Immigration, and an hour-long interactive case study on protecting the IP rights of a fictitious company. The speakers include people from the USPTO, law firms, foundations, and officials from the U.S. and Chinese governments. According to the USPTO announcement (link below), “[t]he program is for any company that wants to learn about protecting its products from counterfeiting and piracy - even those companies that have no plans to sell or manufacture their products in China,” noting that “China was the number one source of counterfeit products seized by U.S. Customs and Border Protection in 2006, accounting for 81 percent of all seizures.” Links to the seminar webpage, including the full agenda and FAQ site, are provided below.

USPTO Announcement: LINK
Seminar Webpage: LINK
Seminar Agenda: LINK
Seminar FAQ: LINK

KATONAH Dispute Coming to an End

In a trademark dispute described in the DDIP blog back in March, 2007 (link below), it appears that Martha Stewart Living Omnimedia Inc. (“MSLO”) and the Katonah Village Improvement Society (“KVIS”) have agreed to a settlement. In October, 2005, MSLO filed six U.S. trademark applications for KATONAH, covering several classes of goods for interior and exterior paints, indoor lighting, flooring (hardwood, laminate, tile, and stone), furniture and other home accessories, assorted home furnishings, and carpets, rugs, and wallpaper. MSLO later abandoned two of the applications (covering flooring, carpets, rugs, and wallpaper), and according to the Journal News (New York, link below), MSLO will abandon three of the KATONAH trademark applications and will continue to prosecute the KATONAH application for furniture and related items. In a “Stipulated Motion to Amend Application, Withdraw Applications and Withdraw Opposition” filed on November 1, 2007 (link below), the parties agreed that (1) the opposers would withdraw the three oppositions with prejudice and with the consent of MSLO, (2) MSLO would amend the description for the sole remaining application (U.S. Trademark Application Serial No. 78/727061) to cover “[f]urniture, mirrors, pillows and chairpads”, and (3) MSLO would withdraw the three other trademark applications with prejudice and with the written consent of the opposers.” It is noted that the original description of goods for U.S. Trademark Application Serial No. 78/727061 was for “[f]urniture, mirrors, pillows, chairpads, window blinds, window shades, curtain rods, curtain rings, decorative curtain hardware, namely, finials and closet organizer kits comprised of shelves, ties, shoe, and belt racks, hooks and brackets.”

DDIP Article (March, 2007): LINK
The Journal News (New York) Article: LINK
Stipulated Motion: LINK

The “New Rules” Put on Hold

At the end of yesterday’s hearing in Tafas/SmithKlineBeecham v. USPTO, Judge Cacheris of the U.S. District Court for the District of Virginia issued an oral decision to temporarily enjoin the USPTO from implementing the new set of patent rules that were expected to be effective today. The Court then followed the oral decision with the following Order, for which the entire text (less the caption) is reproduced below. It is my understanding that hearings on the matter will resume in January.

--

O R D E R

For the reasons stated in the accompanying Memorandum Opinion, it is hereby ORDERED:

1) Defendants’ Motion to Strike Exhibit E of the Memorandum in Support of Plaintiffs’ Motion for Preliminary Injunction is DENIED:

2) The Motions of American Intellectual Property Law Association, HEXAS, LLC, The Roskamp Institute, Tikvah Therapeutics, Inc., and Elan Pharmaceutical Corp. for Leave to File Amici Curiae Briefs in Support of Plaintiffs’ Motion for a Temporary Restraining Order and Preliminary Injunction are GRANTED;

3) Plaintiffs’ Motion for a Preliminary Injunction is GRANTED;

4) Defendants are preliminarily enjoined from implementing the Final Rules titled “Changes to Practice for Continued Examination Failings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46716, 46716-46843 (Aug. 21, 2007)(to be codified at 37 C.F.R. pt. 1);

5) Defendants are preliminary enjoined from issuing new regulations restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the PTO;

6) This Order shall expire upon the entry of a final judgment in this matter, unless otherwise ordered by the Court;

7) The Clerk shall forward a copy of this Order and Memorandum Opinion to all Counsel of Record.

October 31, 2007
Alexandria, Virginia

/s/ James C. Cacheris
UNITED STATES DISTRICT COURT JUDGE