The Daily Dose of IP | Intellectual Property Law Blog

The Third Meeting of the IP5 Heads of Office Recently Held

2010-04-21T11:41:00.000-04:00

On April 15 and 16, 2010, the IP5 met to discuss a series of Foundation Projects geared toward creating a work-sharing environment and improvements to expedite the IP prosecution process. The IP5 is comprised of five patent offices, including the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of China (SIPO). As noted in a recent EPO press release (available HERE), the heads of the IP5 "reaffirmed their commitment to collaborating with WIPO to improve the PCT system, so that its role could be further strengthened as the vehicle for efficient work-sharing, and also reconfirmed its 2008 vision, namely "The elimination of unnecessary duplication of work among the offices, enhancement of patent examination efficiency and quality, and guarantee of the stability of patent right." More information on the IP5 can be found at the Five IP Offices Web site, available HERE.

Recent Updates at the CIPO

2010-04-20T12:34:00.000-04:00

The Canadian Intellectual Property Office has recently announced a series of updates for visitors and users of its Web site:

1. The Trade-marks Opposition Board (TMOB) has a new "Decisions" page that provides hyperlinks to final decisions reached in section 45 proceedings along with a new schedule of upcoming hearings (available HERE).

2. A series of new Web pages for intellectual property professionals, including an Industrial Designs Professional Web page (available HERE), a Trade-marks Professional page (available HERE), and a Patents Professional page (available HERE).

3. As noted by the CIPO (link HERE, under March 30, 2010), its Web site "has added an improved bilingual search capability to help you to conduct searches in both English and French on the Basic Search pages of the Canadian Patents Database, the Canadian Trade-Marks Database and the Canadian Industrial Designs Database. This feature will help to ensure that your search query includes more terms; thereby you should have an increased results list."

EPO Provides Summary of Recent Rule Changes

2010-04-16T10:43:00.002-04:00

On April 1, 2010, a series of patent practice changes at the European Patent Office (EPO) took effect, including new search and examination rules, as well as new timelines for filing divisional applications. As noted in a recent summary announcement (available HERE), the EPO notes that the changes "relate to the filing of divisional applications, pre-search communication between examiner and applicant, obligatory response to the search opinion prior to entry into substantive examination, a requirement for applicants to identify and indicate the basis for amendments and a clearer restriction of examination only to the subject matter searched." A summary entitled "Realigning the European patent grant procedure" (available HERE) is also provided by the EPO, as is a Web page with links to each rule change (available HERE) and a Web page entitled "New edition of the EPO Guidelines for Examination" (available HERE) with several embedded links. I personally have received a number of notices from my European agents advising me of these changes. If you manage an international portfolio with pending European applications and have not been advised by your respective agents, consider reaching out to them so that they can advise as to any deadlines or practice changes that may impact your pending portfolio.

WIPO to Provide New TV Show Format Dispute Resolution Services

2010-04-14T10:04:00.002-04:00

On April 7, 2010, the World Intellectual Property Organization (WIPO) announced that its Arbitration and Mediation Center and the Format Recognition and Protection Association (FRAPA) will be combining their efforts to provide "alternative dispute resolution services to address problems of format plagiarism or the unauthorized copying of television (TV) formats, such as those used for game, reality or talent shows and sitcoms." As noted in the WIPO announcement (available HERE), "the format industry is flourishing and the trade in TV formats is growing, the industry is characterized by fierce competition and frequent disputes," and that "[t]hese disputes often relate to the unauthorized use of formats owned by third parties and can be difficult to resolve in court because of differences in relevant national laws in this area." Specifically, the WIPO Arbitration and Mediation Center will take on the existing mediation activity of FRAPA and will administer disputes relating to TV formats filed under the WIPO Mediation and Expedited Arbitration Rules for Film and Media, which were launched this past December and are "tailored to the specific characteristics of disputes arising in the film and media sectors." Additional information on this new service offering, as well as links to the two organizations and the applicable rules, are available at the link above.

USPTO Offers Guidance to First-Time Trademark Filers

2010-04-13T10:49:00.001-04:00

The USPTO recently announced that it has initiated the Trademark Information Network (TMIN) to provide information to first-time trademark applicants. The TMIN (USPTO Web site link HERE), currently offers the first of a series of videos relating to trademarks (called "Newsflash: Before You File"), as well as a timeline of trademark processing activities, a transcript of the video, and a list of topics from the video itself. Future "Newsflash" videos will be available on other trademark preparation and prosecution topics, including "Searching," "Applicant Information," "Drawing Issues," "Goods and Services Issues," "Basis Information," "Specimen Issues," "After You File," and "Post-Registration Issues." The TMIN Web site also provides a series of useful trademark links, including "Trademark Basics," "Search Marks," and View Documents," to name a few. The first video is available HERE (in .wmv format), with a transcript available HERE (in .doc format).

USPTO Launches Ombudsman Pilot Program

2010-04-09T09:58:00.000-04:00

On Tuesday, April 6, the U.S. Patent and Trademark Office (USPTO) announced that it has launched a new Ombudsman Program "designed to provide patent applicants with more assistance in handling application-processing problems if the normal channels have not been successful." This announcement (link HERE) identifies this new one-year pilot program as being "intended to provide applicants with additional resources to ensure application-processing problems are handled in a more efficient way, thereby saving applicants and the Agency both time and resources and improving patent quality," whereby "applicants, attorneys or agents who have application-processing concerns, and haven’t been able to get the assistance they need through normal channels in the Technology Center (TC), can contact the ombudsman representative for the TC through the USPTO Web site." After contacting an ombudsman representative, the applicant (or his/her agent) will receive a call within one business day to discuss the specifics, whereby the representative will work with TC staff to address the applicant’s concerns "and try to get the application back on track." Additional information is available at the announcement link above.

Is Facebook Facing a Renewed Patent Challenge?

2010-04-08T09:38:00.000-04:00

In a recent Law.com article (link HERE), Facebook, Inc. was identified as again being a potential active defendant in an infringement lawsuit initiated by Cross Atlantic Capital Partners (XACP), who claims to own the rights to a patent for an Internet-based "community for users with common interests to interact in" invented a decade ago. In 2007, XACP filed suit against Facebook regarding U.S. Patent No. 6,519,629 (entitled "System for creating a community of users with common interests to interact in," available HERE), which lead to an inter partes reexamination of the patent. According to the Law.com article, "the [U.S. Patent and Trademark Office] examiners issued a decision that reaffirmed the validity of XACP's patent. And in late March 2010, the examiners issued a right of appeal notice, effectively finalizing their decision and clearing the way for Facebook to challenge the decision before the Patent Office Board of Patent Appeals" The patent at issue was filed in February 2000, issued three years later on February 11, 2003, and contains 32 system and method claims. As invalidity defenses are now off the table (according to the article referenced above), counsel for XACP is considering a request to lift the stay and allow the case to proceed to trial, presumably should no settlement be reached between the parties before then. The docket for the 2007 case, including over 175 docket entries, is available HERE via Justia.com.

USPTO Proposes 12 Month Extension to Provisional Patent Application Period

2010-04-06T09:55:00.000-04:00

On Friday, April 2nd, the U.S. Patent and Trademark Office (USPTO) announced that it is seeking public comment on its proposal that would effectively provide a 12 month extension period to the current 12 month provisional patent application period. This announcement (available HERE, with a Federal Register excerpt available HERE) states that the proposal "would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period," noting further that "[t]he proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination." As noted in the announcement, applicants would be allowed to file a nonprovisional application after the initial 12 month period provisional period, paying the filing fee and submitting an oath or declaration. This application would then be published, and after an additional 12 month period, applicants would pay a surcharge (tied to missing parts practice) and the remaining fees should they wish to proceed with their applications. Comments on this proposal must be received by the USPTO on or before June 1, 2010.

Butler v. Duke - The Finals are Here!

2010-04-05T09:10:00.001-04:00

Tens of millions of people will be tuning in this evening to watch the NCAA basketball finals, being held here in Indianapolis, Indiana. Recognizing how this sport has changed history, I wanted to share a few basketball related patents with you. Enjoy!

U.S. Patent No. 1,563,243 (issued on November 24, 1925 to E. K. Van, link HERE) - "BASKET-BALL GOAL." Claim 1 of this patent claims "In a basketball goal, in combination, a ring, an arm secured to said ring, a supporting foot secured to said arm, and a brace secured at one end to said ring and at the other end to said foot."

U.S. Patent No. 1,718,305 (issued on June 25, 1929 to George L. Pierce, link HERE) - "BASKET BALL." This patent claims a "case for a game ball, composed of panels, each of which has a length equal to a major part of the ball circumference, one continuously curved side edge, opposite, shorter, separately curved side edges, a convexly curved polar projection intermediate the separately curved side edges, and concavely curved ends to fit portions of the polar projections of another panel, the panels being connected together in pairs along said continuously curved side edges, and separately curved side edges of the panels of one pair being connected to similar edges of panels of another pair, and the concavely curved ends of the panels of one pair being connected to the polar projections of panels of another pair." Yes, that is claim 1.

U.S. Patent No. 2,162,085 (issued on June 13, 1939 to E. F. Hoppes, link HERE) - "BASKETBALL BACKSTOP APPARATUS." Claim 1 reads "In a basketball backstop apparatus, overhead supports, a rigid backstop supporting frame hingedly carried at its upper end by said supports, a rigid bracing frame having its lower end hingedly connected to a lower portion of said backstop supporting frame, means for movably supporting the upper end of said bracing frame on said supports, and means for releasably latching the upper end of said bracing frame to said supports."

WIPO Reports Increase in Cybersquatting Disputes

2010-03-30T10:41:00.002-04:00

On March 23, 2010 the World Intellectual Property Organization (WIPO) announced that more cybersquatting complaints were filed under procedures of the Uniform Domain Name Resolution Policy (UDRP) in 2009 than ever before. This WIPO article (link HERE) references an overall decrease in the UDRP caseload of about 10% from 2008, but that the 2009 caseload covered the highest number of individual domain names in a year (4,688) since the launch of the UDRP in December 1998. As referenced within the article, "[t]he UDRP has become accepted as an international standard for resolving domain name disputes outside traditional courts," which "is designed specifically to discourage and resolve the abusive registration of trademarks as domain names, commonly known as cybersquatting." The 2009 caseload comprised parties from 114 countries, which were handled by 310 WIPO panelists from 46 countries.

The Trademark Technical and Conforming Amendment Act of 2010 is Now in Effect

2010-03-26T11:59:00.000-04:00

As highlighted with a recent U.S. Patent and Trademark Office notice (available HERE), the Trademark Technical and Conforming Amendment Act of 2010 (Pub. Law No. 111-146, 124 Stat. 66 (2010)) became effective on March 17, 2010. As referenced in the notice, significant changes were made to Sections 8 and 71 of the Lanham Act (15 U.S.C. §§1058 and 1141k, respectively), as well as minor technical changes to Sections 7, 15, and 21 (15 U.S.C. §§ 1057, 1065 and 1071, respectively). These changes relate to post registration maintenance filings required under the Act, whereby now owners may correct any deficiencies in such filings outside of the statutory period for filing them if they pay a surcharge relating to the deficiency, which now includes instances where affidavits were not filed in the name of the owner of the registration. In addition, and as referenced in the notice, "owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods," whereby "[p]reviously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration." Additional information is available on the USPTO’s "Trademarks - keeping a registration" webpage (available HERE), with the text of amended Sections 8 and 71 of the Lanham Act available HERE.

East Meets West 2010

2010-03-23T10:45:00.000-04:00

The European Patent Office (EPO) recently announced additional details regarding its East Meets West 2010 forum to be held from April 21-23, 2010 in Vienna, Austria. As noted by the EPO (main forum webpage HERE), "Japan, China, and Korea are all among the five top patenting nations in the world, making Asia one of today's important innovation hubs," and "[f]or patent searchers worldwide accessing and understanding patent information from Asia has become a must." This forum is directed toward users of patent information who "need to know about the latest database offerings in the field of Asian patent data, are looking for an opportunity to meet experts from Asia and Europe, [and] want to gain new insights, share experiences or simply get inspiration from colleagues and other patent information users." Two training sessions will be held on April 21 (regarding classification matters and advanced features of free Asian patent databases), with an introductory session to be held on April 22 and a series of product presentations, discussion rounds, and a poster session on April 23. This will be the third East Meets West session hosted by the EPO.

Madrid System Trademark Filing Statistics Recently Published by WIPO

2010-03-22T09:53:00.000-04:00

On Friday, March 18, 2010, the World Intellectual Property Organization published statistics comparing 2009 trademark filings under WIPO’s Madrid System for the International Registration of Marks ("Madrid") to filings made in 2008. In total, and as noted in the WIPO article available HERE, Madrid filings decreased 16% in 2009, with several countries reporting double-digit decreases. For example, countries in the top 40 by total number of filings such as (in order by number) Germany, Benelux, Italy, Spain, Denmark, the Czech Republic, Sweden, Portugal, Latvia, Liechtenstein, Greece, Lithuania, Belarus, Monaco, and Romania all had more than 20% fewer filings, with Portugal having the largest percentage decrease at 60.8%. A number of countries had more Madrid filings in 2009 as compared to 2008, such as (in order of total number of filings) the European Union (3.1%), Japan (2.7%), the Republic of Korea (33.9%), Hungary (14.5%), Croatia (17.5%), and Singapore (20.5%). The United States filed 13.1% fewer applications in 2009 than in 2008. Complete statistical data for the top 40 2009 filing countries dating back to 2005 are available at the link referenced above.

USPTO to Host Independent Inventors Roundtable

2010-03-18T10:39:00.000-04:00

On Monday, March 29, 2010, the U.S. Patent and Trademark Office will be hosting a roundtable for independent and small entity inventors at the USPTO campus in Alexandria, VA. This roundtable, hosted by USPTO Director David Kappos, will "address current issues of concern to the independent and small entity inventor community including patent reform legislation" according to the USPTO announcement (link HERE) on the USPTO Independent Inventors webpage (available HERE). This roundtable will also be available via webcast on the USPTO’s website, and instructions will be made available HERE the day of the webcast. This roundtable will run from 4:30-5:30PM Alexandria time.

CIPO Extension of Time Practice Notices are Now in Effect

2010-03-17T10:05:00.000-04:00

On March 11, 2010, the Canadian Intellectual Property Office (CIPO) announced that its practice notices regarding extensions of time for trade-marks and industrial designs have taken effect. The trade-marks notice (available HERE) and the industrial design notice (available HERE) ere open for consultation throughout October 2009, which, according to the CIPO announcement (available HERE), are to "provide guidance on the practice of granting an extension of time to an applicant to file a response to an Examiner's report." Both notices identify two "exceptional circumstances that could justify an additional extension of time" above the standard extension, including (i) recent changes in the Applicant and/or Agent (via assignment or new counsel, for example), and (ii) circumstances beyond the control of the person concerned, including illness, accident, death, bankruptcy, or other "serious or unforeseen circumstances."

WIPO Announces 23rd Trademark Standing Committee Session

2010-03-16T10:18:00.000-04:00

On April 19-22, 2010, the World Intellectual Property Organization (WIPO) will be hosting its Twenty-Third Session of the "Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications" in Geneva, Switzerland. This meeting (WIPO meeting link HERE), will cover several topics, including "Grounds for Refusal of All Types of Marks," "Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks," "Draft Questionnaire Concerning the Protection of Names of States Against Registration and Use as Trademarks," and "Possible Areas of Convergence in Industrial Design Law and Practice," with materials currently available in PDF format for each topic on the WIPO link above. For example, the documentation in connection with the Grounds for Refusal references 16 individual reasons, including signs not constituting a trademark, lack of distinctiveness, descriptiveness, genericness, functionality, public order and morality, and deceptiveness, to name a few. A formal draft agenda (PDF link HERE) is also available, noting the topics to date and the order in which they will be presented.

USPTO and UKIPO Address Patent Application Backlogs

2010-03-15T10:06:00.001-04:00

On Wednesday, March 10, 2010, the U.S. Patent and Trademark Office (USPTO and the UK Intellectual Property Office (UKIPO) announced a joint action plan to reduce overall patent application processing backlogs in both patent offices. As noted in the USPTO announcement (link HERE), "[p]atent backlogs hinder the deployment of innovation and have clear adverse effects on the global economy," and according to a by London Economics released on behalf of the UKIPO, which is one of the first studies attempting to quantify the economic impact of patent backlogs, "the cost to the global economy of the delay in processing patent applications may be as much as £7.65 ($11.4) billion each year." The leaders of both offices (David Kappos of the USPTO and David Lammy, the UK Minister of State for Higher Education and Intellectual Property), according to the announcement, "committed both the UKIPO and the USPTO to develop a plan to optimize reuse of work on patent applications that are filed jointly at the USPTO and the UKIPO," and "[t]o this end, the offices will identify all areas of reutilization potential by the end of this calendar year, and shall pursue measures designed to facilitate maximum reuse by building confidence in the work done by each office."

Punishment for Web Piracy Crimes in Russia May Become Tougher

2010-03-12T12:01:00.002-05:00

In a recent article in The Moscow Times (available HERE), Russian authorities are seeking to punish internet providers in connection with illegal downloading of content by their customers. As noted within the Article, "[a]nti-piracy changes to the Civil Code, prepared by Sistema Mass-Media, will be considered on Friday by a board including representatives from the Culture, Press and Communications, Interior and Economic Development ministries," noting that "internet providers cannot currently be held accountable for pirate traffic, but with the proposed changes they could be targeted under the Administrative, Civil and Criminal codes." Violations of Article 146 of the Criminal Code, in connection with intellectual property rights, can include punishments up to six years in prison. Illegally downloading movies appears to be commonplace in Russia, noting that one prediction in the article states that "on average, Russian movies are downloaded from the Internet 1 million times during their first week in theaters." As noted in the article, use of Article 146 could target the senior management of Internet providers, "[b]ut the rights owner would need to inform the provider of the client's violation, and punishment would only be meted out to those who do not cut off the offending clients."

BPAI Holding Annual Board Conference - April 7, 2010

2010-03-11T08:26:00.000-05:00

The USPTO recently announced that Chief Judge Michael R. Fleming and the Board of Patent Appeals and Interferences (BPAI) will be hosting its “First Annual Board Conference” on Wednesday, April 7, 2010, at the USPTO’s Madison Auditorium. Several speakers are scheduled to present at this conference (PDF flyer available HERE, including Paul R. Michel, Chief Judge for the U.S. Court of Appeals for the Federal Circuit, Randall R. Rader, Circuit Judge for the U.S. Court of Appeals for the Federal Circuit, Michael R. Fleming, two Vice Chief Judges of the BPAI, Gregory Morse of the USPTO Central Reexam Unit, seven representatives of law firms, with a lunch presentation by David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. There is a nominal registration fee (which includes breakfast, lunch, and refreshments), with registration available online HERE. A formal agenda is available HERE, with topics including “Practice Tips: Top Ten Mistakes,” “Winning Your Non-Obviousness Case at the Board,” and “Inter Partes Reexam,” to name a few.

Well, I Thought She Would

2010-03-09T11:22:00.001-05:00

Back on February 17, 2010, I posted an article on the DDIP blog (link HERE) providing details as to the Federal trademark applications filed by Nicole Polizzi (SNOOKI), Naughty Limited (THE SITUATION), and Paul Delvecchio, Jr. (DJ PAULY D), all of "Jersey Shore" fame, noting that as of that date, no trademark application filed by Jenni Farley ("Jwoww") was publicly available for inspection. Well, that has since changed. As reported by TMZ (link HERE), Farley has filed to protect her own namesake, namely U.S. Trademark Application Serial No. 77/938448 (link HERE) for JWOWW in connection with "[e]ntertainment services in the nature of an n-going reality based television program." Oddly enough, her filing is the only one out of the Jersey Shore filers to seek protection in connection with reality TV. The race is on as to who will obtain allowance first.

Albania Accedes to the EPC

2010-03-08T09:36:00.002-05:00

On Wednesday, March 3, 2010, the European Patent Office (EPO) announced that the Government of the Republic of Albania had deposited its instrument of accession to the European Patent Convention (EPC) on February 11, 2010, so that as of May 1, 2010, the EPC will enter into force for Albania. According to the EPO announcement (link HERE), and as of May 1, Albanian applicants shall be entitled to file PCT applications with the EPO as receiving office, and any PCT request filed on or after that date will automatically designate Albania for the purposes of obtaining a European patent. One caveat, according to the announcement, is that "[n]o European patents for Albania can be granted on the basis of international applications with a filing date prior to 1 May 2010," but that "a national patent can be granted, assuming that Albania has been designated in the international application." Furthermore, "[t]he designation of Albania at the time an international application with a filing date prior to 1 May 2010 enters the European phase is legally invalid." As of May 1, 2010, the European Patent Organization will comprise the following 37 member states: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, the former Yugoslav Republic of Macedonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, San Marino, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

Issue 1/2010 of WIPO Magazine Now Available

2010-03-04T09:20:00.000-05:00

The World Intellectual Property Organization (WIPO) has recently published its 1/2010 (February) issue of WIPO Magazine on its website. Issue 1/2010 (webpage link HERE) is available as a complete download (in .pdf format HERE), as well as by individual article, focusing on the costs of IP litigation. This issue contains articles on an introduction IP litigation costs, U.S. contingency fees, the UK system, and EU Competition law perspective on reverse payments, and whether or not a single patent court could ever exist in Europe. Additional articles include those relating to African and Japanese IP litigation, cost-effective alternatives, tips for minimizing IP dispute settlement costs, and information regarding WIPO’s new top management team.

Facebook Awarded Patent for "News Feed" Technology

2010-03-03T09:39:00.002-05:00

By Alison Plavin and Mark Reichel

On Tuesday, February 23, 2010, Facebook, Inc. was awarded a patent entitled "Dynamically providing a news feed about a user of a social network." This patent (U.S. Patent No. 7,669,123, available HERE), according to a recent PC Magazine article (available HERE), covers a technology first launched by Facebook in 2006 as the "news feed," which lets a Facebook member keep track of his or her friends' on-site activity, such as by joining a group or writing on another's "wall." This patent has a total of 25 claims, most being systems and methods, and two computer medium/program/method claims.

Claim 1 of the issued patent claims a "method for displaying a news feed in a social network environment," comprising the steps of "monitoring a plurality of activities in a social network environment; storing the plurality of activities in a database; generating a plurality of news items regarding one or more of the activities, wherein one or more of the news items is for presentation to one or more viewing users and relates to an activity that was performed by another user; attaching a link associated with at least one of the activities of another user to at least one of the plurality of news items where the link enables a viewing user to participate in the same activity as the another user; limiting access to the plurality of news items to a set of viewing users; and displaying a news feed comprising two or more of the plurality of news items to at least one viewing user of the predetermined set of viewing users." This claim, as issued, includes the step of displaying a news feed of at least two news items based on social network activities, whereby access to said news feeds are limited to a set of viewer-users. As mentioned in the patent, "news items" may include media content items, links to media content regarding the subject user, and links to enable a viewer to participate in activities of the subject user. Inventors listed on the patent include some of the company’s top executives, including its founder, Mark Zuckerberg, as well as Ruchi Sanghvi, Andrew Bosworth, Chris Cox, Aaron Sittig, Chris Hughes, Katie Geminder, and Dan Corson.

According to a PC World magazine article available through MSNBC (link HERE), news feeds are available on many - if not most - social media sites, including MySpace, Flickr, Google Buzz, LinkedIn, Yahoo Mail, and Windows Live. It is unclear at this point how the patent will impact social media, as much will depend on the precise wording of the patent, and whether Facebook actually plans to enforce it. Enforcement may mean that other social networking sites will have to cease use of the technology, or perhaps pay licensing fees to use such functionality. Interestingly, when first launched, the "news feed," now a pivotal part of the Facebook experience, caused a backlash amongst users, and eventually led to an apology by Zuckerberg himself (available HERE on Facebook’s blog) for the lack of privacy features on Facebook. After issuance of the patent, a spokesperson for Facebook (referenced in the PC World magazine article above) stated: "The launch of News Feed in 2006 was a pivotal moment in Facebook's history and changed the way millions of people consumed and discovered information on the site. We are humbled by the growth and adoption of News Feed over time and pleased with being awarded the patent." With some technology commentators decrying the issuance of the patent, including Marshall Kirkpatrick as noted in his recent ReadWriteWeb article available HERE, and others calling it a game-changing potential gold mine (as noted in a recent Computerworld article on the patent available HERE), its impact on the future and use of social media Web sites remains to be seen.

Alison Plavin and Mark Reichel are associates with Ice Miller LLP, focusing their efforts on competitive business practice litigation, various intellectual property matters, and social media and technology issues.

EPO Official Journal for February 2010 Now Available

2010-03-02T12:48:00.000-05:00

On Friday, February 26, 2010, the European Patent Office (EPO) announced the availability of its February 2010 Official Journal. The February 2010 Journal (link HERE) includes several individual reference PDF files including a Contents document (available HERE with embedded hyperlinks), as well as the reference documents themselves, which include information in connection with online filing, 2010 EPO holidays, Patent Prosecution Highway (PPH) Pilot Programs with the USPTO, the Japan Patent Office, and between the Trilateral Offices. Additional information includes an EPO professional representatives listing, guidance for the payment of fees, expenses, and prices, as well as a 2010 calendar of events. The January 2010 Official Journal is also available on the EPO website (link HERE), including a number of documents relating to the Administrative Council of the European Patent Organization, various forms and publications, and details in connection with the European qualifying examination.

EPO Announces "Patent Statistics for Decision Makers 2010" Conference

2010-02-26T10:00:00.000-05:00

On Wednesday, February 24, 2010, the European Patent Office (EPO) announced that it has organized a "Patent Statistics for Decision Makers 2010" conference with the Organization for Economic Cooperation and Development. This conference, to be held from November 17-18, 2010 in Vienna, Austria, has a noted goal "to discuss advances in the analysis of patent information in the context of the current economic landscape, and in light of changes within the patent system and its use by applicants," aiming to bring together "the latest thinking on issues relevant to companies and policy-makers," including patent quality, patent valuation, R&D investment decisions, functions of the international patent system, and patent fee review, to name a few. An initial conference webpage is available HERE, with a page dedicated to a conference call for papers on these and other topics available HERE. According to the EPO, papers submitted for consideration will be reviewed by several individuals, including representatives from companies, universities, and foreign and international patent offices.

USPTO Launches "Inventors Eye"

2010-02-25T10:09:00.000-05:00

The USPTO has recently launched "Inventors Eye," a bimonthly publication providing information to the independent inventor community. The first issue, available HERE, includes several articles of interest, including "Patent Reform: Good for Independent Inventors and Small Businesses," which is an open letter from USPTO David Kappos, and an article from Ronald Jacks of the Office of the Solicitor entitled "Protect Your Innovation: Avoid Scams." Additional articles are included in this first issue, along with a link the USPTO’s "Independent Inventors" webpage, available HERE, which has several links and information for those independent inventors seeking to obtain general patent information. This first issue also provides a mechanism to subscribe so that subsequent issues will be sent directly to you by e-mail.

USPTO Announces Trademark Feedback Mailbox

2010-02-24T11:40:00.000-05:00

On February 18, 2010, the USPTO announced that it has introduced a new "Trademark Feedback mailbox" so that the public can directly contact the USPTO "with complaints, compliments, or other feedback" in connection with trademark operations. According to the press release (available HERE), "[s]uch an e-mail does not constitute an official filing in connection with trademark applications or registrations, and will not become part of the official record," and that sending an e-mail to the trademark feedback address "does not provide a basis to request suspension of an application or appeal and will not stay the period for replying to an Office action, filing a notice of appeal, or submitting any other filing that is due to the USPTO." Additional methods for contacting the USPTO regarding various matters are included within the press release.

Selected WIPO Resources You May Not Be Aware Of

2010-02-23T09:50:00.001-05:00

While reviewing the World Intellectual Property Organization (WIPO) website for updated content, I came across a few resources that may be of help to you now or in the future.

1. Directory of Intellectual Property Offices (available HERE): WIPO has provided an alphabetical listing of national intellectual property offices across the globe, with detailed contact information and direct website links to each office.

2. Free Publications (available HERE): WIPO provides a number of publications, many of which in several languages, on its website free of charge, including "Traditional Knowledge & Indigenous Peoples," issues of WIPO Magazine, and WIPOs Development Agenda, to name a few.

3. WIPO Handbook on Industrial Property Information and Documentation (available HERE): This Handbook, separated into eight parts, is "the authoritative source of the World Intellectual Property Organization (WIPO) Standards, Recommendations and Guidelines in the field of industrial property information and documentation," providing "information on various matters concerning patent, trademark and industrial design documentation."

USPTO Revised Count System Takes Effect

2010-02-22T11:04:00.000-05:00

The USPTO announced on Thursday, February 18, 2010, that its planned examiner count system revisions announced September 30, 2009, have taken effect. According to the USPTO Press Release (available HERE), "[t]he count system is the methodology for determining the amount of time in which a patent examiner is expected to complete a patent examination and the credit that is given for each stage of an examination," and that "[t]hese changes, announced in conjunction with the Patent Office Professional Association (POPA), the union that represents patent examiners, place emphasis on complete and thorough initial examination, and are expected to decrease redundancy and encourage quicker resolution of issues in the patent application process." The count revisions, according to the USPTO, are to address improved working conditions (incentivizing examiners to produce "high-quality" first actions), provide more time for the examiners while decreasing credits on RCEs, and providing process changes to "increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems." Additional details are provided in the announcement itself.

The Ice Loop

2010-02-18T11:51:00.000-05:00

My firm, Ice Miller LLP, has recently launched The Ice Loop, a blog focusing on the Internet, technology, and various social media aspects of the law. This blog, maintained by the firm’s Internet, Technology and Social Media practice, includes articles on several topics, including blogs & social media, business & e-commerce, data security, intellectual property (for which I am a contributor), privacy & free speech, and various client news and events. The Ice Loop is available at www.theiceloop.com, and is linked directly from this blog as well. Please do share any comments you may have regarding The Ice Loop by either commenting on this post or by using the contact link available on The Ice Loop.

SNOOKI, THE SITUATION, and DJ PAULY D - It Was Bound To Happen

2010-02-17T09:32:00.000-05:00

As recently highlighted by The Smoking Gun (article link HERE), Nicole Polizzi, aka "Snooki" of Jersey Shore fame, has filed an intent to use U.S. Trademark Application for the mark SNOOKI. This application (serial no. 77/929,985, application link HERE), was filed on February 7, 2010, and covers two classes, namely IC 016 ("Printed matter, namely books"), and IC 041 ("Entertainment in the nature of personal appearances by a television personality"). This application follows a December 28, 2009 filing by Marc Sorrentino’s company in connection with his brother Michael Sorrentino, aka "The Situation" also of Jersey Shore fame, who filed U.S. trademark application serial no. 77/901,546 (application link HERE) for a stylized version of THE SITUATION, covering one class of goods (IC 025 for "[c]lothing, namely, t-shirts and underwear). This latter application was formally filed by applicant Naughty Limited, LLC, an adult business owned by The Situation’s brother Marc according to The Smoking Gun (article link HERE).

I did a bit of searching, and I see that at least one other Jersey Shore cast member has joined the trademark mix. Paul Delvecchio, Jr., aka DJ Pauly D, has filed two applications for the mark DJ PAULY D. The first application (serial no. 77/929,322, available HERE) was filed on February 5, 2010, and covers "entertainment in the nature of disc jockey services" in IC 041. The second application (serial no. 77/929,416, available HERE), was also filed on February 5, 2010, and covers various entertainment services featuring DJ Pauly D in IC 041. As of this blog post, no publicly available U.S. trademark application has been filed by Jenni "JWoww" Farley, but I do see that someone did file a stylized version of JWOW - JESUS WALKED ON WATER back in 2002 (serial no. 78/109,685, available HERE).

Recent News from IP Australia

2010-02-16T09:44:00.001-05:00

IP Australia, the intellectual property office of Australia, has issued a number of news announcements in February, 2010, relating to various IP matters. The general news page (entitled "What’s new," available HERE), is routinely updated to provide updates to patent practitioners and those generally interested in IP matters before that office. The first news announcement this month was on February 1st, providing a link to the detailed response from Advisory Council on Intellectual Property (ACIP) regarding an inquiry to report on the enforcement of plant breeder’s rights in Australia. On February 8th, IP Australia reported that the Department of Innovation, Industry, Science and Research launched "Commercialisation Australia," which is a "new initiative to assist researchers, entrepreneurs and innovative companies to convert ideas into successful commercial ventures," with "[u]p to $50,000 will be available to firms to access specialist business advice and services including intellectual property management." On February 9th, an update regarding Australia’s Peer-to-Patent pilot project was issued, noting that since its launch in December, the reviewer community provided 27 prior art references and 57 comments relating to Australian patent prosecution. On February 12th, IP Australia announced a new survey (available online or by phone) with the goal of creating "a user focused website which is easy to use and makes finding information simple." Any feedback provided to IP Australia will be confidential, so if you are interested in completing the survey, please click HERE (managed by SurveyMonkey).

U.S. DOJ Launches New IP Task Force

2010-02-15T10:49:00.000-05:00

On Friday, February 12, 2010, U.S. Attorney General Eric Holder announced that the U.S. Department of Justice has launched a new intellectual property task force to combat the increasing prevalence of IP crimes. As referenced within a recent PC World article (available HERE), "The task force will work closely with the recently established White House Office of the Intellectual Property Enforcement Coordinator (IPEC), which has the responsibility of drafting a strategic plan on IP for President Barack Obama's administration." According to Holder, "[t]he rise in intellectual property crime in the United States and abroad threatens not only our public safety but also our economic well-being," and "[t]he Department of Justice must confront this threat with a strong and coordinated response." According to a NationalJournal.com article (available HERE), "[t]he department said the new task force emerged out of a White House meeting hosted by Vice President Biden in December, which included Holder and other members of the president's Cabinet as well as executives from the movie studios, record companies, book publishers and television networks."

Cyber-insurance? What’s Cyber-insurance?

2010-02-12T13:08:00.001-05:00

On Wednesday, an article on NationalJournal.com (link HERE) discussed a term that many of us had not heard before - "cyber-insurance." The concept seems to make sense - when you are at a potential risk of loss or damage to your property, and insurance is available to cover that loss or damage, insurance coverage at least worth considering. As noted within the article, "[t]o prepare American companies for the costly fallout of hacks, as recently experienced by Google's operations in China, a market for cyber-insurance has been taking root and is extending coverage to keep companies and customers safe in cyberspace." Although an economist in 2002 predicted the cyber-insurance market to reach $2.5B by 2005 (which appears to only be closer to $0.5B as referenced in the article), more and more companies, starting with a number of large financial institutions, have been utilizing cyber-insurance. Rob Knake, an international affairs fellow at the Council on Foreign Relations, is quoted in the article as saying "[t]he real cyber-weapons aren’t worms or viruses - they’re the people," and that "[y]ou’re not going to be able to defend against people who work against you while you sleep."

As referenced within the NationalJournal.com article, "Basic cyber-insurance covers hazards such as unauthorized Web site access, online libel, data privacy loss and repairs to company databases after system failures. Broader plans covering costs to notify customers of IT failures and loss of income from site failure are starting to be more widely offered. If intellectual property were insured and that data was hacked, the custom claim would be collected, and the insurer might arrange funding for tech support to secure the systems that were exploited."

Have you or your company considered cyber-insurance? Please feel free to share your thoughts/experiences by way of comment on this blog post.

Need a Job? USPTO is Hiring Patent Examiners

2010-02-11T09:50:00.003-05:00

If you have recently visited the USPTO’s website and searched for anything patent-related, you already know that the USPTO is looking to hire several patent examiners. From the USPTO’s Patents webpage (link HERE), you can click the "JOBS" logo in the middle of the page to go to USAJOBS, a website run by the U.S. Office of Personnel Management, which lists available Federal positions. The USPTO jobs on USAJOBS (link HERE) will lead to a description of "Patent Examiner (*General)", which references "Many vacancies - Alexandria, VA" for such a position, ranging from nearly $70k to just over $90k/yr, plus benefits, depending on experience. The asterisk regarding the vacancies covers the following disciplines: "Aerospace Engineering, Biomedical Engineering, Ceramic Engineering, Chemical Engineering, Civil Engineering, Computer Engineering, General Engineering, Industrial Engineering, Electrical Engineering, Materials Engineering, Mechanical Engineering, Mining Engineering, Nuclear Engineering, Petroleum Engineering, Metallurgy, Pharmacology, Physics, Chemistry, Food Technology, Textile Technology, and Computer Science," which includes a number of technical areas having the highest application backlogs.

The CIPO Announces Three New Updates

2010-02-10T11:02:00.000-05:00

The Canadian Intellectual Property Office (CIPO) recently announced a number of updates to its website and the type of information that is available to the public. On February 1, 2010, the CIPO announced (link HERE) that the Canadian Patents Database, available HERE, now contains patent abstract text in English and French, which are both official languages as received under the Patent Cooperation Treaty (PCT). Two days later, on February 3rd, the CIPO announced HERE that the Trade-marks Opposition Board (TMOB) will allow CIPO website users to electronically file requests for extensions of time and statements for opposition as received by that office. In addition, the TMOB will be updating its website "to provide summaries of featured decisions as well as improved access to all final decisions rendered in section 45 and opposition proceedings." A list of the CIPO’s recent announcements is available HERE on CIPO’s website.

WIPO Releases Detailed 2009 PCT Statistics

2010-02-09T10:29:00.001-05:00

On Monday, February 8, 2010, the World Intellectual Property Organization (WIPO) released statistics for 2009, comparing the numbers to prior years in connection with Patent Cooperation Treaty (PCT) patent application filings. These statistics (available HERE on WIPO’s website) show a general decrease in PCT application filings of 4.5% when comparing 2009 to 2008, noting that several East Asian countries actually had more PCT filings over 2008. For example, PCT applications filed from China were up nearly 30% over 2008, with Japan and the Republic of Korea also showing increases in 2009. On the other end, the United States had a noted drop of 11.4%, Germany decreased 11.2%, Canada fell 11.7%, and Sweden had a 11.3% decrease in PCT filings in 2009 as compared to 2008. When looking at the number of applications filed, the United States had the most PCT filings (45,790), followed by Japan (29,827), Germany (16,736), the Republic of Korea (8,066), and China (7,946) being the top five filing countries. Additional statistics are available for all PCT countries, the top filing companies, and by technology area within the announcement link above.

Konami and Upper Deck Settle IP Lawsuit Regarding Counterfeit Yu-Gi-Oh! Cards

2010-02-05T10:42:00.000-05:00

It was announced last week that gaming company Konami and trading card manufacturer Upper Deck have settled their dispute regarding counterfeit Yu-Gi-Oh! cards. Last year Konami sued Upper Deck after learning that Upper Deck had been manufacturing and distributing hundreds of thousands of Yu-Gi-Oh! cards without permission by the holder of Yu-Gi-Oh! rights, Konami. As noted within the recent BloggingStocks article (link HERE), Konami was seeking $50 to $150 million in damages from Upper Deck. According to the New York Post (article link HERE), Upper Deck CEO Richard McWilliams took the Fifth during trial, but as part of his company’s settlement with Konami, Upper Deck has admitted that it willfully counterfeited the trading cards. According to Wikipedia, Yu-Gi-Oh! originated as a manga cartoon back in 1996, and has grown to several spin-off television series, comic books, movies, and games, as well as trading cards (website link HERE) spanning several dozen series.

USPTO FY 2011 Budget Request Announced

2010-02-04T09:51:00.001-05:00

On Monday, David Kappos announced President Obama’s FY 2011 budget request for the USPTO of just over $2.3 billion. According to the USPTO announcement (available HERE), this budget request will support a new five-year plan to achieve certain USPTO objectives, including reducing pendency periods and the current patent application backlog, improving patent quality, enhancing IP protection and enforcement, global IP policy leadership, and a boost in its IT infrastructure. Kappos, the Under Secretary of Commerce for Intellectual Property and Director USPTO, stated that "[i]ntellectual property is America’s competitive advantage in the 21st Century global economy and will play a central role in our long-term economic growth," and that "[w]e will continue to take steps to make the USPTO more efficient, and drive to reduce the unacceptably long pendency periods that hinder the creation of new businesses and new jobs." An interim increase for certain patent fees is also contemplated, which will raise an additional fee amount of $224 million above the projected almost $2.1 billion in fee collections during FY 2001.

China Experienced 18% Increase in Patent Applications Last Year

2010-02-03T10:45:00.001-05:00

It was recently announced that China received more than 976,000 patent applications last year, representing a nearly 18% increase in the number of applications received by the State Intellectual Property Office of the Peoples Republic of China (SIPO) in 2008. As referenced in the China Daily news article (link HERE), that total represents a combination of patent rights of invention, utility model, and design patent applications, and represents a net increase of the 22% increase in Chinese domestic applications (approximately 90% of all applications filed) and nearly a 11% decrease in foreign applications (the other 10% of applications filed). For those interested in statistics relating to Chinese applications and patents, the SIPO offers a detailed Statistics webpage (link HERE) containing monthly statistics for the last four years.

USPTO Offers Procedure to Obtain PTA Recalculation for Free

2010-02-02T09:34:00.000-05:00

On Thursday, the USPTO announced an interim procedure for certain patentees to request a patent term adjustment (PTA) calculation in view of the recent Federal Circuit decision in Wyeth v. Kappos. This announcement (press release available HERE and formal interim procedure notice available HERE) provides patentees who have received their patents within 180 days from submission of USPTO Form PTO/SB/131 (available HERE in .pdf form from the USPTO) with the opportunity to request a free PTA calculation without the need to pay the typical fee involved with the same. This request window will end on March 2, 2010, as the USPTO expects that its software used to calculate PTA will be updated by then. As noted within the USPTO press release, "[a]n applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review." Form PTO/SB/131 is literally one page long (excluding instructions and privacy notices), and requires only the basic patent information to be included therein. If you decide to use this procedure, please share some feedback via comment to this blog post.

Joint WIPO-ITU Accessibility Workshop to be Held This Week

2010-02-01T10:54:00.001-05:00

The World Intellectual Property Organization ("WIPO") and the International Telecommunications Union ("ITU") will jointly be hosting an Accessibility Workshop this week with an objective to "promote awareness on accessibility and encourage webmasters within the United Nations system and other International Organizations to implement accessibility in their daily work." This Workshop (details available HERE on WIPO’s website) will include discussions on accessibility from companies such as Yahoo and Adobe, as well as training sessions on testing for accessibility and training on understanding and using the Web Accessibility Initiative of the World Wide Web Consortium and the Accessible Rich Internet Applications (ARIA) specification. A list of presenters is available HERE, and a program for the four days (February 2-5, 2010) is available online HERE.

British Virgin Islands Announces Intellectual Property Law Revision Plan

2010-01-29T10:26:00.001-05:00

Earlier this month, the Financial Services Commission ("FSC") of the British Virgin Islands ("BVI") announced its plan to revise its existing intellectual property laws. As noted in a recent Mondaq article (available HERE), the BVI has become increasing popular with global trade and investment, and in attempt to assist its more than 60,000 new companies per year facilitate business innovation, the FSC will establish a specific focus group to address the BVI’s current Intellectual and Industrial Property ("IIP") laws. According to the FSC’s January 5, 2010 press release (available HERE in .pdf format), the focus group will review "all current IIP Law and treaties, considering the operation of modern IIP laws in other jurisdictions and preparing new and or revised legislation for the consideration of the Commission," making specific reference to BVI’s Patents Act, registration of United Kingdom Trade Marks, the United Kingdom Designs (Protection) Act, and the Merchandise Marks Act. The focus group will likely be inaugurated next month and will have a goal of completing its review by the end of 2010.

Apple Receives iPad Patent on Eve of Launch Date

2010-01-28T09:17:00.002-05:00

On Wednesday, Apple Inc. launched its anticipated iPad handheld device, which appears to have the functionality of an iPhone and more with nearly a ten inch screen. The day before, however, is also notable as U.S. Patent No. 7,653,883, entitled "Proximity detector in handheld device," was issued to Apple by the USPTO. According to the patent, the invention relates to an I/O platform having an I/O surface with I/O devices, including "a proximity detection system configured to detect when a finger is in close proximity to but not contacting the I/O surface," and in another embodiment, the invention relates to a portable computing device having such a proximity detection system. As noted by a recent PC Magazine article (available HERE through Yahoo! News), "the patent in question…doesn’t cover the tablet itself, but a means of data entry within it." If you have an interest in following Apple’s new patents, Jack Purcher’s Patently Apple blog (available HERE) may be of interest to you.

CIPO Now Offering Trade-mark News Via E-Mail Subscription

2010-01-27T10:27:00.001-05:00

Last week, the Canadian Intellectual Property Office ("CIPO") announced that it is now offering an e-mail subscription service to its Trade-mark News offering. As noted within the CIPO’s What’s New webpage (link available HERE, with this particular offering under the January 18, 2010 heading), the CIPO’s Trade-marks Branch and Trade-marks Opposition Board will provide information in connection with updates to the CIPO’s Wares and Services Manual (available online HERE), new trade-marks consultations and practice notices, and the "What’s New" announcements relating to trademarks available on the CIPO’s website. E-mail registration is available at this LINK. If you decide to subscribe, please feel free to provide feedback via comment to this blog article.

EPO Survey To Address Uses of Patent Information

2010-01-26T09:38:00.000-05:00

The European Patent Office (EPO) has recently announced that it is launching a new follow-up survey to determine how the public does, or does not, use available patent information. As noted within the EPO’s announcement (link HERE), the last survey was performed in 2002-03, and identified that 70% of surveyed companies in Europe actually didn’t even use patent information. This new survey will be carried out in all of the current EPO member states (current list available HERE) plus the United States. According to the EPO, "Our target group is the innovation sector at large - including industry, public sector research, and academia. We are not especially focusing on patent applicants or patent attorneys, although some may get into the study because of the randomized sampling procedure." The private surveyor plans to conduct all surveys via telephone, which will be available in 25 different languages.

Recent USPTO Roundtable – Proposed BPAI Ex Parte Appeals Rules Modifications

2010-01-25T10:18:00.001-05:00

On January 20, 2010, the USPTO moderated a public roundtable discussion to obtain public comments on the proposed rules modifications in connection with ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI). As noted in a recent USPTO release (link HERE), the USPTO has a goal of reducing the pendency of its ex parte appeals, noting that the time from when a patent applicant files a notice of appeal until the time the BPAI renders its decision now averages nearly 2 and a half years (29.3 months), an increase from the 27.5 month pendency calculated at the end of FY2009. Sharon Barner, the Deputy Under Secretary of Commerce for Intellectual Property, Deputy Director of the USPTO, and moderator of the roundtable, stated that "[t]his roundtable was an important step to gather valuable insight from the public on these proposed modifications and to work together with stakeholders toward a more efficient appeal process and more timely Board decisions."

The proposed rules were published in the December 22, 2009 Federal Register (excerpt link HERE). As noted within the USPTO press release, the proposed rule change objectives are "to provide clarity so that appellants know exactly what the rules require, and so that examiners know what they need to do; to streamline the process so that cases move from notice of appeal to decision in a more efficient and timely manner; to allow appellants and examiners an opportunity to fully respond to each other’s positions; and to ensure the appeal process allows for issues to be crystallized so that the Board receives fully-developed issues to be decided." A list of roundtable participants is available HERE, noting that Dennis Crouch, a fellow blogger and University of Missouri School of Law faculty member, was among the participants. If you are interested, you can review the PowerPoint slides used with the roundtable by clicking HERE.

Recent Cyber Attacks Demonstrate the Power of Malware

2010-01-22T09:36:00.001-05:00

A recent series of cyber attacks, appearing to originate from China, have demonstrated how powerful malware can even compromise high technology companies. As referenced in a recent San Jose Mercury News article (link available HERE), Google admitted to being the victim of a series of cyber attacks that were strong enough to steal some of its own intellectual property and negatively impact between 20 and 30 other high-tech companies in Silicon Valley. Secretary of State Hillary Clinton has taken a leadership role regarding internet security and commerce, and recently gave a foreign policy address in Washington D.C. discussing, in part, the impact of malware and its ability to breach even highly-secured corporate systems. As noted in the San Jose Mercury News article, the rapid increase in the volume of malware is indicated by Symantec’s collection of malware, whereby 60% of all of its collected malware code (5.9 million pieces) was created in the last 15 months.

According to DailyFinance (article link HERE), the cyber attack against Google may have even involved some Google employees in China. As mentioned therein, "The news certainly adds a new wrinkle to cyber-espionage. It means that employees, who are either bribed or have conflicting loyalties to their employers, may pose the single most dangerous threat to the security of servers that hold data for companies ranging from search engines to government sites to e-mail operations handling the communications of hundreds of millions of people."

WIPO Standing Committee on the Law of Patents: Fourteenth Session

2010-01-21T10:00:00.003-05:00

On January 25-29, 2010, the World Intellectual Property Organization (WIPO) will be hosting its Fourteenth Session of the Standing Committee on the Law of Patents. The following items will be discussed, with links to the various handouts in PDF format:

Agenda (PDF)
The Client-Advisor Privilege (PDF)
Technical Solutions to Improve Access to, and Dissemination of, Patent Information (PDF)
Transfer of Technology (PDF)
Opposition Systems (PDF)
Report on the International Patent System: Revised Annex II of Document SCP/12/3 Rev. 2 (PDF) (and PDF of Annex I)

There are also additional documents available, including patent standards and exclusions of patentable subject matter, available at the WIPO link HERE.

Canadian Privacy Commissioner to Consult on Social Networking and Profiling

2010-01-20T09:27:00.002-05:00

The Toronto Sun has recently reported that Canada’s Privacy Commissioner, Jennifer Stoddart, will be offering a series of consultations available to the public specifically addressing how social networks function as repositories for data collectors and consumer profilers. The Toronto Sun article (link HERE, with content provided by The Canadian Press) states that Ms. Stoddart "is examining the privacy risks associated with the online tracking, profiling and targeting of consumers, in the lead up to a review of the Personal Information Protection and Electronic Documents Act." According to Ms. Stoddart, and as referenced within a recent CNW Group Ltd. Article available HERE, "The consultation will equip the Office of the Privacy Commissioner of Canada with a deeper understanding of the practice of tracking, profiling and targeting consumers online," and "[i]t will also provide a forum for the exploration of the privacy implications related to this modern industry practice, and the protections that Canadians expect." The Office of the Privacy Commissioner of Canada (website link HERE) is soliciting written submissions from interested parties through March 15, 2010, and is also seeking interested potential panelists to participate in open discussion panels the following two months in Toronto and Montreal.

Conan O’Brien Wants to Keep His IP

2010-01-19T10:16:00.001-05:00

We have all been reading and hearing about the recent NBC shakeup regarding Jay Leno and Conan O’Brien, and now we have an interesting intellectual property ownership twist. Aside from the many millions of dollars changing hands and the desire to maintain a coveted time slot for late-night television, Conan O’Brien is seeking to keep certain intellectual property made famous during his tenure on NBC. The IP concern relates to several characters, including Pimpbot 5000 and Triumph the Insult Comic Dog, as well as at least one other character not mentioned here but available at this LINK to Movie|Line’s article as well as this LINK to TMZ’s take on the story. Although Robert Smigel is the man literally behind Truimph, that character had its humble beginnings with Mr. O’Brien but has also gained notoriety with various television specials, videos, CDs, and several YouTube clips. Apparently these characters will live on with Conan wherever he may go, but there will also be strings attached, not limited to a well-publicized non-disparagement clause.

** UPDATE ** - Perhaps Conan's famous characters may not follow him to his new gig, as per this more recent TMZ article available HERE.

New Test Post

2009-12-28T18:54:00.001-05:00

My goal is that as of January 2010, the Daily Dose of IP Blog will be back up and running at full capacity. You will see that a number of changes have been made, including multiple RSS feeds for various patent offices, as well as a more user-friendly format to allow readers of this blog to get the most out of it. Thanks for reading!

WIPO Magazine – 2/2009 Issue

2009-04-30T10:00:00.000-04:00

The 2/2009 issue of WIPO Magazine is available on line through the World Intellectual Property Organization's website, and as referenced in my prior post, this particular issue focuses on green technology. The following articles (as referenced on WIPO's website, each hyperlinked for convenience) are included within the 2/2009 issue:

IP and Climate Change Negotiations: From Bali to Copenhagen, Via Poznań – This article discusses various conferences in connection with climate change, starting with a 1992 convention held in Rio de Janeiro in 1992 and ending with the convening of the most current Climate Change Conference in Poznan, Poland.

Sharing technology to meet a common challenge – This article discusses various challenges regarding the search for climate change innovations and models for sharing technology such as patent pools, licenses, and the public domain.

Climate Change – The Technology Challenge – This article discusses the role of intellectual property and innovation regarding efforts to curb the negative effects of climate change.

Towards a Green Stone Age? – This article highlights the efforts of a German engineering firm leading to the development of a granite composite material.

Patenting and Access to Clean Energy Technologies in Developing Countries – This article reference several clean energy technologies, such as photovoltaics, biofuels, and wind, and efforts to allow such technologies to be used in developing countries.

New Rice for Africa – Plant Breeding Technologies Fighting Hunger – This article discusses the two basic rice varieties used by African farmers, and a new type of rice (Nerica™) offering higher yields and faster ripening times.

From Cows to Kilowatts – A Case Study in Successful Technology Transfer – This article discusses the efforts of a Nigerian researcher to use slaughterhouse waste to generate useful biogas.

Hot Property – IP Strategies in the Solar Tech Sector – This article discusses the efforts of a Spanish photovoltaic technology company and their decisions regarding potential IP acquisition, protection, licensing, and enforcement.

Green Technologies: Electric Cars with Hydrogen Fuel Cells – This article discusses hydrogen fuel cell technology, its history, and a Canadian company's efforts to increase hydrogen's power density.

Green Design – From Cradle to Cradle – This article discusses the Cradle to Cradle™ ("C2C") certification mark as applying to certain recyclable products made in accordance with non-polluting factories.

Green Branding – Cashing in on the Eco-Market – This article references branding efforts of Australia, Chile, the EU, and Thailand in connection with green technologies.

PCT Portraits: Eco-Inventors – This article highlights the efforts of three inventors who have developed technologies regarding various "wastes".

When Innovation is Child’s Play – This article discusses the development and use of children's playground equipment that doubles as a well pump to supply fresh drinking water.

2/2009 WIPO Magazine (full issue): LINK
WIPO Magazine Webpage: LINK

World Intellectual Property Day – 04/26/2009

2009-04-28T10:12:00.000-04:00

As highlighted by the World Intellectual Property Organization ("WIPO"), 2009’s World Intellectual Property Day ("World IP Day") was April 26, 2009. According to the WIPO World IP Day website (link below), "WIPO and its Member States celebrate World Intellectual Property Day with activities, events and campaigns," which "seek to increase public understanding of what IP really means, and to demonstrate how the IP system fosters not only music, arts and entertainments, but also all the products and technological innovations that help to shape our world." The four specific aims of the annual World IP Day are:

- to raise awareness of how patents, copyright, trademarks and designs impact on daily life;
- to increase understanding of how protecting IP rights helps promote creativity and innovation;
- to celebrate creativity, and the contribution made by creators and innovators to the development of societies across the globe; and
- to encourage respect for the IP rights of others.

The 2009 World IP Day focused on promoting green technology, and consistent with WIPO’s efforts to reduce mass-mailings, it has made available various electronic information, including a special issue of WIPO Magazine (focusing on green innovation). This information is available at the second link below.

WIPO World IP Day Webpage: LINK
2009 World IP Day Webpage: LINK
Suggested World IP Day Activities: LINK
WIPO Magazine (2/2009 Issue): LINK

USPTO Announces German PPH Program

2009-04-23T11:19:00.000-04:00

Last week, the USPTO announced that it has partnered with the German Patent and Trademark Office (DPMA) in establishing the newest Patent Prosecution Highway (PPH) pilot program. This new program, starting on April 27th of this year and running for an initial two period, is being established to "streamline the patent system and promote expeditious, inexpensive and high-quality patent protection throughout the world." According to John Doll, the Acting Director of the USPTO, "The Patent Prosecution Highway with Germany will eliminate redundant work and expedite processing," and "By working with our colleagues at the German Patent and Trade Mark Office, both offices will increase the efficiency of the patent process and will further expand a worldwide network that allows a broader array of inventors to take advantage of these benefits." This is the ninth PPH program between the USPTO and a foreign patent office. According to the USPTO (as noted in the second link below), "Under PPH agreements, an applicant receiving a favorable ruling from one nation's patent office on at least one claim in an application may request that the corresponding application filed with the other nation advance out of turn for examination. By coordinating patentable results between both nations' offices, applicants can expect to obtain patents in both nations more quickly."

USPTO/DPMA PPH Details: LINK
USPTO Announcement: LINK
USPTO Requirements for DPMA PPH: LINK

Octomom™?

2009-04-22T10:27:00.000-04:00

On April 10, 2009, Nadya Suleman, widely known as "Octomom" based on giving birth to octuplets earlier this year, filed two separate trademark applications for the mark OCTOMOM. The first application (U.S. Trademark Application Serial No. 77/711,827, first link below) was filed in international class 041 in connection with the services of "entertainment in the nature of on-going television programs in the field of varity (sp)." The second trademark application (U.S. Trademark Application Serial No. 77/711,852, second link below) was filed in international classes 016 (in connection with "disposable diapers") and 025 (in connection with dresses, pants, shirts, and textile diapers). Each application lists "Nadya Suleman AKA Octomom" as the applicant, and include a signed "Consent of Living Declaration" where Ms. Suleman declares "that OCTOMOM is a nickname by which I am widely known," consenting to the use of her nickname as a trademark. However, and on March 12, 2009, applicant Super Happy Fun Fun, Inc. filed a trademark application for OCTOMOM (U.S. Trademark Application Serial No. 77/689,864, third link below) in international classes 009 (relating to computer software, ring tones, wall papers, screen savers, etc.), 028 (toy action figures and other types of toys), and 041 (entertainment services relating to online computer games and other services). Any ideas on which of these applications, if any, will proceed to publication first?

Application Serial No. 77/711,827 (Suleman): LINK
Application Serial No. 77/711,852 (Suleman): LINK
Application Serial No. 77/689,864 (Super Happy Fun Fun): LINK

USPTO National Trademark Expo – May 8-9, 2009

2009-04-08T09:29:00.000-04:00

The USPTO has announced that its National Trademark Expo event will be held on May 8th (10AM-6PM) and 9th (10AM – 4PM) in the atrium of the USPTO’s Madison Building in Alexandria, Virginia. This event, referenced in the USPTO announcement link below, "will feature exciting colorful interactive exhibits that illustrate the pervasive and important role trademarks play in our economy," whereby "[v]isitors will learn about the many different kinds of trademarks such as sound, design and color, and will also learn about the history and evolution of trademarks, some of which are more than 100 years old." In addition to highlighting trademarks in general, several trademarked characters (like the Pillsbury Doughboy) and exhibiting companies will be present, and the Expo will also highlight the negative effects of counterfeiting on the nation’s economy. A list of exhibitors is available at the second link below.

USPTO Announcement: LINK
Expo Exhibitor List: LINK

EPO Announces Several Revisions to the Implementing Regulations of the EPC

2009-04-07T09:13:00.000-04:00

On Monday, and in two separate decisions, the European Patent Office announced several revisions to the Implementing Regulations to the European Patent Convention ("EPC"). The first decision (CA/D 2/09) includes revisions to and/or language under Articles 1-3, namely to Rules 36, 57, and 135 under Article 1. Specifically, amendments to Rule 36 (1) and (2), (relating to divisional applications), Rule 57(a) (pertaining to translations), and Rule 135(2) (relating to ruling out further processing) will be implemented on April 1, 2010, per the language provided in Articles 2 and 3. In addition, and under the second decision (CA/D 3/09), several new or revised Rules under Article 1 are presented, namely new Rules 62a and 70a and amended Rules 63, 64, 69, 135, 137, and 161. New Rule 62a relates to applications containing a plurality of claims, whereby an applicant shall be invited to indicate the claims complying with Rule 43, paragraph 2, that will be searched if the claims as filed originally do not comply with that rule. New Rule 70a pertains to responses to the extended European search report, offering an applicant "the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1." Additional details regarding the new Rules and the revisions to the remaining Rules are as presented in the second link below, all of which, as noted within the link, will become effective on April 1, 2010.

EPO Decision (CA/D 2/09): LINK
EPO Decision (CA/D 3/09): LINK

DDIP Tidbits – 04/06/2009

2009-04-06T11:00:00.000-04:00

1. The Canadian Intellectual Property Office (CIPO) has issued a warning regarding "certain companies [that] are soliciting payment for Canadian trade-mark registration applications that were in fact not requested." If you have received an invoice relating to a Canadian trademark that did not originate from your trademark agent/attorney or the CIPO, the CIPO recommends that you contact your agent or the CIPO at the number provided in the CIPO warning.

CIPO Warning: LINK

2. The USPTO is requesting nominations for Public Advisory Committees established by the 1999 Patent and Trademark Office Efficiency Act. The two committees were established, according to the USPTO announcement below, to review the policies, goals, performance, budget and user fees of the United States Patent and Trademark Office (USPTO) with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee, and to advise the Director on these matters." Nominations are due by May 15, 2009, and submission instructions are provided in the link below.

USPTO Announcement: LINK

Blog vacation - returning Monday, April 6th

2009-03-26T10:53:00.000-04:00

Posts on the Daily Dose of IP blog will return on April 6, 2009. Thanks for reading!

USPTO Comments on International Applications with Improperly Chosen ISAs

2009-03-18T11:08:00.000-04:00

On Friday, the USPTO issued an announcement regarding a "significant number of international applications" filed in the U.S. Receiving Office under the Patent Cooperation Treaty (PCT) that were filed with a chosen International Searching Authority (ISA) that is not competent to review the subject matter of the claimed invention. For example, the European Patent Office (EPO) will not act as an ISA for applications having one or more business method claims. In addition, the Australian Patent Office (IP Australia) will not act as an ISA for applications having one or more claims having subject matter set forth in Annex A of the Arrangement between IP Australia and the USPTO (as highlighted in the Official Gazette excerpt link below). As noted by the USPTO, "[t]o avoid significant processing delays, applicants filing international applications naming either the EPO or IP Australia as the ISA should take care to ensure that the application does not contain any claims for which the selected ISA is not competent." Procedurally, if the selected ISA determines, upon receipt of the international application with the U.S. Receiving Office, that it is not competent to act on the application, the application will returned to the U.S. Receiving Office, who will then notify and invite the applicant to select a new ISA. Once selected, the application will be routed to the new ISA for processing. However, this procedure could take quite some time, and may result in the applicant receiving a search report and written opinion later than originally anticipated.

USPTO Announcement (PDF): LINK
Official Gazette Excerpt: LINK

USPTO Extends Deferred Examination Comment Window

2009-03-10T10:12:00.000-04:00

In yesterday’s Federal Register, the USPTO announced that it has extending its comment window regarding deferred examination "to provide interested members of the public with an additional opportunity to view the Webcast before submitting comments to the USPTO." As previously reported in the DDIP blog, on February 12, 2009, the USPTO hosted a roundtable event to discuss the topic of deferred patent examination, providing a select number of public representatives the opportunity to participate and share their views on examination deferrals. The roundtable, now available via webcast on the USPTO website (see link below, noting that no audio is available for the first two minutes of the webcast), was conducted to determine whether or not there was support in the patent community regarding deferred patent applications. The window for providing comments has been extended to May 29, 2009.

March 9, 2009 Federal Register Excerpt: LINK
February 3, 2009 DDIP Article: LINK
January 29, 2009 Federal Register Excerpt: LINK
Deferred Examination Webcast: LINK

EPO President Decides Electronic Filing Matters

2009-03-05T09:37:00.000-05:00

Yesterday, the European Patent Office (EPO) announced that the President of the EPO made several decisions on February 26, 2009, concerning the electronic filing of various types of documents at the EPO. A selected number of these decisions, taking effect today (March 5, 2009), are as follows:

Article 1 (Admissibility of electronic filing) - Documents in proceedings under the EPC may be filed with the European Patent Office in electronic form, and European patent applications may also be filed in electronic form with the competent national authorities of those contracting states which so permit.

Article 2 (Filing of international patent applications and other documents) - International (PCT) applications may be filed with the European Patent Office in electronic form, and other documents within the meaning of Rule 89bis.1 and 2 PCT not forming part of the international (PCT) application may be filed in electronic form.

Article 3 (Filing of priority documents) - Articles 1 and 2 shall not apply to priority documents, unless they have been digitally signed by the issuing authority and the signature is accepted by the European Patent Office.

Article 7 (Signature) - Where filed documents require signature, subject to Article 8 this may take the form of a facsimile signature, a text string signature or an enhanced electronic signature. A facsimile signature shall be the facsimile reproduction of the filing person's signature. A text string signature shall be a string of characters, preceded and followed by a forward slash (/), selected by the signatory to provide evidence of his identity and of his intent to authenticate the message in question. An enhanced electronic signature shall be an electronic signature either issued by the European Patent Office or accepted by it.

The complete list of decisions (Articles 1-14) is available at the EPO announcement link below.

EPO Announcement: LINK

USPTO Seeking NMTI Nominations

2009-03-03T09:40:00.000-05:00

Yesterday, the USPTO announced that it once again seeking nominations for potential recipients of the National Medal of Technology and Innovation (NMTI), presented by the President of the United States each year to select individuals for their technological achievements. According to the USPTO press release (link below), "The honorees are selected for their outstanding contributions to the nation's economic, environmental and social well-being through the development and commercialization of technological products, processes and concepts; technological innovation; and development of the Nation's technological manpower." Nominees may include individual inventors, teams of inventors, companies, and/or divisions of companies. Nominations may be made through May 29, 2009, and can be submitted via the second link below.

USPTO Announcement: LINK
NMTI Nomination Webpage: LINK
2007 NMTI Recipients: LINK

EPO Seeks Comments on Patentability of Computer Programs

2009-02-25T12:42:00.000-05:00

The European Patent Office (EPO) recently announced that its Enlarged Board of Appeal (EBA) is accepting written statements regarding pending referral G 3/08 pertaining to the patentability of computer programs. Third parties to the appeal have until the deadline of April 30, 2009 to submit written comments and any new cited documents in connection with the following four referred questions:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.
(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.
(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.
(a) Does the activity of programming a computer necessarily involve technical considerations?

(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

According to the EPO announcement (link below), "The referral does not call into question EPC Article 52(2) and (3), which states that programs for computers as such are not to be regarded as inventions and are therefore excluded from patentability. Instead, it seeks guidance on how the details of this exclusion are to be applied."

Copies of the referral (including summary letter, definitions, the questions with additional commentary, and the current state of the law), referral references, the text of Article 10 of the Rules of Procedure of the Enlarged Board of Appeals, The November 11, 2008 decision of the EBA, and the questions as presented in the Official Journal of the EPO (1/2009) are provided within the second link below.

EPO Announcement: LINK
Case G 3/08 (large PDF): LINK
Specific Pending Referral Webpage: LINK
Specific Referral FAQ Webpage: LINK

2007 EPO Patent Statistics Now Available

2009-02-19T11:00:00.000-05:00

The European Patent Office (EPO) announced yesterday on its website that its annual compilation of patent statistics has been completed and is publicly available for the year 2007. According to the EPO announcement (first link below), the statistics include the following:

- the number of European patent applications filed per technical domain and origin
- the number of European patents granted per technical domain and origin
- the most active patent filers

Statistical data, based upon extracts from the EPO’s monitoring database EPASYS, is available for the following categories:

1. Top 100 applicants in 2007 – The top 10 applicants, in order with number of applications in parentheses, are Philips (3,222 applications), Samsung (2,478), Siemens (1,850), BASF (1,474), Matsushita (1,395), Robert Bosch (1,166), LG (1,080), Sony (929), Nokia (873), and Fujitsu (819). A chart of the top 100 is provided at the link below.
Top 100 Webpage: LINK

2. European patent applications filed in 2007 per technical field and origin
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

3. European patent applications 1998-2007 per country of residence of the applicant
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

4. European patents granted 1998-2007 per country of residence of the patentee
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

EPO Announcement: LINK

CIPO Changes TOB Practice

2009-02-16T10:17:00.000-05:00

The Canadian Intellectual Property Office ("CIPO") recently announced that its Trade-marks Opposition Board will be revising its procedures effective March 31, 2009. According to the CIPO announcement (link below), the new practice is provided in a formal notice entitled "Practice in Trademark Opposition Proceedings," with changes including (quoted directly from the announcement):

- "Simplifying and clarifying the Registrar's benchmarks for granting extensions of time.

- Providing guidance with respect to the granting of extensions of time in exceptional circumstances.

- Encouraging parties to pursue settlement and mediation early in the opposition proceeding.

- Introducing a new practice of granting extensions of time amounting to a cooling-off period for parties to pursue settlement and mediation. In particular, the new practice notice will allow the opponent to request one extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its statement of opposition or its Rule 41(1) evidence with the possibility for the applicant to also request one further extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its counter statement or its Rule 42(1) evidence.

- Introducing a new practice with respect to the scheduling of hearings."

These new procedures as detailed within the aforementioned Practice notice will effectively replace the current notice entitled "Procedure before the Trade-marks Opposition Board as of October 1, 2007."

CIPO Announcement: LINK
Current Practice Notice: LINK
New Practice Notice (as of 3/31/09): LINK

PPAC Committee Meeting to be Webcast this Friday

2009-02-12T09:47:00.000-05:00

On Friday, February 13th, the USPTO will be providing to the public, via webcast, the public sessions of the next Patent Public Advisory Committee (PPAC) meeting. The actual meeting, held at USPTO headquarters in Alexandria, VA, will commence at 9:30am local time and will continue to 3:00pm, with a public stream of the event available at a specific USPTO webpage (link provided below). According to the USPTO announcement (also linked below), the meeting will begin with a discussion of specific action items within the 2008 PPAC annual report, including the following (directly quoted/reproduced from the announcement itself):

A. Definitions of a "quality" issued patent, "quality" patent application and "quality" patent prosecution and examination.
B. Revisions to the current information disclosure statement requirements (e.g., Rules 1.98 and 1.99), including the ramifications of the Inequitable Conduct theory on any proposed rules.
C. Pre-examination interviews.
D. Nationwide USPTO workforce.
E. USPTO/University pilot program to offer loans to qualified engineering students willing to become examiners.
F. Market-based examination model.
G. Full utilization of foreign prior art searches and expanded IPC search capability.

The afternoon session will continue the same discussion and include details as to what the PPAC seeks to accomplish in 2009.

In addition to the webcast, if you are interested in listening to the event via listen-only conference call, dial-in instructions are provided within the USPTO announcement link provided below.

USPTO Announcement: LINK
Webcast URL: LINK
2007 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report Scorecard (PDF): LINK

WIPO Meeting to Discuss IP as a Financing Tool

2009-02-09T09:45:00.000-05:00

The World Intellectual Property Organization (WIPO) announced last week that it will be holding a meeting next month at WIPO headquarters to discuss the use if intellectual property (IP) assets as a tool to raise financing. This meeting, to be held on March 10, 2009, will discuss using IP assets, namely "copyright, patents, trademarks, designs – as collateral, particularly for small and medium-sized enterprises which depend on know-how and IP assets to bolster company value" as referenced within the WIPO press release (link below). As further noted within the press release, "[u]sing untapped intangible assets to secure finance is all the more crucial for companies in the current economic environment," recognizing that "[i]ntangible assets are estimated to account for the bulk of corporate value today," and that "the financial potential of IP assets has yet to be fully realized, largely because systems of financial accounting remain primarily tailored to tangible assets. The continued growth and success of IP financing hinges on legal and regulatory support, the awareness of the banking industry and sophistication of capital markets."

In addition, and if you are in Indianapolis tomorrow evening, I will be one of three panelists at an evening presentation for the Indiana Biomedical Entrepreneur Network (IBEN) to be held at the Ruth Lilly Learning/Riley Outpatient Center Auditorium on the Indiana University Purdue University Indianapolis (IUPUI) campus. As noted within the IBEN seminar webpage (link below), "[t]he program will be a panel discussion focusing on the start-up company and the importance of protecting its intellectual property, reasons to secure formal IP protection, common strategies employed by companies, the importance of IP to investors, and recent changes in patent law and the potential impact." The presentation, as referenced above, will include a discussion of leveraging a company’s IP assets, covering a similar scope as the upcoming March WIPO meeting. The other two panelists at tomorrow evening’s seminar are Melinda Schriver, President of LacPro Industries, LLC, and Dustin DuBois, a partner at my firm in the Private Equity and Venture Services Group. This event will be moderated by Michael Swift, a partner at Ice Miller LLP in the Intellectual Property Group. I hope to see you there.

WIPO Press Release: LINK
IBEN Website: LINK
IBEN Seminar Webpage: LINK

USPTO Concludes Continuing Education Pilot Program

2009-02-05T10:10:00.000-05:00

On Monday, the USPTO announced that it "successfully" tested the delivery of its own continuing education materials to patent practitioners through its Learning Management System. Last fall, the USPTO allowed over 850 patent attorneys and agents to participate in the pilot program, which included courses on how the USPTO handles patent applications post-KSR, common errors made by patent practitioners in petitions practice, and how the USPTO handles electronic signatures and powers of attorney. Although the number of patent attorneys outnumbered the number of patent agents by more than three to one, the program completion rate was slightly higher for patent agents (83% vs. 76%). According to the USPTO announcement (link below), "Feedback provided by the volunteers gave high grades for course content, but noted a number of areas where delivery of the courses through the Learning Management System could be improved. The USPTO is working on system improvements to address concerns and suggestions noted during the CEP Pilot Program. Final rules concerning Continuing Education for Practitioners are currently under consideration. Further announcements will be made as developments occur."

USPTO Announcement: LINK

USPTO to Host Deferred Patent Examination Roundtable

2009-02-03T10:31:00.000-05:00

In the January 28, 2009 Federal Register, the USPTO announced that it will be hosting a roundtable event to discuss the topic of deferred patent examination. According to the Federal Register (excerpt link below), the roundtable will be held on February 12, 2009, from 9 a.m. until 12:30 p.m. at USPTO headquarters in Alexandria, VA, and will provide a select number of public representatives the opportunity to participate and share their views on examination deferrals. As noted in the excerpt, the roundtable is being conducted "to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral or examination," noting that "many intellectual property (IP) offices that substantively examine patent applications do not perform a substantive examination on every patent application that is filed in the respective office." The USPTO is accepting participation requests through 5 p.m. this Thursday, February 5th.

As a side note, the USPTO actually does have a procedure in place (as noted within the excerpt link below) to defer substantive examination for up to three years from the earliest filing date for which a benefit is claimed under Title 35 of the U.S. Code. Since November 29, 2000, which was also the effective date of the USPTO eighteen month publication rule, less than 200 applications have utilized this deferral procedure (provided under 37 C.F.R. § 1.103(d)).

Federal Register Excerpt (PDF): LINK
37 C.F.R. § 1.103(d): LINK

USPTO/KIPO PPH Now Permanent

2009-01-30T09:30:00.000-05:00

The USPTO and the Korean Intellectual Property Office ("KIPO") collectively announced that their original pilot Patent Prosecution Highway ("PPH") program will be implemented full time starting on January 29, 2009. According to the USPTO, and under this PPH, "an applicant receiving a ruling from either the KIPO or the USPTO that at least one claim in an application is patentable may request that the corresponding application filed at the other office advanced out of turn for examination," and "[b]y basing the prosecution in the second office on patentable results from the first office, applicants can expect to obtain patents in both offices faster." If you have used the USPTO-KIPO PPH, or any other USPTO PPH, please post a comment to this blog post to share your experiences with the program.

USPTO Announcement: LINK
USPTO-KIPO PPH Webpage (via USPTO): LINK
USPTO-KIPO PPH Webpage (via KIPO): LINK
USPTO-KIPO PPH Request Form (PDF, via USPTO): LINK

EPO Announces New Fee Structure Effective April 1, 2009

2009-01-27T09:43:00.000-05:00

On Monday, the European Patent Office (EPO) provided a formal notice via the EPO website regarding significant changes to its current fee structure. According to the EPO, "Those aspects of the new fee structure described under points 3.1 to 3.4 below (two-tier structure of claims fees, additional fee on filing, flat designation fee, flat fee for grant and publication) apply to European patent applications, including European divisional applications and new applications under Article 61(1)(b) EPC, filed on or after 1 April 2009 and to international applications entering the regional phase on or after that date. European patent applications filed and international applications entering the regional phase before 1 April 2009 remain subject to the old fee structure, and so for these applications the relevant provisions of the Implementing Regulations and the Rules relating to Fees as in force until 31 March 2009 will continue to apply."

A few of the specific fee highlights are presented below.

1. Two-tier system of claims fees: Since April 1, 2008, an applicant for patent with the EPO receives the first 15 claims as part of the original filing fee, and the applicant incurs a fee of EUR 200 for each claim over 15. However, as of April 1, 2009, the additional fee of EUR 200 will only apply to claims 16 through 50, and any claim over 50 will cost EUR 500 per claim.

2. Excess page fees: For applications comprising more than 35 pages (with specific page exclusions referenced in the links below), each application page over 35 will cost EUR 12.

3. Flat designation fee: For all European patent applications filed and international applications entering the regional phase on or after April 1, 2009, an applicant will incur a flat designation fee of EUR 500, covering ALL contracting states in Europe unless the applicant expressly withdraws specific states.

4. Flat fee for grant: As the EPO will institute excess page fees at the time of filing, there will be no page fees payable at the time of grant for all European patent applications filed and international applications entering the regional phase on or after April 1, 2009.

Additional information regarding these and other EPO fee changes are provided in the first link below, and the official Administrative Council Decisions supporting such fee changes are also linked below.

EPO Notice: LINK
December 14, 2007 Administrative Council Decision: LINK
October 21, 2008 Administrative Council Decision: LINK
December 9, 2008 Administrative Council Decision: LINK

JPO Updates Patent Guidelines

2009-01-23T13:20:00.000-05:00

The Japanese Patent Office ("JPO") announced yesterday that it has revised its "Examination Guidelines for Patent and Utility Model" having an original effective date of December 28, 2000. Japanese Guidelines are provided within ten distinct parts, including Specification, Requirements for Patentability, Amendment of Specification and Drawings, Priority, Special Application, Patent Term Extension, Examination Guidelines for Inventions in Specific Fields, Foreign Language Application, Procedure of Examination, and Utility Model. While the Guidelines do not show the "redlined" changes, the individual Guideline Parts and Chapters are available at the first link below in their updated form in PDF format. I note specifically that Part VII (Examination Guidelines for Inventions in Specific Fields) contains three Chapters for specific inventions, including Computer Software-Related Inventions, Biological Inventions, and Medicinal Inventions, each having their own examination requirements.

(As an aside, and while many patent practitioners (including myself) rely on the guidance of their foreign agents, a general understanding of foreign patent practice can be most helpful. As noted within my brief bio on the DDIP blog, most of my professional time involves preparing and prosecuting life sciences patent applications, including those in the medical device field. After handling a good number of foreign prosecution matters, and with a good working knowledge of foreign patent practice in a handful of countries, I have learned, for example, to tailor the claims of each foreign application for initial prosecution in those countries. While I continue to seek input from my foreign agents on each matter, I know that the information being shared with them at the time of entering the national stage is at least in a form that will facilitate substantive examination, and, using Europe as an example, multiple dependent claim practice may be implemented as appropriate to avoid prohibitively high excess claim fees. Your clients will appreciate your extra efforts in this regard, especially in cases where currency exchange rates do not work out in you client’s favor.)

JPO Examination Guidelines Webpage: LINK
JPO Website: LINK

Monday AND Tuesday are USPTO Holidays

2009-01-19T10:06:00.000-05:00

If you electronically filed any patent documentation through EFS-Web last week, you likely saw the following notice:

"Advisory (9JAN2009): January 19-20, 2009 are Federal holidays within the District of Columbia, under 35 U.S.C. 21(b) because January 19, 2009 is Martin Luther King, Jr’s birthday and January 20, 2009 is Inauguration Day. Any action or fee due on January 17-20, 2009, is to be considered timely if the action is taken, or the fee paid, on the next succeeding business day (January 21, 2009) which is not a Saturday, Sunday, or a Federal holiday. See MPEP 710.05 [and TMEP 308] for more information. The Electronic Business Center (EBC) will be closed on January 19-20, 2009… EFS-Web will be available on January 19-20, 2009."

In addition to this notice, the USPTO made available a corresponding announcement substantially similar to the foregoing but also including the following business-related information:

"Correspondence deposited in the Express Mail Service of the United States Postal Service (USPS) will be considered filed on the date of deposit (as shown by the "date-in" on the Express Mail mailing label) with the USPS. Any paper or fee properly deposited in the Express Mail Service of the USPS on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed on its respective date of deposit in the Express Mail Service of the USPS (as shown by a "date-in" of January 19, 2009, or January 20, 2009, on the Express Mail mailing label, respectively)."

In addition,

"Patent and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Any patent and/or trademark-related correspondence transmitted electronically to the USPTO on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed in the USPTO on the date the USPTO received the complete electronic transmission. Correspondence successfully received by the USPTO through the patent Electronic Filing System (EFS-Web) will receive the date as indicated on the Acknowledgment Receipt."

USPTO Announcement: LINK
35 U.S.C. § 21: LINK
MPEP § 710.05: LINK
TMEP § 308: LINK

EPO to Replace Corrupt U.S. Assignment Data

2009-01-14T10:19:00.000-05:00

On Friday, the European Patent Office (EPO) announced that due to a number of corrupt U.S. assignment records within the PRS legal status database (espacenet/OPS), each of the over 6.4 million assignment records will be deleted from the system next week and replaced with reloaded assignment data the first or second week in February. As referenced within the EPO announcement (link below), "[t]he erroneous data cannot be corrected manually mainly due to the fact that it would be practically impossible to separate each and every faulty record from the correct entries." The announcement further notes that the reload of data could take several months, and that the current codes US AS01 through US AS99 will be permanently removed and replaced with a single code US AS. The EPO also provided an example of a corrupt U.S. assignment record in need of correction (second link below).

EPO Announcement: LINK
Corrupt Record Example (PDF): LINK

UPDATE - Additional USPTO Fee Changes Take Effect Today

2009-01-12T10:13:00.000-05:00

As noted in my previous blog post, the USPTO introduced seven (7) patent fee changes effective January 1, 2009. As noted in a recently-updated fee schedule taking effect today (January 12, 2009), three (3) additional fee changes have been implemented, also impacting PCT applications filed with the U.S. as a receiving office. A summary of the new fee changes is as follows:

Fee Code 1601 (37 C.F.R. 1.445(a)(1))– PCT Transmittal Fee – DECREASED from $300 to $240

Fee Code 1602 (37 C.F.R. 1.445(a)(2)) – Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – INCREASED from $1,800 to $2,080

Fee Code 1602 (37 C.F.R. 1.445(a)(3)) – Supplemental search fee when required, per additional invention – INCREASED from $1,800 to $2,080

Current USPTO Fee Schedule (January 12, 2009): LINK
Prior USPTO Fee Schedule (January 1, 2009, cached): LINK

New USPTO Fees Took Effect January 1

2009-01-08T09:39:00.000-05:00

On January 1, 2009, seven USPTO patent fee changes became effective, including six fee decreases and only one fee increase. Each of these fee changes fall within the "PCT Fees to Foreign Offices" section of the USPTO fee schedule, and include fees applicable to filing PCT applications with the U.S. as a receiving office. A summary of the fee changes is as follows:

Fee Code 1701 – International filing fee (first 30 pages - filed in paper with PCT EASY zip file or electronically without PCT EASY zip file) – DECREASED from $1,237 to $1,119

Fee Code 1710 – International filing fee (first 30 pages) - filed electronically with PCT Easy zip file – DECREASED from $1,137 to $1,028

Fee Code 1702 – International filing fee (first 30 pages) – DECREASED from $1,338 to $1,210

Fee Code 1703 – Supplemental fee (for each page over 30) – DECREASED from $15 to $14 per page

Fee Code 1704 – International search (EPO) – DECREASED from $2,665 to $2,410

Fee Code 1709 – International search (KIPO) – INCREASED from $220 to $609

Fee Code 1708 – Sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801) – DECREASED from $6,000 to $5,600

The fee for selecting the USPTO as the searching authority remained unchanged at $1,800.

Current USPTO Fee Schedule (January 1, 2009): LINK
Prior USPTO Fee Schedule (December 17, 2008, cached): LINK

Macedonia Accedes to EPC

2009-01-07T10:11:00.000-05:00

On January 1, 2009, the Yugoslav Republic of Macedonia became a member of the European Patent Organisation after its ratification of the European Patent Convention. As noted within the recent European Patent Office (EPO) press release (link below), "The European Patent Organisation's members now include all 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, Switzerland and Turkey. Apart from the Organisation's members, its observer states Albania, Bosnia and Herzegovina, and Serbia also recognise European patent applications and patents on their territory." According to Alison Brimelow, President of the European Patent Office (EPO), "The accession of the former Yugoslav Republic of Macedonia means that companies and individual inventors can extend the protection of their intellectual property even further in the dynamic region of southeast Europe."

EPO Press Release: LINK
Macedonia State Office of Intellectual Property Website: LINK

U.S. Copyright Office Seeking Comments on Proposed Exempted Classes of Works

2009-01-06T09:40:00.000-05:00

The U.S. Copyright Office recently announced that it is soliciting comments on proposed exemptions in rulemaking on exemption from prohibition on circumvention of technological measures that control access to works. In its announcement (first link below), "[i]n its triennial rulemaking proceeding regarding possible exemption by the Librarian of Congress of certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works, the Copyright Office has received 19 proposals for classes of works to be subject to exemptions." A notice has been published to announce the proposed exemptions and seeks comments, with the purpose of the rulemaking proceeding being "to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention." The formal notice of proposed rulemaking was published in the December 29, 2008 Federal Register (excerpt link below). Comments may be submitted through February 2, 2009.

U.S. Copyright Office Announcement: LINK
Comment List: LINK
Federal Register Excerpt: LINK

DDIP Tidbits – 01/05/2009

2009-01-05T09:47:00.000-05:00

1. The World Intellectual Property Organization (WIPO) has posted its final volume of the WIPO Magazine (no. 6, November/December 2008) on its website. Some highlighted articles include a summary of the various WIPO member state assembly meetings in 2008, a construction update regarding the status of the new WIPO facility, and commentary regarding software patentability.

Nov./Dec. 2008 WIPO Magazine: LINK
Main WIPO Magazine Webpage: LINK

2. The Canadian Intellectual Property Office (CIPO) has held a number of official consultation periods to obtain feedback regarding a number of amendments to its formal Patent Rules. Four separate amendment "packages" have been submitted, with comments on the first package due today and comments on the second package (including amendments regarding applicants’ failures to meet certain procedural requirements, reinstating abandoned applications, and the waiver of some fees relating to the electronic submission of sequence listings) are due by February 28, 2009.

CIPO News Release: LINK
CIPO Consultations Schedule: LINK

Happy Holidays!

2008-12-22T09:38:00.000-05:00

Posts on the Daily Dose of IP will resume after the holidays on Monday, January 5, 2009. Have a happy and safe holiday and new year, and thanks for reading the DDIP blog!

New BPAI Rules on Hold

2008-12-12T10:37:00.000-05:00

The USPTO recently announced that the implementation of its new rules regarding practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals were placed on hold. These new rules, as outlined in the first Federal Register excerpt (link below), include changes to clarify that the BPAI is not a tribunal for de novo examination, procedures to determine whether an appellant has established that the Examiner on the case has erred (requiring the appellant to explain why the Examiner has erred, noting that arguments not made are waived), the replacement of a “summary of the invention” section with a claims and drawing analysis and a means or step plus function analysis, limitations of 30 page briefs (excluding some required items), and others. As noted with the Federal Register delay excerpt (second link below), “[t]he effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of [Office of Management and Budget] review of the proposed information collection under the [Paperwork Reduction Act],” whereby “[t]he Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.” According to the USPTO (announcement link below), and until the new BPAI rules go into effect, “the USPTO will continue to accept appeal briefs in either the current format, or the new format as outlined in the final rule.” No date has been specified for the implementation of the new rules.

Federal Register Excerpt (rules): LINK
Federal Register Excerpt (delay announcement): LINK
USPTO Announcement: LINK

DDIP Tidbits – 12/09/2008

2008-12-09T06:41:00.000-05:00

1. The recent World Intellectual Property Organization Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) meeting concluded late last week, which focused on non-traditional marks (3D marks, color marks, hologram marks, etc.), trademark opposition procedures, and new topics including letters of consent and collective marks. The week-long meeting was attended by representatives of 72 member states.

WIPO Announcement: LINK
WIPO SCT Webpage: LINK

2. The introductory program documentation for the European Patent Forum and PATINNOVA 2009 & Inventor of the Year seminar to be held in April 2009 are now available on the European Patent Office website (link below). Initial information on several seminars and dozens of workshops are available including several recent “hot” patent topics from this past year.

EPO Seminar Webpage: LINK

3. The Daily Dose of IP Blog was recently highlighted within Kevin O’Keefe’s blog “REAL LAWYERS HAVE BLOGS,” which focuses on the law, law firm marketing, blogs, and other topics. Kevin also prepared a series of charts to graphically show how legal blogs are branded and the blogging services used to prepare those blogs. If you have an interest in legal blogging, the article linked below will be of particular interest to you.

RLHB Article: LINK

Crocs, Skechers Settle Patent Dispute

2008-12-04T08:25:00.000-05:00

It was recently announced that the makers of Crocs and Skechers footwear have settled their dispute initiated earlier this year by Crocs Inc. According to the Rocky Mountain News article (link below), Crocs Inc. filed suit this past July claiming that certain styles of footwear manufactured by Skechers USA Inc., including "Wooly Bully" and "Low Tide," were infringing patents owned by Crocs Inc. According to yesterday’s press release from Crocs Inc. (available at the Crocs website link below), "[w]hile specific terms of the agreement are confidential, Skechers® has agreed to discontinue production and sale of certain molded footwear styles and focus on its core footwear styles," and that the companies jointly stated that they are "pleased that we were able to resolve these matters without either side having to absorb the energy and expense that ongoing litigation requires," with all remaining pending matters expected to be settled this month.

This settlement will end all outstanding worldwide litigation between these two companies, including the July 10, 2008 filing within the U.S. District Court for the District of Colorado. In that lawsuit, Crocs Inc. alleged that Skechers USA Inc. was infringing its U.S. Patent Nos. D517,789 and D564,207 (two design patents for “Footwear”), infringing trade dress related to its footwear, and engaging in unfair competition related to the Crocs Inc. logo., common law unfair competition, and unfair and deceptive trade practices under Colorado law. A link to the original complaint (as hosted via the Counterfeit Chic website, also linked below and permanently linked on the DDIP blog website) is provided below for your reference.

Rocky Mountain News Article: LINK
Crocs Inc. Website: LINK
Original Complaint: LINK
Counterfeit Chic Website: LINK
U.S. Patent No. D517,789: LINK
U.S. Patent No. D564,207: LINK
Justia.com Case Webpage: LINK

USPTO Expands TMOG Archive

2008-12-03T09:19:00.000-05:00

Last Friday, the USPTO announced that it is expanding its archive of online weekly issues of the Trademark Official Gazette (“TMOG”) available via the USPTO website. Prior to this expansion to a full year (52 issues) of the TMOG, only the last five issues were available at any given time. As noted within the TMOG archive (second link below), links to the TMOG, Registration Certificates issued on the Tuesday TMOG issue date, and Updated Registration Certificates issued on the same date are available on a weekly basis. Each electronic document is archived and available for download in .pdf format.

USPTO Announcement: LINK
TMOG Online Archive: LINK

WIPO to Host Life Sciences Symposium

2008-12-01T10:21:00.000-05:00

Next month, the World Intellectual Property Organization (“WIPO”) will be hosting a life sciences symposium regarding the various national and institutional options for life sciences public sector IP management. According to the WIPO press release (link below), this seminar, to be held on December 15, 2008 in Geneva, Switzerland, the symposium “will explore different national approaches, institutional policies and public-private partnerships, with a view to learning from practical experience,” providing “informal discussion on these themes with the aim of reviewing the central issues in public sector IP management in the life sciences.” In addition, this meeting “will help identify the core options, at the strategic and project levels, review the implications of each, and will consider the factors to weigh when working through these options,” seeking “to identify the factors that have influenced policy choices to assist general understanding of policy options in this domain.” Additional information regarding this seminar, including background information pertaining to the impact of public research institutions on life sciences research, is provided in the link below.

WIPO Announcement: LINK

Happy Thanksgiving!

2008-11-26T17:37:00.000-05:00

The DDIP blog will resume after the Thanksgiving holiday on Monday, December 1, 2008. Have a Happy Thanksgiving!

USPTO Introduces Practitioner Maintenance Fee

2008-11-21T09:48:00.000-05:00

The USPTO announced earlier this week that it will be implementing an annual $118 practitioner maintenance fee for active patent agents and attorneys starting in 2009 "[c]onsistent with its commitment to e-government initiatives and promoting high standards of practice" before the USPTO. Although specific details regarding the payment process have not been publicized, fees will be due starting next spring, and notices will be sent to practitioners of record in advance of the due date. According to the USPTO announcement (link below), "[w]ith an annual practitioner maintenance fee, the Office will fund the disciplinary system as state jurisdictions do, by fees from recognized members," and that "[t]he annual practitioner maintenance fee also will enable the USPTO to maintain and publish a roster of registered practitioners that is updated daily. As noted within the November 17, 2008 Federal Register excerpt (link below), and among a number of changes, 37 C.F.R. § 1.21 will be updated to add subsection (a)(7) to add the $118 annual fee for active practitioners and a $25.00 annual fee for practitioners on "voluntary inactive status." Additional details regarding the new fees, related restoration and delinquency fees, and the purposes for implementing such fees are provided within the two links below.

USPTO Announcement: LINK
Federal Register Excerpt: LINK

The Former Yugoslav Republic of Macedonia Accedes to the EPC

2008-11-17T09:58:00.000-05:00

The European Patent Office (“EPO”) recently announced that on October 28, 2008, the Government of the former Yugoslav Republic of Macedonia has requested to become part of the European Patent Convention (“EPC”) by depositing its formal instrument of accession. Therefore, and as of January 1, 2009, the former Yugoslav Republic of Macedonia will become the 35th member state of the European Patent Organization. As referenced within the EPO announcement (link below), “European patent applications filed on or after 1 January 2009 will include the designation of the new contracting state,” and “[i]t will not be possible to designate the former Yugoslav Republic of Macedonia retroactively in applications filed before that date. To allow for the designation of the former Yugoslav Republic of Macedonia, “the EPO will accord European patent applications filed in December 2008 the filing date of 1 January 2009 if the applicant expressly requests that filing date when filing the application.” Additional information regarding this accession and European patents for the former Yugoslav Republic of Macedonia based on international applications is provided within the link below.

EPO Announcement: LINK

USPTO Announces PCT Fee Increase

2008-11-13T09:39:00.000-05:00

Yesterday, the USPTO announced that it is revising its rules of practice to adjust Patent Cooperation Treaty (PCT) transmittal and search fees. As summarized in the USPTO announcement and provided in detail within the Federal Register (links below), the PCT transmittal fee (37 C.F.R. § 1.445(a)(1)) will be decreasing from $300.00 to $240.00, while the PCT search fee (37 C.F.R. § 1.445(a)(2)) where the USPTO acts as the International Searching Authority (ISA) on the application will increase from $1,800.00 to $2,080.00. The supplemental search fee with the U.S. as the ISA (37 C.F.R. § 1.445(a)(3)) will also increase from $1,800.00 to $2,080.00 per additional invention identified. These fee changes will apply to all PCT applications received on or after January 12, 2009, and for most PCT applications, an applicant will see an increase of $220.00 per application at the time of filing ($280.00 increase in search fee and $60.00 decrease in transmittal fee).

USPTO Announcement: LINK
Federal Register Excerpt (PDF): LINK

WIPO Member States Conclude Copyright Conference

2008-11-11T06:33:00.000-05:00

On November 2-7, 2008, member states of the World Intellectual Property Organization (“WIPO”) met to discuss several copyright issues pertinent to its members. As referenced within the WIPO press release (link below), conference issues included “Limitations and Exceptions: Access for Visually Impaired People” (acknowledging “the special needs of disabled persons (including the blind, visually impaired and other reading-disabled persons) and stress[ing] the importance of addressing those needs”), “Audiovisual Performances” (where member states expressed “their commitment to develop the international protection of performers in their audiovisual performances”), and “Broadcasting Organizations” (including “discussions on the protection of broadcasting organizations with a view to concluding an international instrument”). This conference was preceded by a two day seminar including the following presentations (in PDF format):

“WIPO Study on Limitations and Exceptions of Copyright and Related Rights in the Digital Environment” (PDF LINK)

“WIPO Study on Automated Rights Management Systems and Copyright Limitations and Exceptions” (PDF LINK)

“WIPO Study on Copyright Limitations and Exceptions for the Visually Impaired” (PDF LINK)

“WIPO Study on Copyright Limitations and Exceptions for Libraries and Archives” (PDF LINK)

“Summary of the Outcome of Seminars and Stocktaking of Positions on the Protection of Audiovisual Performances” (PDF LINK)

Additional information regarding the topics discussed at this conference is provided within the WIPO press release link below.

WIPO Press Release: LINK

26th Trilateral Conference - Nov. 10-14, 2008

2008-11-10T09:50:00.000-05:00

The 26th Trilateral Conference will take place in The Hague this week, where representatives of the U.S., European, and Japanese patent offices will meet to further formalize their efforts regarding patent prosecution cooperation. According to the European Patent Office ("EPO") press release (link below), "one of the main aims of the cooperation is to help inventors protect their inventions in several parts of the world, while reducing processing times through integrated patent infrastructure," with key meeting objectives including increased work sharing for PCT patent applications, the potential launch of a Patent Prosecution Highway between the EPO and the Japanese Patent Office, efforts to prioritize work on first filings, and the harmonization and sharing of "e-learning tools" among these three patent offices. Additional information on this conference, including details on the current IP5 initiative (involving the five largest national patent offices), patent quality improvements, several "Foundation Projects," and the involvement of industry, are provided in the link below.

EPO Press Release: LINK

“Barack,” “Obama,” and the USPTO

2008-11-06T09:58:00.000-05:00

After such an exciting election, I thought I’d have some fun with a blog post and highlight a few attempts to register trademarks pertaining to our President-elect that, for reasons shown below, were unsuccessful:

“BARACK STAR” – U.S. Trademark Application Serial No. 78/471,745 in IC 016 and 025 – This application was abandoned after the USPTO refused registration for false association because “the proposed mark consists of or comprises matter which may falsely suggest a connection with U.S. Senator Barack Obama” and “[a]lthough not connected with the goods or services applicant provides under the proposed mark, the name BARACK is so famous that consumers would presume a connection with Senator Obama.”

“DO YOU SMELL WHAT BARACK IS COOKING” - U.S. Trademark Application Serial No. 77/406,936 in IC 025 – This application was abandoned after the USPTO refused registration “under Section 2(c) of the Trademark Act, for the record does not include the written consent of Barack Obama, the name of the living individual identified in the proposed mark.”

“PET BARACK” - U.S. Trademark Application Serial No. 77/408,020 in IC 020 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.

“OBAMA -- O BABY!” - U.S. Trademark Application Serial No. 78/745,546 in IC 026 – This application was abandoned after the USPTO refused registration using a false connection argument similar to the false association argument described above.

“OBAMA SO PHAT” - U.S. Trademark Application Serial No. 77/135,294 in IC 040 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.

“OBAMA NOT YOUR MAMA FOR PRESIDENT IN 2008” - U.S. Trademark Application Serial No. 77/037,088 in IC 040 – This application was abandoned after the USPTO refused registration for false association and lack of consent as described above.

In addition to the foregoing, I note one additional trademark application (77/086,418) that I will not describe here due to its sensitive and offensive nature, and of which I am personally pleased to see rejected for a multitude of reasons.

IP Australia added as USPTO ISA

2008-11-04T09:29:00.000-05:00

On October 31st, Jon Dudas, the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO, announced that IP Australia, the Australian national patent office, will function as an International Searching Authority (ISA) under the Patent Cooperation Treaty (PCT) for certain types of international patent applications for the USPTO as of November 1st. As noted within the announcement, an applicant may utilize IP Australia for applications filed in English but that do not have claims relating to “mechanical engineering or analogous fields of technology as defined by certain International Patent Classification classes,” including those listed in Annex A to the USPTO-IP Australia Agreement included within the link below.

Here is a list of the current ISA’s for U.S.-filed PCT applications and their corresponding search fees (in U.S. dollars):

USPTO: $1,800
European Patent Office: $2,665
Korean Intellectual Property Office: $220
IP Australia: $1,514

USPTO Announcement: LINK

CAFC Decides In re Bilski

2008-10-31T09:33:00.000-04:00

Yesterday, the U.S. Court of Appeals for the Federal Circuit handed down its long-awaited decision in In re Bilski to help clarify the appropriate test to determine whether or not certain types of inventions may be patentable subject matter under 35 U.S.C. § 101. The decision of In re Bilski focuses on a patent application filed in 1997 that claims a method for hedging risk in the field of commodities trading. While the subject matter of In re Bilski focuses on hedge funds, the implications of this decision as applying to method or process patent claims covers all types of patentable inventions, particularly methods of doing business. In summary, the CAFC selected the "machine-or-transformation" test as being the governing test for determining eligibility of patent application process claims.

By way of background, 35 U.S.C. § 101 reads as follows:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

The subject matter of the Bilski application was originally rejected by the USPTO as merely manipulating an abstract idea and solving a purely mathematical problem, and because the invention was not implemented on a specific apparatus, the invention was not directed to the technical arts and therefore was deemed unpatentable.

The CAFC recognized that a claimed process is patent eligible if it is tied to a particular machine or apparatus, or if it transforms a particular article into a different state or thing. This "machine-or-transformation" test, as previously enunciated by the U.S. Supreme Court in various earlier decisions, was determined by the CAFC as being the governing test for determining patent eligibility of a process or method under 35 U.S.C. § 101.

In the present case, the applicants previously argued that their method of hedging risk was not limited to any specific machine or apparatus, so the "machine" aspect of the "machine-or-transformation" test did not apply. The CAFC, recognizing that no particular machine or apparatus was involved, decided not to elaborate upon "the precise contours of machine implementation," including whether or not the mere recitation of a computer within such a claim would be sufficient to tie the process to a machine. Upon application of the "transformation" aspect of the test, the CAFC held that the claimed method of hedging risk did not transform any article into a different state or thing, and therefore, the process claims were not drawn to patent-eligible subject matter.

The CAFC also stated that "we agree that future developments in technology and the sciences may present difficult challenges to the machine-or-transformation test, just as the widespread use of computers and the advent of the Internet has begun to challenge it in the past decade," and that "the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies." However, and in conclusion, the CAFC stated that "we see no need for such a departure and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101."

The CAFC then reviewed several other tests under 35 U.S.C. § 101 to determine whether or not they are valid and useful in light of the foregoing. While several tests were analyzed, one test of particular note (the "useful, concrete, and tangible result" test associated with methods of doing business in State Street Bank & Trust Co. v. Signature Financial Group (149 F.3d 1368, 1370 (Fed. Cir. 1998))) was discussed in detail, with the Court concluding that this particular test is insufficient for determining patent-eligible subject matter under § 101:

"But while looking for "a useful, concrete and tangible result" may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101. And it was certainly never intended to supplant the Supreme Court's test. Therefore, we also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply." Thus, the test previously used to uphold patentability of a method of doing business is no longer recognized as sufficient. This will undoubtedly have an impact on the examination and allowance of future method of doing business patent applications.

In conclusion, the CAFC held that "[b]ecause the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is AFFIRMED."

CAFC Decision: LINK

(My personal thanks to Jay Taylor, Tom Walsh, and Mike Swift for their assistance with this blog article.)

Impact of the PRO-IP Act on Copyright Law

2008-10-29T10:53:00.000-04:00

The U.S. Copyright Office recently highlighted a number of sections of the Prioritizing Resources and Organization for Intellectual Property Act (the “PRO-IP Act”) and their impact on the U.S. Copyright Act. As noted within the Copyright Office announcement (link below), the PRO-IP Act amends Section 410 of the Copyright Act to codify the doctrine of fraud on the Copyright Office during the copyright registration process. Section 506 was amended to provide for the forfeiture of any property that was used to commit or facilitate criminal offenses relating to copyrighted works. In addition, the PRO-IP Act creates an Intellectual Property Enforcement Coordinator (IPEC) to serve as an advisor to the President regarding domestic and foreign IP enforcement. Additional details on the impact of the PRO-IP Act on U.S. copyright law and practice, as well as a link to the PRO-IP Act itself, are provided below.

Copyright Office Announcement: LINK
PRO-IP Act: LINK

DKPTO Joins USPTO PPH Effort

2008-10-27T09:34:00.000-04:00

The USPTO recently announced that it has added the Danish Patent and Trademark Office (DKPTO) to its Patent Prosecution Highway (PPH) program. As noted in the USPTO announcement (link below), the DKPTO joins the Japan Patent Office, the United Kingdom Patent Office, the Canadian Intellectual Property Office, the Korean Intellectual Property Office, IP Australia, and the European Patent Office as PPH program members. According to the USPTO, “[t]he PPH was established to enable an applicant whose claims are determined to be allowable/patentable in the Office of first filing (OFF) to have the corresponding application filed in the Office of second filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the search and examination results of the OFF.” Several exemplary situations where the PPH between the USPTO and the DKPTO may be available are provided in the link below.

USPTO Announcement (PDF): LINK

KIPO Becomes Third USPTO Document Exchange Participant

2008-10-22T11:32:00.000-04:00

Last week, the USPTO announced that it has added the Korean Intellectual Property Office (KIPO) as the third participating foreign intellectual property office in its direct priority document exchange program. The KIPO, added as of October 14, 2008, joins the European Patent Office (EPO) and the Japan Patent Office (JPO) as current program participants. According to the USPTO announcement (link below), the addition of the KIPO to the program provides the USPTO with “the ability to begin electronically retrieving KIPO priority documents from the KIPO through the Priority Document Exchange (PDX) system,” and “[s]imilarly, the KIPO will also gain the ability to electronically retrieve U.S. priority documents from the USPTO through the PDX system.” Some noted exclusions to the program are that the USPTO cannot electronically exchange design patent applications and PCT international applications through the PDX system, and that the USPTO also cannot electronically receive non-U.S. priority application to which priority is claimed in a PCT international application. Additional details on this program are provided in the announcement below.

USPTO Announcement (PDF): LINK

EPO Adds New Online Training Courses

2008-10-20T09:46:00.000-04:00

The European Patent Office (EPO) recently announced that it has added to its online course offerings to broaden the scope of information publicly available to IP practitioners and those interested in the field. As referenced within the EPO announcement (link below), four new courses have been added, including those related to identifying Chinese patent documents online and obtaining full-text patent documents via EP4Weeks, with these and others being held within the next two months. These and other courses are available through the second link below (the “Patent event search: conferences, seminars, courses and other patent-related events” webpage within the EPO website) by selecting “online training” under the “Medium” drop-down window. These courses are offered free of charge through WebEx, but registration is required as the number of participants per course is limited.

EPO Announcement: LINK
Patent Event Search Webpage: LINK