March 30, 2010

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.

March 26, 2010

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.

March 23, 2010

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.

March 22, 2010

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.

March 18, 2010

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.

March 17, 2010

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."

March 16, 2010

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.

March 15, 2010

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."

March 12, 2010

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."

March 11, 2010

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.

March 09, 2010

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.

March 08, 2010

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.

March 04, 2010

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.

March 03, 2010

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.

March 02, 2010

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.

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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