tag:blogger.com,1999:blog-69261238344612329202024-03-13T20:59:52.401-04:00The Daily Dose of IP | Intellectual Property Law BlogYour source for daily tidbits on intellectual property lawMark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.comBlogger618125tag:blogger.com,1999:blog-6926123834461232920.post-57158478335860891462010-04-21T11:41:00.000-04:002010-04-21T11:41:55.354-04:00The Third Meeting of the IP5 Heads of Office Recently Held<div style="text-align: justify;">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 <b><a href="http://www.epo.org/topics/news/2010/20100419.html">HERE</a></b>), 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 <b> <a href="http://www.fiveipoffices.org/index.html">HERE</a></b>.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-66868087470918578702010-04-20T12:34:00.000-04:002010-04-20T12:34:07.764-04:00Recent Updates at the CIPO<div style="text-align: justify;">The Canadian Intellectual Property Office has recently announced a series of updates for visitors and users of its Web site:<br />
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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 <b><a href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02355.html">HERE</a></b>).<br />
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2. A series of new Web pages for intellectual property professionals, including an Industrial Designs Professional Web page (available <b><a href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02385.html">HERE</a></b>), a Trade-marks Professional page (available <b><a href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02384.html">HERE</a></b>), and a Patents Professional page (available <b><a href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02383.html">HERE</a></b>).<br />
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3. As noted by the CIPO (link <b><a href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00030.html">HERE</a></b>, 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."</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-76161500015551152402010-04-16T10:43:00.002-04:002010-04-16T10:43:54.630-04:00EPO Provides Summary of Recent Rule Changes<div style="text-align: justify;">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 <b><a href="http://www.epo.org/topics/news/2010/20102903.html">HERE</a></b>), 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 <b><a href="http://www.epo.org/topics/patent-system/realigning.html">HERE</a></b>) is also provided by the EPO, as is a Web page with links to each rule change (available <b><a href="http://www.epo.org/patents/law/legal-texts/epc/changes-2010.html">HERE</a></b>) and a Web page entitled "New edition of the EPO Guidelines for Examination<span class="526573913-16042010">"</span> (available <b><a href="http://www.epo.org/patents/law/legal-texts/guidelines.html">HERE</a></b>) 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-27049864142105749842010-04-14T10:04:00.002-04:002010-04-14T10:04:58.727-04:00WIPO to Provide New TV Show Format Dispute Resolution Services<div style="text-align: justify;">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 <b><a href="http://www.wipo.int/pressroom/en/articles/2010/article_0009.html">HERE</a></b>), "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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-6211701423170181902010-04-13T10:49:00.001-04:002010-04-13T10:51:02.651-04:00USPTO Offers Guidance to First-Time Trademark Filers<div style="text-align: justify;">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 <b><a href="http://www.uspto.gov/trademarks/process/TMIN.jsp">HERE</a></b>), 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 <b><a href="http://wsd-ais-03.uspto.gov/asxgen/Newsflash1-450kb-15fps.wmv">HERE</a></b> (in .wmv format), with a transcript available <b><a href="http://www.uspto.gov/trademarks/process/TMIN_Transcript.doc">HERE</a></b> (in .doc format).</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-67687215252668824702010-04-09T09:58:00.000-04:002010-04-09T09:58:38.892-04:00USPTO Launches Ombudsman Pilot Program<div style="text-align: justify;">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 <b><a href="http://www.uspto.gov/news/pr/2010/10_11.jsp">HERE</a></b>) 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-91014024346897201522010-04-08T09:38:00.000-04:002010-04-08T09:38:49.197-04:00Is Facebook Facing a Renewed Patent Challenge?<div style="text-align: justify;">In a recent <i>Law.com</i> article (link <b><a href="http://www.law.com/jsp/article.jsp?id=1202447370383&Facebook_May_Face_Patent_Challenge_in_Federal_Court">HERE</a></b>), 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 <b><a href="http://www.google.com/patents/about?id=ff4OAAAAEBAJ&dq=6519629">HERE</a></b>), which lead to an <i>inter partes </i>reexamination of the patent. According to the <i>Law.com</i> 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 <b><a href="http://news.justia.com/cases/featured/pennsylvania/paedce/2:2007cv02768/231573/">HERE</a></b> via <i>Justia.com</i>.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-23355113208723343342010-04-06T09:55:00.000-04:002010-04-06T09:55:37.479-04:00USPTO Proposes 12 Month Extension to Provisional Patent Application Period<div style="text-align: justify;">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 <b><a href="http://www.uspto.gov/news/pr/2010/10_10.jsp">HERE</a></b>, with a Federal Register excerpt available <b><a href="http://edocket.access.gpo.gov/2010/2010-7520.htm">HERE</a></b>) 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-82748136100648408442010-04-05T09:10:00.001-04:002010-04-05T09:11:22.772-04:00Butler v. Duke - The Finals are Here!<div style="text-align: justify;">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!<br />
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U.S. Patent No. 1,563,243 (issued on November 24, 1925 to E. K. Van, link <b><a href="http://www.google.com/patents/about?id=5uFQAAAAEBAJ&dq=1563243">HERE</a></b>) - "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."<br />
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U.S. Patent No. 1,718,305 (issued on June 25, 1929 to George L. Pierce, link <b><a href="http://www.google.com/patents/about?id=sqVlAAAAEBAJ&dq=1718305">HERE</a></b>) - "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.<br />
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U.S. Patent No. 2,162,085 (issued on June 13, 1939 to E. F. Hoppes, link <b><a href="http://www.google.com/patents/about?id=5EBxAAAAEBAJ&dq=2162085">HERE</a></b>) - "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."</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com1tag:blogger.com,1999:blog-6926123834461232920.post-37964982908563954062010-03-30T10:41:00.002-04:002010-03-30T10:41:54.450-04:00WIPO Reports Increase in Cybersquatting Disputes<div style="text-align: justify;">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 <b><a href="http://www.wipo.int/pressroom/en/articles/2010/article_0007.html">HERE</a></b>) 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-55901895676399062972010-03-26T11:59:00.000-04:002010-03-26T11:59:01.369-04:00The Trademark Technical and Conforming Amendment Act of 2010 is Now in Effect<div style="text-align: justify;">As highlighted with a recent U.S. Patent and Trademark Office notice (available <b><a href="http://www.uspto.gov/trademarks/notices/Tech_Corr_Notice.jsp">HERE</a></b>), 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 <b><a href="http://www.uspto.gov/trademarks/process/maintain/prfaq.jsp">HERE</a></b>), with the text of amended Sections 8 and 71 of the Lanham Act available <b><a href="http://www.uspto.gov/trademarks/notices/Secs8_71_3_17_2010.pdf">HERE</a></b>.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-7804199481664575372010-03-23T10:45:00.000-04:002010-03-23T10:45:53.145-04:00East Meets West 2010<div style="text-align: justify;">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 <b><a href="http://www.epo.org/about-us/events/emw2010.html">HERE</a></b>), "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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-52121587968706514152010-03-22T09:53:00.000-04:002010-03-22T09:53:45.160-04:00Madrid System Trademark Filing Statistics Recently Published by WIPO<div style="text-align: justify;">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 <b><a href="http://www.wipo.int/pressroom/en/articles/2010/article_0006.html">HERE</a></b>, 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-55156238218870316262010-03-18T10:39:00.000-04:002010-03-18T10:40:11.482-04:00USPTO to Host Independent Inventors Roundtable<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.uspto.gov/inventors/independent/index.jsp#heading-1.jsp">HERE</a>) on the USPTO Independent Inventors webpage (available <a style="font-weight: bold;" href="http://www.uspto.gov/inventors/independent/index.jsp">HERE</a>). This roundtable will also be available via webcast on the USPTO’s website, and instructions will be made available <a style="font-weight: bold;" title="http://www.uspto.gov/" href="http://www.uspto.gov/">HERE</a> the day of the webcast. This roundtable will run from 4:30-5:30PM Alexandria time.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-74165196838364198652010-03-17T10:05:00.000-04:002010-03-17T10:06:41.141-04:00CIPO Extension of Time Practice Notices are Now in Effect<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02271.html">HERE</a>) and the industrial design notice (available <a style="font-weight: bold;" href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02271.html">HERE</a>) ere open for consultation throughout October 2009, which, according to the CIPO announcement (available <a style="font-weight: bold;" href="http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00030.html#mar11">HERE</a>), 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."</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-8541280717266199872010-03-16T10:18:00.000-04:002010-03-16T10:19:37.319-04:00WIPO Announces 23rd Trademark Standing Committee Session<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.wipo.int/meetings/en/details.jsp?meeting_id=19685">HERE</a>), 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 <a style="font-weight: bold;" href="http://www.wipo.int/edocs/mdocs/sct/en/sct_23/sct_23_1_prov.pdf">HERE</a>) is also available, noting the topics to date and the order in which they will be presented.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-15117489015064565262010-03-15T10:06:00.001-04:002010-03-15T10:06:49.751-04:00USPTO and UKIPO Address Patent Application Backlogs<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.uspto.gov/news/pr/2010/10_09.jsp">HERE</a>), "[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."</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com1tag:blogger.com,1999:blog-6926123834461232920.post-11027497572916871622010-03-12T12:01:00.002-05:002010-03-12T12:04:03.197-05:00Punishment for Web Piracy Crimes in Russia May Become Tougher<div style="text-align: justify;">In a recent article in The Moscow Times (available <a style="font-weight: bold;" href="http://www.themoscowtimes.com/news/article/state-talks-tough-on-web-piracy/401237.html">HERE</a>), 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." </div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-26819319842538202772010-03-11T08:26:00.000-05:002010-03-11T08:29:55.992-05:00BPAI Holding Annual Board Conference - April 7, 2010<div style="text-align: justify;">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 <a href="http://www.uspto.gov/ip/boards/bpai/bpai_conference.pdf">HERE</a>, 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 <a href="http://conferences.thehillgroup.com/USPTO/BPAI/registration.html">HERE</a>. A formal agenda is available <a href="http://conferences.thehillgroup.com/USPTO/BPAIconference/materials.html">HERE</a>, with topics including “Practice Tips: Top Ten Mistakes,” “Winning Your Non-Obviousness Case at the Board,” and “Inter Partes Reexam,” to name a few.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-84867201097438526932010-03-09T11:22:00.001-05:002010-03-09T11:24:17.212-05:00Well, I Thought She Would<div style="text-align: justify;">Back on February 17, 2010, I posted an article on the DDIP blog (link <a style="font-weight: bold;" href="http://dailydoseofip.blogspot.com/2010/02/snooki-situation-and-dj-pauly-d-it-was.html">HERE</a>) 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 <a style="font-weight: bold;" href="http://www.tmz.com/2010/03/01/jwoww-wants-a-trademark-too/">HERE</a>), Farley has filed to protect her own namesake, namely U.S. Trademark Application Serial No. 77/938448 (link <a style="font-weight: bold;" href="http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77938448">HERE</a>) 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com1tag:blogger.com,1999:blog-6926123834461232920.post-4753222588843931682010-03-08T09:36:00.002-05:002010-03-08T09:44:36.920-05:00Albania Accedes to the EPC<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.epo.org/patents/law/legal-texts/journal/informationEPO/archive/20100301.html?update">HERE</a>), 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 "<span style="font-weight: bold;">[n]o European patents for Albania </span>can be granted on the basis of international applications with <span style="font-weight: bold;">a filing date prior to 1 May 2010</span>," 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 f<span style="font-weight: bold;">iling date prior to 1 May 2010</span> 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-57973153095824807552010-03-04T09:20:00.000-05:002010-03-04T09:21:01.986-05:00Issue 1/2010 of WIPO Magazine Now Available<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.wipo.int/wipo_magazine/en/2010/01/">HERE</a>) is available as a complete download (in .pdf format <a style="font-weight: bold;" href="http://www.wipo.int/export/sites/www/wipo_magazine/en/pdf/2010/wipo_pub_121_2010_01.pdf">HERE</a>), 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-76379567392107421182010-03-03T09:39:00.002-05:002010-03-03T09:47:29.362-05:00Facebook Awarded Patent for "News Feed" TechnologyBy <a style="font-weight: bold;" href="http://www.icemiller.com/lawyer_detail/id/1351/index.aspx">Alison Plavin</a> and <a style="font-weight: bold;" href="http://www.icemiller.com/lawyer_detail/id/1150/index.aspx">Mark Reichel</a><br /><br /><div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/PTO/search-bool.html&r=1&f=G&l=50&co1=AND&d=PTXT&s1=Facebook.ASNM.&OS=AN/Facebook&RS=AN/Facebook">HERE</a>), according to a recent <span style="font-style: italic;">PC Magazine</span> article (available <a style="font-weight: bold;" href="http://www.pcmag.com/article2/0,2817,2360728,00.asp">HERE</a>), 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.<br /></div><br /><div style="text-align: justify;">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.<br /></div><br /><div style="text-align: justify;">According to a <span style="font-style: italic;">PC World</span> magazine article available through MSNBC (link <a style="font-weight: bold;" href="http://www.msnbc.msn.com/id/35606875/ns/technology_and_science-tech_and_gadgets/">HERE</a>), 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 <a style="font-weight: bold;" href="http://blog.facebook.com/blog.php?post=2208562130">HERE</a> on Facebook’s blog) for the lack of privacy features on Facebook. After issuance of the patent, a spokesperson for Facebook (referenced in the <span style="font-style: italic;">PC World</span> 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 <span style="font-style: italic;">ReadWriteWeb</span> article available <a style="font-weight: bold;" href="http://www.readwriteweb.com/archives/facebook_granted_patent_on_the_news_feed_-_this_co.php">HERE</a>, and others calling it a game-changing potential gold mine (as noted in a recent <span style="font-style: italic;">Computerworld</span> article on the patent available <a style="font-weight: bold;" href="http://www.computerworld.com/s/article/9162978/Facebook_s_news_feed_patent_may_be_game_changer_?taxonomyId=71">HERE</a>), its impact on the future and use of social media Web sites remains to be seen.<br /></div><br /><div style="text-align: justify;"><a style="font-weight: bold;" href="http://www.icemiller.com/lawyer_detail/id/1351/index.aspx">Alison Plavin</a> and <a style="font-weight: bold;" href="http://www.icemiller.com/lawyer_detail/id/1150/index.aspx">Mark Reichel</a> are associates with Ice Miller LLP, focusing their efforts on competitive business practice litigation, various intellectual property matters, and social media and technology issues.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com1tag:blogger.com,1999:blog-6926123834461232920.post-22307993779359440532010-03-02T12:48:00.000-05:002010-03-02T12:49:47.290-05:00EPO Official Journal for February 2010 Now Available<div style="text-align: justify;">On Friday, February 26, 2010, the European Patent Office (EPO) announced the availability of its February 2010 Official Journal. The February 2010 Journal (link <a style="font-weight: bold;" href="http://www.epo.org/patents/law/legal-texts/journal/2010/02.html">HERE</a>) includes several individual reference PDF files including a Contents document (available <a style="font-weight: bold;" href="http://www.european-patent-office.org/epo/pubs/oj010/02_10/02_ind0.pdf">HERE</a> 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 <a style="font-weight: bold;" href="http://www.epo.org/patents/law/legal-texts/journal/2010/01.html">HERE</a>), 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0tag:blogger.com,1999:blog-6926123834461232920.post-23623085474534979772010-02-26T10:00:00.000-05:002010-02-26T10:01:38.949-05:00EPO Announces "Patent Statistics for Decision Makers 2010" Conference<div style="text-align: justify;">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 <a style="font-weight: bold;" href="http://www.epo.org/about-us/events/patstat.html">HERE</a>, with a page dedicated to a conference call for papers on these and other topics available <a style="font-weight: bold;" href="http://www.epo.org/about-us/events/patstat/call.html">HERE</a>. 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.</div>Mark Reichelhttp://www.blogger.com/profile/01339634923132352996noreply@blogger.com0