On September 3 and 4, 2008, the European Patent Office (EPO) and the Organization for Economic Cooperation and Development (OECD) hosted a conference to discuss recent advances in the analysis of innovation regarding patent statistics. As noted within the original conference description (first link below), the conference “aims at gathering original analytical investigations that build on recent data and address relevant questions for companies and policy makers including valuation of patents, patenting strategies, the links between technology and markets, patenting activity by universities and entrepreneurship.”

On September 12, the EPO posted a number of PDF presentations on its websites from speakers at that conference. A complete listing of the available presentations is provided within the second link below. Some of the presentations include the following:

“Shining a Light” – Ciaran McGinley, Controller, European Patent Office (PDF LINK)

“The use of patent data to estimate patent value” – Nils Omland, WHU – Otto Beisheim School of Management (PDF LINK)

“Usage of, or Involvement in Science: What Matters for Firm Technological Performance?” – Bart Leten, Stijn Kelchtermans, and Rene Belderbos (PDF LINK)

“Development of international harmonized industry-based patent statistics” – T. Okazaki (OECD), G. Thoma (Japan Patent Office), and N. Yamano (University of Camerino) (PDF LINK)

(If you have difficulty opening these PDFs directly, try saving them to your desktop and opening them directly from your own PC.)

EPO/OECD Conference Webpage: LINK
EPO/OECD Presentation Webpage: LINK

The USPTO has released its fee schedule to take effect on October 2, 2008, which will supersede the current fee schedule last updated on August 1, 2008. The following list contains some (but not all) of the fee changes. A complete listing of the new fees is provided in the link below.

Basic filing fee – Utility (37 C.F.R. § 1.16(a)(1)) – increasing by $20 to $330 for large entities and by $10 to $165 for small entities

Basic filing fee - Utility (electronic filing for small entities) (37 C.F.R. § 1.16(a)(1)) – increasing by $7 to $82

Independent claims in excess of three (37 C.F.R. § 1.16(h)) – increasing by $10 to $220 for large entities and by $5 to $110 for small entities for each claim

Claims in excess of 20 (37 C.F.R. § 1.16(i)) – increasing by $2 to $52 for large entities and by $1 to $26 for small entities for each claim

Multiple dependent claim (37 C.F.R. § 1.16(j)) – increasing by $20 to $390 for large entities and by $10 to $195 for small entities for each claim

Utility Search Fee (37 C.F.R. § 1.16(k)) – increasing by $30 to $540 for large entities and by $15 to $270 for small entities

Utility Examination Fee (37 C.F.R. § 1.16(o)) – increasing by $10 to $220 for large entities and by $10 to $110 for small entities

Utility issue fee (37 C.F.R. § 1.18(a)) – increasing by $70 to $1,510 for large entities and by $35 to $755 for small entities

Maintenance fee due at 3.5 years (37 C.F.R. § 1.20(e)) – increasing by $50 to $980 for large entities and by $25 to $490 for small entities

Maintenance fee due at 7.5 years (37 C.F.R. § 1.20(f)) – increasing by $120 to $2,480 for large entities and by $60 to $1,240 for small entities

Maintenance fee due at 11.5 years (37 C.F.R. § 1.20(g)) – increasing by $200 to $4,110 for large entities and by $100 to $2,055 for small entities

** The following links may be changed by the USPTO on or about October 2, 2008, so to visit the then-current USPTO fee structure, please click HERE to visit the main USPTO fee page.

Current Fee Schedule: LINK
October 2, 2008 Fee Schedule: LINK

The September 9, 2008 Official Gazette (Week #37) was published this week, including a number of the following recurring topics (Patent Cooperation Treaty (PCT) Information, Notice of Maintenance Fees Payable, Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee, Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 08/11/2008, Reissue Applications Filed, Requests for Ex Parte Reexamination Filed, etc.). I note a couple of the items within the OG that are unique to this particular installment:

Patent Cooperation Treaty (PCT) Information – includes comments on the use of the European Patent Office (EPO) and the Korean Intellectual Property Office (KIPO) as the International Searching Authority (ISA) for PCT applications filed with the USPTO. In particular, this section states that “[h]owever, the EPO is no longer a competent ISA, within the meaning of PCT Article 16(3), for international applications filed by U.S. residents or nationals on or after 01 March 2002 in the USPTO or IB as a Receiving Office, and where the application contains one or more claims directed to the field of business methods.” LINK

Changes to Representation of Others Before the United States Patent and Trademark Office – includes comments on the USPTO’s adoption of new rules governing the conduct of disciplinary investigations, warnings issued upon close of investigations, disciplinary proceedings, reinstatement to practice before the USPTO, and non-disciplinary transfer to disability inactive status. LINK

Official Gazette, Week #37: LINK
USPTO 2008 Official Gazette Notice Webpage: LINK

While searching the World Intellectual Property Organization (WIPO) for a new blog article topic, I came across a resource previously unknown to me, namely the WIPO free publications list. Although I have blogged several times on free WIPO seminar reference documentation, I was unaware that a separate list of publications targeting various audiences is available to the public free of charge. The publications list (first link below) includes a two dozen references targeting artists, government officials, lawmakers, small- and medium-sized enterprises, traditional knowledge holders, universities and research institutes, and young people, covering a broad range of intellectual property issues. Examples of a few of these publications are directly linked below, including “From Artist to Audience” for artists, “Understanding Industrial Property” for government officials, “Inventing the Future – An Introduction to Patents for SMEs” for small and medium-sized enterprises, and “Successful Technology Licensing” for universities and research institutes. There are also six publications for young people, including comic books on patents, trademarks, and copyrights, as well as a publication entitled “Learn from the Past, Create the Future: Inventions and Patents.” Consider taking a look at some of these, especially those “introduction” publications, as they may be useful to your or your practice when attempting to explain technical IP concepts to clients previously unfamiliar with their particular IP areas of concern.

WIPO Free Publications Webpage: LINK
“From Artist to Audience” Publication (PDF): LINK
“Understanding Industrial Property” Publication (PDF): LINK
“Inventing the Future – An Introduction to Patents for SMEs” Publication (PDF): LINK
“Successful Technology Licensing” Publication (PDF): LINK

1. The World Intellectual Property Organization (WIPO) recently released its 2008 edition of the World Patent Report. This Report, based upon cumulative 2006 data, includes statistics regarding total patent grants by patent office and by country of origin, resident and non-resident patent filings and granted patents, and emerging country patent filings and patent grants, among others.

WIPO World Patent Report Article: LINK
2008 World Patent Report (HTML): LINK
2008 World Patent Report (PDF): LINK

2. The USPTO recently announced an extension of its Patent Prosecution Highway (PPH) program with the United Kingdom Intellectual Property Office (UKIPO). This pilot program began in September 2007 and has been extended “until further notice.”

USPTO Article: LINK
USPTO/UKIPO PPH Webpage: LINK
UKIPO PPH Request Webpage: LINK

3. The State Council of China has recently submitted a draft amendment to the National People’s Congress (NPC) Standing Committee in attempt to update its patent review processes and procedures. One amendment, referred to in the China Daily article below as the “absolute novelty” standard, will require examiners “to consider public use evidence both inside and outside China when processing patent applications.”

China Daily Article: LINK
China Patent & Trademark Office Website: LINK

Welcome to the "new" DDIP, complete with updated functionality and a fresh new look. Aside from regularly posted content providing you with updates regarding patent, trademark, copyright, and related intellectual property law information, the DDIP blog now offers additional resource functionality using the links and search boxes on the left-hand column of the blog, including the following:

Patent information: DDIP blog readers may search U.S. patents and published U.S. patent applications, search the MPEP (currently E8r6) and browse the current MPEP resources (E8r6 in HTML, E8r6 and E8r7 in PDF format), search U.S. patent and published patent application assignments, search Title 37 of the CFR, browse Title 35 of the U.S. Code, and browse current USPTO fees.

Trademark information: Readers may search issued U.S. trademarks and pending U.S. trademark applications, search TTAB proceedings, and search USPTO trademark assignments.

Court Opinions: DDIP blog readers may search Federal Circuit opinions since October 2004 (via the Federal Circuit website), search or browse Federal Circuit opinions since July 1995 (via FindLaw), and search U.S. Supreme Court opinions since October 2003 (via the U.S. Supreme Court website).

Additional Statutory References: Links are provided to allow DDIP users to search all titles of the Code of Federal Regulations and the U.S. Code.

In addition, I have also provided a list of other blogs (on the right-hand column) providing you with direct links to additional resources that I personally reference from time to time. Via Yahoo! Babel Fish, you can now also automatically translate DDIP blog content to one of a dozen other languages using the functionality provided lower on the right-hand column of the blog.

Your comments and e-mails are welcome, especially as they may relate to potential improvements to the blog and requests for additional blog functionality. I hope you will like the new look and additional resource material, and as always, thank you for reading the Daily Dose of IP blog and for sharing it with your friends and colleagues.

Over the last few days I have started my work on the DDIP Blog "makeover" to provide additional functionality, reference materials, and an updated appearance. As such, please look forward to the "new" DDIP blog beginning Monday, September 8th!

As referenced within a recent USPTO announcement (link below), the USPTO Museum has unveiled a new exhibit called “Portrait Gallery” that “highlight[s] past and present individuals who have made a contribution to America's intellectual property (IP) system.” This exhibit highlights digital images of a number of famous inventors and USPTO personnel, whereby “through the magic of computer-generated special effects and exclusive control software, spontaneously come to life, interactively engaging in humorous banter that highlights the history and growth of America's intellectual property system.” This new free exhibit is being featured at the Madison Building in Alexandria, VA, and is available Monday-Saturday. Additional information regarding this exhibit may be found within the link below.

USPTO Announcement: LINK
USPTO Museum Webpage: LINK

By Jay G. Taylor

In Ideal Aerosmith Inc. v. Acutronic USA, Inc., 87 U.S.P.Q. 2d 1341, the United States District Court for the Western District of Pennsylvania found that a valid claim of trade secret misappropriation had been plead and denied a motion to dismiss where the defendant allegedly received the trade secrets through misdirected emails. The defendant allegedly read the emails and used the trade secret information to compete against plaintiff.

In this case, a third party, Carco Electronics, which was in the same business as the parties, went into bankruptcy and was required by the bankruptcy court to market and sell its assets free and clear of liens. Plaintiff Ideal entered into an asset purchase agreement with Carco and took possession of its operations and hired most of its employees to continue Carco's operations to preserve its assets pending approval of its purchase sale by the bankruptcy court. The former Carco employees continued to use their Carco email addresses in the continued operation of the Carco business. Subsequently, however, defendant Acutronic outbid Ideal for the assets in bankruptcy court and acquired Carco's assets. Ideal tendered the Carco facilities to Acutronic the next day and all of the former Carco employees vacated the Carco premises and moved to Ideal's offices.

Ideal immediately assigned the former Carco employees with new email addresses, however, some of those employees and third parties doing business with Ideal inadvertently continued to use the old Carco email addresses in transmitting emails regarding Ideal's business. Those misaddressed emails, some of which contained sensitive trade secret information, were received by Acutronic on the old Carco servers and redirected to Acutronic servers. Acutronic allegedly read the emails, disclosed the emails to numerous Acutronic employees and used the information in those emails to compete against Ideal. Acutronic did not disable the old Carco servers, did not inform the senders that the old email addresses were no longer in use, and did not forward the email to the intended recipient.

When discovered, Ideal sued Acutronic for trade secret misappropriation under the Pennsylvania Uniform Trade Secrets Act (PUTSA). Acutronic moved to dismiss the trade secret claim on the basis that it had not acquired the trade secrets though any misconduct on its part and therefore there was no misappropriation of those trade secrets. The court found that under the PUTSA, misconduct is not required. Rather, the court found that any use or disclosure of information that Acutronic knew or had reason to know was a trade secret without consent of the owner of the trade secret can be a violation of PUTSA.

Thus, the message from this case is recipient beware. Receipt of misdirected email of another that arguably contains confidential business information should be treated very carefully to avoid possible liability. Such emails should be forwarded to the correct recipient if that address is known, and the sender should be informed of error by reply email so that the error can be avoided in the future. Any use or disclosure of any possible confidential information contained in such a misdirected email should be avoided as it could subject mistaken recipient to liability for trade secret misappropriation.

Jay Taylor is a Partner with Ice Miller LLP focusing his efforts on patent, trademark, copyright, and trade secret litigation.

The USPTO recently announced that it has partnered with the National Inventors Hall of Fame Foundation (NIHFF), The Advertising Council, and the boutique advertising agency Publicis & Hal Riney to prepare and launch a new series of public service advertisements (PSAs) designed to target children and hopefully inspire them to be the next generation of innovators. As referenced by the USPTO (link below), “the United States has been a global leader in technology and innovation … account[ing] for nearly one-third of the world’s science and engineering researchers and 40 percent of all research and development... However, with increased economic competition globally, it’s widely understood that the United States must take steps now to maintain its leadership,” and “[i]n particular, America must ensure we inspire future generations of innovators.” This current series of PSAs follows the USPTO’s efforts last year for reaching out to children, and according to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “As we enter the next phase of the campaign, I am confident this new series of public service announcements will strengthen America’s legacy of innovation by showing children how their talents and education help them change the world for the better.” Additional information on this new campaign and the partners involved may be found at the link below.

USPTO Announcement: LINK