The 33rd (16th Extraordinary) Session of the WIPO General Assembly began this week in Geneva, Switzerland. This Session, running from September 25th to October 3rd, includes a session on patents ("Report on the Progress of the Standing Committee on the Law of Patents in Respect of the Draft Substantive Patent Law Treaty and Consideration of a New Work Plan for 2007") and trademarks ("Outcome of the Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty"). The Session will also include discussions on "Matters Concerning the Advisory Committee on Enforcement," " Matters Concerning the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore," and "Matters Concerning Internet Domain Names." In addition, a "Report on the Provisional Committee on Proposals Related to a WIPO Development Agenda (PCDA)" and a "Proposal of the Kyrgyz Republic on Agenda Item 8 "Report of the Provisional Committee on Proposals Related to a WIPO Development Agenda (PCDA)"" will be presented, and a discussion regarding the "Protection of Audiovisual Performances" and the "Protection of Broadcasting Organizations" will also occur. The WIPO General Assembly meets on an annual basis in Geneva to discuss pertinent intellectual property issues, noting that several of the same topics are discussed each year as intellectual property practice evolves. The first link below includes links to all documents & reports available for the 33rd Session, and does appear to be updated over time.

WIPO 33rd Session Website: LINK
General WIPO "Conferences, Meetings, and Seminars" Website: LINK

It was recently announced that earlier this month, Debitman Card, Inc. obtained a U.S. patent on a “method and system for executing electronic funds transactions using a merchant based debit (MBD) card in a merchant-centric system that provides for reduced fees to acquiring merchants and remitting a portion of the collected fees to issuing merchants.” U.S. Patent No. 7,104,443, entitled “Method and system for facilitating electronic funds transactions,” issued on September 12th and includes 29 system and method claims for facilitating and executing electronic funds transactions. The patent references transaction fees charged by banks issuing credit and debit cards and how those fees may impact business profitability, and states that “a need exists for a point of purchase card-based electronic payment system which provides conventional features to consumers while reducing merchant processing costs and increasing the ability of merchants to access consumer transaction information for use in their own special incentive programs.” This patent, according to the USPTO registered assignee database, is the first patent issued and assigned to Debitman.

Last week, the Intellectual Property High Court in Japan decided that "Anne of Green Gables" is not eligible for trademark protection in that country as requested. According to the Asahi.com news article (link below), a film company in Canada attempted to register the mark in 2000 after producing a trilogy of movies based on the story. However, the government of Price Edward Island (the setting of the book) opposed the effort to register the commercial mark in Japan, stating that the integrity and overall image of "Anne of Green Gables" would be harmed if the registration were permitted. The Japanese Patent Office agreed with the government and nullified the registration, which was upheld on appeal. According to Judge Tsukahara, "Anne of Green Gables' is an important cultural asset of Canada that the country is proud of," and "[i]t would go against the international faith between Japan and Canada if a trademark registration that could impair the prestige borne by the protagonist and other characters is approved." A quick search of the USPTO database shows six applications for "Anne of Green Gables" in the United States, two of which are registered (both to the same owner).

Asahi.com News Article: LINK
Japanese Patent Office Website: LINK

It was announced last week that Micrel Inc. (“Micrel”) and Monolithic Power Systems, Inc. (“Monolithic”) settled their dispute pertaining to two patents and trade secret information owned my Micrel. In November of 2004, Micrel filed suit against Monolithic, claiming that Monolithic was infringing on two of its patents, U.S. Patent No. 5,517,046, entitled “High voltage lateral DMOS device with enhanced drift region,” and U.S. Patent No. 5,556,796, entitled “Self-alignment technique for forming junction isolation and wells,” and that Monolithic had misappropriated its trade secrets regarding semiconductor design and manufacturing. Settlement of the lawsuit filed in the U.S. District Court for the Northern District of California, includes a license of the two patents from Micrel to Monolithic, a $3 million payment from Monolithic to Micrel, and an agreement to dismiss all outstanding claims and counterclaims in the dispute.

U.S. Patent No. 5,517,046: LINK
U.S. Patent No. 5,556,796: LINK
Electronics Supply & Manufacturing Article: LINK
Micrel Press Release: LINK
Monolithic Press Release: LINK

The USPTO recently announced that it will host a free 6 hour training session (with a one hour break for lunch) on Wednesday, December 6th, for version 3.3 of PatentIn. This particular course will review molecular biology, rules for sequencing, and review of various sequence listings from relatively easy to relatively complex. PatentIn is a computer program "designed to expedite the preparation of patent applications containing nucleic acid and amino acid sequences," generating sequence listings "that comply with all format requirements specified in the World Intellectual Property Organization (WIPO) Standard ST.25 and the related U.S. final rule, "Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Disclosures," 37 CFR §§1.821 - 1.825." Robert Wax, a Primary Examiner in Art Unit 1653, will instruct the course held at the main USPTO location. Space is limited so early registration is recommended, and according to the USPTO, if more than 16 people register, additional sessions will be scheduled to accommodate those who were not able to attend this session.

USPTO Training Announcement: LINK
USPTO Main PatentIn Webpage: LINK
USPTO PatentIn 3.3 Download & Instruction Webpage: LINK
Registration Information: By e-mail at patin3help@uspto.gov or by phone at (571) 272-0623

As recently referenced by the Daily Dose of IP blog, the original band Supernova sued the three initial band members of the Rock Star: Supernova reality show band (Tommy Lee, Jason Newsted, and Gilby Clarke), as well as Mark Burnett Productions and others alleging trademark infringement, and on September 13th, the district court judge issued a preliminary injunction prohibiting the newly formed band (with lead singer Lukas Rossi) from using the name “Supernova.” However, it was announced yesterday that the parties have settled their dispute, and as part of the settlement the newly formed band will be known as “Rock Star Supernova.” Other terms of the settlement have not been made public.

Billboard.com Article: LINK
Initial DDIP Supernova Article: LINK
Washington Post News Article: LINK
Rock Star Supernova Website: LINK

On September 27-28, 2006, the USPTO will be presenting its "China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace," focusing on companies of all sizes looking to market and manufacture their products overseas with a particular emphasis on China. This event will be held in Boston, MA, at the Omni Parker House hotel. According to the conference website, the topics to be discussed include "China's laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China." Similar to the other recent USPTO global IP conferences, this event is free, but prior registration is required.

USPTO Conference Announcement: LINK
Main Conference Website: LINK
Conference Agenda: LINK
Omni Parker House Hotel Website: LINK

According to a recently published patent application, engineers at Warner have developed a single DVD disc containing three different laser disc standards. U.S. Patent Application Publication No. 20060179448, entitled "Multilayer dual optical disk," was published last month and includes 22 claims for a multi-format optical disc and "a player for playing an optical disc with multiple data layers." The first claim of the patent claims a disc comprising "a substrate; a first data layer disposed on said substrate, said first data layer conforming to a first protocol; a second data layer supported on said substrate, said second data layer conforming to a second protocol; and a transparent protective layer disposed on top of said first and second layers." Although several formats are disclosed in the application, according to the NewScientistTech article (link below), Warner will be releasing a movie, Lake House, later this month in three different formats on one disc. On one side of the disc, the movie in Blu-ray format will exist (which is read 0.1mm deep) on top of the movie in HD-DVD format, which is read at 0.6mm deep. On the other side of the disc, the movie will exist in standard DVD format. According to the patent application, "as discs with higher capacities are being phased in, content will have to be distributed on as many as three different kinds of discs: standard DVD discs, and two types of high-capacity discs. As noted, this is undesirable for several reasons." (Thanks, Cam, for bringing this to my attention.)

U.S. Patent Application Publication No. 20060179448: LINK
NewScientistTech Article: LINK
CNET News Article: LINK

On Friday, the USPTO released its newest revision to its fee schedule (effective September 15, 2006), available at the link below. The only changes as pertaining to patents relates to the “PCT Fees to Foreign Offices” section, where the international filing fee (first 30 pages) for PCT Easy fell $15 to $1,008, and the non-PCT Easy fell $16 to $1,086. The international search (EPO) fee increased $182 to $2,059, while the handling fee fell $2 to $155. The disclaimer on this section of the fee schedule remains, in that “PCT Fees to Foreign Offices subject to periodic change due to fluctuations in exchange rate. Refer to the Official Gazette of the United States Patent and Trademark Office for current amounts.” On the trademark side, one notable change is that the application for registration (per international class) paper filing fee increased $40 to $375.

New USPTO Fee Schedule: LINK

The USPTO released its most recent revision (5th Revision) to the MPEP last week, primarily modifying Chapter 2300 but also revision some additional sections to the Manual. According to the Blue Pages for the 5th Revision on the USPTO website, “[t]his revision consists of replacement pages for the Title Page in the front of the Manual, entire Chapters 100 – 900, 1100, 1300, 1500, 1700, 1800, 2100, 2200, 2500 and 2600, Appendices II – List of Decisions Cited, R – Patent Rules, T – Patent Cooperation Treaty, and AI – Administrative Instructions Under the PCT, and entire Index.” The Blue Pages further note that this newest revision was based in part on the following final rules: “(1) “Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005; (2) “Provisions for Claiming the Benefit of a Provisional Application With a Non-English Specification and Other Miscellaneous Matters,” which became effective on November 25, 2005; (3) Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005,” which became effective on March 10, 2006; and (4) “Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings,” which became effective on March 27, 2006.” The link below contains PDFs of each Chapter of both the 4th and 5th Revisions, as well as the 4th Revision in HTML format.

USPTO MPEP Webpage: LINK
MPEP Blue Pages (8th Edition, 5th Revision): LINK
MPEP Blue Pages (8th Edition, 4th Revision): LINK