In yesterday’s Federal Register (excerpt link below), the USPTO formally addressed the topic of whether or not applicants may use foreign law firms or service provider companies for the preparation of patent applications to be filed within the United States. In summary, the excerpt states that “Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent and Trademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications,” and that “[a]pplicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.” The excerpt also notes that the USPTO is aware of the increase in foreign solicitations, noting in addition to the foregoing that “if the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure” and that “[a] foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.” The scope of foreign filing licenses are contained within 37 C.F.R. § 5.15, and the USPTO states within the excerpt that “[t]his notice does not change existing law or regulations.” Additional information on this subject may be found at the links below.

Federal Register Excerpt (PDF): LINK
37 C.F.R. § 5.15: LINK
Patently-O Article: LINK

Last week the USPTO announced that it will continue and expand its Peer Review Pilot program, allowing a broader scope of applications to be considered. This program has existed for just over a year and allows the public to review published applications (from applicants participating in the program) within specific classes and subclasses, allowing the public to submit technical references and comments regarding why the references should be considered during prosecution.

According to the USPTO announcement (link below),

“The pilot was initially restricted to patent applications in the computer-related arts (those classified in Technology Center 2100). The scope of the program is now expanded to include applications in the automated business data processing technologies, or business methods, class 705. Technical experts in the computer and business methods-related arts registering with the peertopatent.org Web site will review and submit information for up to 400 published patent applications, up from 250 as originally announced. No more than 25 separate applications will be allowed from any one person or organization, up from 15 in the original announcement.”

The extended Pilot is scheduled to end on June 15, 2009. Additional details regarding this program and its expansion are provided within the links below.

USPTO Announcement: LINK
USPTO Peer Review Program Webpage: LINK

In a recent decision to a case filed by Tiffany & Co. four years ago, the U.S. District Court for the Southern District of New York ruled that Ebay Inc. was not liable for the sale of counterfeit Tiffany’s products on its website. In a 66 page decision (link below), Judge Richard Sullivan held that Tiffany’s failed to satisfy its burden on all asserted claims, namely direct and contributory trademark infringement, unfair competition, false advertising, and direct and contributory trademark dilution, which were asserted because “eBay facilitated and allowed [ ] counterfeit items to be sold on its website.” According to the San Francisco Chronicle online article via SF Gate (link below), “Companies such as Tiffany can notify eBay about suspected counterfeit listings, which eBay says it generally takes down within 24 hours,” and that “Non-trademark holders can also tip off eBay about fakes.” As further noted within the same article, “New York District Judge Richard Sullivan said eBay's isn't liable simply because it is generally aware that counterfeit goods are being sold on its Web site. Rather, eBay is only required to remove fraudulent listings after being notified about specific instances of trademark infringement, as eBay did with the fake Tiffany jewelry, the judge said.” Additional information regarding this decision, as well as the decision itself, is available at the links below.

S.D.N.Y. Decision: LINK
SF Gate Article: LINK

The World Intellectual Property Organization (WIPO) recently announced that it will be holding a symposium as part of its Life Sciences Program to “explore intellectual property (IP) rights and their role in the development and transfer of technologies within the context of Multilateral Environmental Agreements (MEAs).” As noted by WIPO (press release link below), MEAs typically include provisions regarding technology transfer, and the “WIPO’s Symposia on Life Sciences and Intellectual Property Policy” shall provide an opportunity for policy makers and other stakeholders to share their experiences and to explore the IP dimensions of technology transfer provisions contained in MEA.” This particular Symposia, to be held on August 26, 2008, aims to provide a forum for typical “stakeholders,” including policy makers, delegates, governments, and the private sector, to exchange information regarding life sciences intellectual property. As noted within WIPO’s “Intellectual Property and Life Sciences" webpage, the life sciences cover a broad range of valuable intellectual property, noting in particular that “[t]he relationship between intellectual property and life science innovations is a particular issue of immediate interest and significance to WIPO Member States,” and that “WIPO contributes to the practical understanding of the appropriate role and impact of intellectual property rights on life science technologies, including their ethical, development and health policy implications.” Additional information regarding this Symposia and WIPO’s life sciences efforts are provided within the two links below.

WIPO Press Release: LINK
Life Sciences Symposia Webpage: LINK

The U.S. Copyright Office recently implemented its Electronic Copyright Office ("eCO") Online System to allow users to file online copyright applications. As noted by the Copyright Office (link below), online filing allows filers to save $10 per application (noting that the standard $45 fee is reduced to $35 for online filing), also providing for faster application processing times and online status tracking. Furthermore, users may pay the online registration fees by credit card, debit card, electronic check, or electronically through a Copyright Office deposit account. This new online method supplements the other two methods of filing copyright applications, namely using the new fill-in Form CO (to be printed and mailed in) and original paper filings using Forms TX, VA, PA, SR, and SE.

U.S. Copyright Office eCO Webpage: LINK
eCO Login Webpage: LINK
eCO Tips Document (PDF): LINK
eCO FAQ Webpage: LINK
eCO Tutorial (PPS): LINK

Scrabulous, the popular online game accessible via Facebook, is set to be replaced by an online version of Scrabble. Electronic Arts, the owner of the digital rights to Hasbro’s Scrabble, challenged the legality of Scrabulous earlier this year, claiming that Scrabulous infringes on the Scrabble trademarks. Scrabulous has been available for quite some time, and according to the Webware and TechCrunch articles (links below), approximately 400,000-450,000 people play the online game each day, compared to the 4,000-6,000 people per day who play online Scrabble through Facebook (noting that Scrabble is only available by Real Networks through Facebook for users outside of the United States). According to the TechCrunch article (link below), efforts to develop Scrabble through Facebook have taken more than six months, “[r]ather than force Facebook to shut down Scrabulous immediately, however, Hasbro and Electronic Arts realized that they would suffer an extreme backlash if they took away everyone’s favorite Facebook game without offering up an alternative. Now that the alternative is almost here, it remains to be seen whether they will try to eliminate the competition.” Scrabble is expected to be available through Facebook within the next few weeks.

Webware Article: LINK
TechCrunch Article: LINK

In a recent announcement, the European Patent Office (EPO) announced that it will be hosting a two-day conference to discuss intellectual property (IP) protection in growing markets. This seminar, entitled "Growing business with IP - winning strategies in emerging markets,” is co-hosted by Boccini University and will be held on July 17th and 18th in Milan, Italy. According to the EPO press release (link below), “[C]ompanies marketing products and services around the globe are increasingly opting for the protection afforded by patents, trade marks, design and copyrights,” and that “[t]he strategic exploitation of such rights often has a decisive impact on the competitiveness of a company and its products.” The press release further notes that this “applies particularly to European firms seeking a foothold in growth regions such as China, India and South America. Expertise in intellectual property rights not only affords a significant competitive advantage but at the same time serves as an effective weapon in the battle against counterfeiters.” As noted within the seminar website (link below), this particular seminar targets technology transfer officers, industry and industry researchers, IP and patent attorneys, small businesses, and business consultants and advisors. Additional information regarding this seminar, including the preliminary seminar program, is available at the two links below.

EPO Press Release: LINK
Seminar Website: LINK

The USPTO recently announced that its 13th annual Independent Inventors Conference will take place at USPTO headquarters (Alexandria, VA) on August 8 and 9, 2008. In addition to the conference, a pre-conference workshop will also be available the evening of August 7, whereby the public may learn “about the basics of patents and the importance of intellectual property protection” prior to the two-day conference. According to the USPTO, “presenters will include Deputy Under Secretary of Commerce Margaret Peterlin, Commissioner for Patents John Doll, Louis Foreman, creator and executive producer of the Everyday Edisons Show, an inductee from the National Inventors Hall of Fame® Foundation, local IP attorneys as well as Supervisory Patent Examiners.” The cost for the seminar, including the pre-conference IP workshop, is $100, and a discount is available for senior citizens. Additional information regarding this conference is available at the two links below.

USPTO Announcement: LINK
Conference Website: LINK

When the USPTO revises its fees from time to time, a common practice of mine is to “compare” the then-current fee schedule against the announced future fee schedule. The current USPTO fee schedule, with revisions effective May 15, 2008, will soon be replaced with a version with revisions effective tomorrow, July 1, 2008. For those of you planning on filing PCT applications within the next few days, you may wish to take particular note of the following changes effective July 1 and consider filing before the following fees changes take effect:

1. International filing fee (first 30 pages - filed in paper with PCT EASY zip file or electronically without PCT EASY zip file) – increasing $64 from $1,173 to $1,237

2. International filing fee (first 30 pages) - filed electronically with PCT Easy zip file – increasing $54 from $1,083 to $1,137

3. International filing fee (first 30 pages) – increasing $75 from $1,263 to $1,338

4. Supplemental fee (for each page over 30) – increasing $1 per page from $14 to $15

5. Handling fee – increasing $30 from $171 to $201

6. Handling fee – percentage reduction, if applicants meet specified criteria – DECREASING $18.65 from $38.75 (75% reduction from original fee) to $20.10 (90% reduction from original fee)

7. Sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801) – increasing $400 from $5,600 to $6,000

The fees for international searches using the European Patent Office or the Korean Intellectual Property Office will not changed, remaining at $2,496 and $244, respectively. Links to each respective USPTO fee schedule are provided below.

Fee Schedule (Effective May 15, 2008): LINK
Fee Schedule (Effective July 1, 2008): LINK