Friday, March 31, 2006

WIPO - Accounting and Intellectual Property

According to an article in the May/June 2004 issue of WIPO Magazine, concerns raised by the U.S. Financial Accounting Standards Board (FASB) led to a revision of the way in which IP is treated in Mergers and Acquisitions under Financial Accounting Standards (FASs) 141 and 142. For FAS 141, the “pooling of interest for business combinations,� where the balance sheets of two merging companies were simply added together, was replaced with a "purchase method" requiring the identification of each single acquired asset and the determination of its "fair value." FAS 142 abolished the amortization of goodwill so that companies now need to review, on an annual basis, their acquired IP and conduct an "impairment test." In contrast to such "purchased IP," internally-generated IP is treated as an immediate expense that does not appear on the balance sheet.
Therefore, from an accounting perspective, internally-generated IP is considered to be worth nothing, while IP that changes hands may be worth hundreds of millions of dollars. Conversely, a company that decides to sell or license internally-generated IP appears to create profits virtually out of nothing because the IP that generated these profits does not appear as an asset on the balance sheet.
Rodney D. Ryder

Patent Searching - In Product Development

This article summarizes the five basic types of patent searches in chronological order according to their usefulness in a typical new product development project.
1. State-of-the-Art Search
A state-of-the-art search, also know as a "collection search," is the broadest and most general type of patent search. It is essentially a background investigation that attempts to provide a broad survey of all technology in a particular field. A state-of-the-art search typically costs around $500-$1000 and requires one to three weeks to complete. Upon completion of the search, you will usually be provided with a brief reporting letter identifying the scope and field of the search along with copies of the references that were located during the search.
State-of-the-art searches are typically conducted, if at all, during the conceptual design phase of a project in order to determine the rough extent of the technological evolution in a particular area. State-of-the-art searches may also be used to help identify technology that is disclosed in expired patents and may therefore be freely copied by anyone.
In particular, U.S. design patents (identified as "DXXX,XXX") expire 14 years after the issue "Date of Patent" typically listed in the upper right corner of the first page. Utility patents ("X,XXX,XXX") and plant patents ("PPXX,XXX") issuing from applications filed on or after June 8, 1995 expire 20 years from their earliest filing date, typically listed near the middle of the left column on the first page. Utility and plant patents that issued on applications filed before June 8, 1995, or that were in force on June 8, 1995 provide a term of protection that is the longer of 20 years from the earliest filing date or 17 years from the issue date. Under certain circumstances, these terms of protection may be further extended.

Utility patents may also "lapse" for failure to pay maintenance fees at 4, 8, and 12 years after the issue date. However, patents that have lapsed for less than two years may be reinstated by merely paying a surcharge fee. Patents that have lapsed for more two years, on the other hand, may be reinstated only upon proving that the delay was unavoidable even though reasonable care was taken to ensure that the maintenance fee was paid on time.
Some individuals choose to do their own state-of-the-art patent searches on the Internet using the U.S. Patent Office’s ("USPTO’s") patent image database at and/or the European Patent Office’s ("EPO’s") patent database at The USPTO patent database allows full text searching on any field in a U.S. patent, while the EPO database only allows up to four-word searches of only titles and/or abstracts of most U.S. and foreign patents. English-language abstracts are provided for most foreign patents on the EPO database. Multi-page, concatenated paper copies of these patent documents can then be obtained at no charge by going to
2. Patentability Searches
A patentability search, also known as a "novelty search" or "prior art search," is used to determined what scope of protection, if any, may be available for a particular embodiment of an invention. Often a patentability search will also locate expired and/or lapsed patents disclosing technology that may be freely copied in order to improve the invention.
A patentability search typically costs around $750-$1250 and requires two to four weeks to complete. Upon completion of the search, you will be provided with an opinion letter identifying the scope and field of the search, and enclosing copies of the references that were located during the search. In addition, the opinion letter will discuss the most pertinent references with respect to their effect on the scope of patent protection available for the invention. The claims of the cited patents will also be reviewed in order to make a preliminary determination as to whether there is a significant risk of being held liable for infringing the noted patents. However, an infringement search may still need to be conducted before making, using selling, offering for sale, or importing the invention in the U.S.
Patentability searches are typically conducted after any market research or conceptual engineering has been completed to the extent that at least an informal sketch, or operational description, of an invention can be provided with the search request. In order to accurately document a date of "conception" and any "reduction to practice" that might affect of the patentability of the invention, an "Invention Disclosure Record" should be used to memorialize the pertinent information.
Similar to a state-of-the-art-search, a patentability search typically begins with queries of various patent databases. The field of the search will then usually continue with a review of all U.S. and/or foreign patent document that have been indexed in various technical classifications defined by the U.S. Classification Manual. The U.S. Patent classification system is generally described on the internet at while the formal definitions for various subclasses are available at Since the accuracy of the search will depend on whether the appropriate classes and subclasses were considered, patentability searches are typically left to experienced searching professionals who will often consult with a Patent Examiner in planning the scope an field of the search.
The results of a patentability search will be reported with a formal opinion letter identifying the scope and field of the search and providing copies of the documents that were identified during the search. A brief discussing of the most relevant documents will also be provided along with a detail analysis of their effect on the scope of patent protection that may be available for the invention. An informed decision can then be made as to whether the available scope of protection is worth the $5,000-$10,000 cost of obtaining a patent.
It is generally a good idea to obtain a patentability opinion and file any patent application as soon as possible after your invention is fully developed, preferably within one year from the date that it was conceived. Even if you promptly and adequately record your invention, you may still jeopardize your patent rights in other countries if you disclose your invention to the general public, describe your invention in any publication, or offer your invention for sale before you file a patent application in this country. Although U.S. law generally provides inventors with a one-year "grace period" in which to file a patent application after disclosing or exploiting their inventions, most other industrialized countries are not so lenient. Appropriate pre-disclosure confidentiality agreements can help minimize, but not eliminate, the risk of any inadvertent public disclosure of your invention.
3. Infringement Search
An infringement search, also known as a "right-to-use search" or "clearance search" focuses on the claims of unexpired patents in a small number of subclasses. The purpose of an infringement search is to determine whether there are claims in these patents that might be construed to cover a well-defined, commercial embodiment of an invention. If a particular competitor is known to have similar products, then the competitor’s patents may also be reviewed.
For utility patents, the claims are numbered at the end of the text while, for design patents, the claims are the drawings. Literal infringement requires that the accused product or process include each and every element of the claim. Consequently, if one or more elements of the claim are not satisfied, then the requirements for literal infringement are not met. However, even if a claim does not literally "read on" an accused product or process, it may still be infringed under the Doctrine of Equivalents if the differences between the accused product or process and the claims are insubstantial. The Doctrine of Equivalents must be applied to the individual elements of the claim rather than the invention as a whole. In this regard, courts have considered evidence of known interchangeability, copying, and designing around the element recited in the claim for determining whether the corresponding feature in the accused device is substantially different from the claimed structure. Other courts have used the so-called "Tripartite" test to find equivalence under the Doctrine where the accused device performs substantially the same function, in substantially the same way, in order to achieve the same result as the element recited in the claims. Since patent infringement analysis can be quite complex, it is best to contact a qualified attorney if you are concerned about any particular claims.
Due to the tedious nature of claim interpretation, an infringement search typically costs around $3,000-$10,000, or more, and requires four to six weeks to complete. Therefore, an infringement search should be conducted only after a commercial embodiment is fairly well defined, but before an irreversible commitment of time and resources has been made. An infringement search can often be conducted simultaneously with a patentability search.
Upon completion of the infringement search, the requestor will typically be provided with a reporting letter containing copies of any noted patents along with a brief description of the scope and field of the search. The report may also provide suggestions for designing-around a particular patent. Further review of some of the patents will often be required in order to determine whether the commercial embodiment includes substantially the same features as recited in the claims.
4. Validity Search
A validity search attempts to locate U.S. and foreign patents, technical journal articles, marketing brochures, doctoral dissertations, speech transcripts, or other published "prior art" documents that appear to disclose each of the features recited in a particular patent claim, but that were not considered during the examination of the corresponding patent application. Any such publication will preferably have been available to the public more than one year before the filing date of application from which the patent issued. Other sources of "prior art" may also be reviewed.

It is important to keep in mind that, under U.S. law, a patent is presumed to be valid unless it can be shown otherwise by "clear and convincing evidence." Therefore, an invalidity determination should not be made without the aid of an experience patent professional.
5. Patent Watch
In order to spot potentially-problematic patents before they turn into real problems, some firms also periodically review all patent documents that are published over a certain period under particular class/subclass codes from the Manual of Patent Classification and/or under assignee names of major competitors. This can be particularly helpful for patents that were not available before a new product was launched.
Rodney D. Ryder

USPTO - Application Filing Guides

Click here for "A Guide to Filing A Non-Provisional (Utility) Patent Application."

Click here for "A Guide to Filing a Design Patent Application."

Click here for more "Guidance, Tools & Manuals."

Click here for a "tutorial" on filing a trademark application.

Click here for a Fastener Insignia Recordal Form.

WIPO - Branding to create Value in [your] Business

According to an article by Helen Lom in WIPO's SME Newsletter for July 2004, "Among the various factors that determine a brand's success, one of the most important ones is the brand's differentiation power.
The brand must have a point of difference as far as the target group of consumers is concerned. This point of difference must be:
recognizable (in terms of the good and/or services marketed);
desirable (in terms of the quality and value of the goods and/or services offered);
credible (in terms of reliability); and
properly communicated (in terms of how the message is formulated and to whom it is targeted)."
Rodney D. Ryder

Trade Secret Protection - Practical Considerations

According to Sheryl Willert in "Practical Considerations To Protect Trade Secrets," several basic requirements for protecting trade secrets can be gleaned from the cases discussed in her article:
Reasonable precautions against industrial espionage
Marking plans and documents 'confidential'
Use of 'confidentiality' legends, warnings and agreements
Restricting visitors and similar types of plant security
Locking up or otherwise securing sensitive information
Taking technical precautions, such as dividing the system into steps handled by different individuals or departments
Copy protection and embedded codes to trace copies
Employee exit interviews.
Rodney D. Ryder

Database Protection in Europe

In Europe, the protection of databases has been harmonised by Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases. The EC Directive defines a database as "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means." The content may be protected by copyright and/or by a sui generis right. The structure may be protected by copyright only. The aim of this Briefing Paper is to explain these principles in detail.
Rodney D. Ryder

Partial Sequence not enough to claim DNA for encoding protein

In In re Wallach (Fed. Cir., August 11, 2004), the court noted that "A gene is a chemical compound, albeit a complex one, and it is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it. Conception does not occur unless one has a mental picture of the structure of the chemical, or is able to define it by its method of preparation, its physical or chemical properties, or whatever characteristics sufficiently distinguish it. It is not sufficient to define it solely by its principal biological property, . . . because an alleged conception having no more specificity than that is simply a wish to know the identity of any material with that biological property."
"Until Appellants obtained the complete amino acid sequence of TBP-II, they had no more than a wish to know the identity of the DNA encoding it.As Appellants point out, we have recognized that the written description requirement can in some cases be satisfied by functional description. See, e.g., Enzo, 296 F.3d at 1324 ("It is not correct, however, that all functional descriptions of genetic material fail to meet the written description requirement.").
Nonetheless, such functional description can be sufficient only if there is also a structure-function relationship known to those of ordinary skill in the art.""As we explained above, such a well-known relationship exists between a nucleic acid molecule's structure and its function in encoding a particular amino acid sequence: Given the amino acid sequence, one can determine the chemical structure of all nucleic acid molecules that can serve the function of encoding that sequence. Without that sequence, however, or with only a partial sequence, those structures cannot be determined and the written description requirement is consequently not met. As we explained in Enzo, the Guidelines for Examination of Patent Applications under the 35 U.S.C. § 112, 1, "Written Description" Requirement, 66 Fed. Reg. 1099 (Jan. 5, 2001) ("Guidelines"), state that the written description requirement can be met by "show[ing] that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics . . . i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics.""Appellants have provided no evidence that there is any known or disclosed correlation between the combination of a partial structure of a protein, the protein's biological activity, and the protein's molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other.The Board therefore correctly affirmed the examiner's determination that the specification of the '129 application does not provide an adequate written description of the pending claims."
Rodney D. Ryder

WIPO - Making a Mark

According to the July/August 2004 Issue of WIPO Magazine,
"The very essence of a trademark is its ability to distinguish the goods and services of one trader from those of another. Traditionally, trademarks consist of words, letters, numerals or designs. However, innovative marketing technologies and electronic commerce are precipitating an evolution in the symbolic representation of trademarks. Any new and distinctive sign that can be graphically represented can be the object of a non-conventional trademark." The artcile discusses several forms of distinctive signs including color, sound, fragrance and holograms.
Rodney D. Ryder

PLI: Hatch-Waxman for Dummies

For those unfamiliar with Hatch-Waxman, PLI's "Lawyer's Toolbox" is offering "The FTC's Pharmaceutical Cases" by Jeffrey W. Brennan of the Bureau of Competition at the Federal Trade Commission). Brennan's PowerPoint offers the legislation's rationale, stunning statistics about the efficacy of generics in lowering drug costs and brief overviews of the FTC's recent decision in the case involving Schering-Plough. Also available is "New Strategies Arising From the Hatch-Waxman Amendments" by Michael P. Padden of Howrey Simon Arnold & White, LLP with an overview of the current state of pharmaceutical development.
Rodney D. Ryder

Theories of Innovation

According to "Innovation Management and the Knowledge Driven Economy," from the European Commission Directorate-general for Enterprise (above), the evolution of theories of innovation management can be explained by the increasing importance of social ingredients in the explanation of innovation, which was originally based solely on tangible forms of capital. This progressive inclusion of social ingredients can be illustrated by reviewing five successive theories that have been deemed important by innovation specialists:

1. Innovation derived from science (technology push).2. Innovation derived from market needs (market pull).3. Innovation derived from linkages between actors in markets.4. Innovation derived from technological networks.5. Innovation derived from social networks.The first explicit theory of innovation management is the "technology push theory" or "engineering theory of innovation." In this theory the innovation opportunities,i.e. the opportunities to improve the products or the manufacturing processes, are found in the uptake of research results.According to this theory, basic research and industrial R&D are the sources ofnew or improved products and processes. The production and uptake of research follows a linear sequence from the research to the definition of a product and specifications of production, and the application of technology to make a product that conforms to the specifications defined by research that has also produced patents and scientific publications.The limitations of engineering solutions were recognised in the 1960s, resultingin an alternative view that sources of ideas for solutions should originate fromthe market. This alternative view gave birth to the "market pull theory" of innovation. This theory still gives a central role to research as a source of knowledge to develop or improve products and processes. This theory sees the first recognition of organisational factors as contributors in innovation theory; the technical feasibility was still considered as a necessary condition of innovation, but no longer sufficient in itself for successful innovation. Organisational competency had to be taken into account to ensure successful innovation.
A new generation called the "chain-link" theories of innovation then emerged to explain the fact that linkages between knowledge and market are not as automatic as assumed in the engineering and market pull theories of innovation.There were two phases:
1. At the beginning of the 1980s, more attention was given to linkages between research and the market via engineering, production, technology development, marketing and sales.2. Later in the 1980s, the focus laid the stress on the information generated through the linkages existing between the firm and its customers and suppliers.In these theories, innovation management is explained by combinationsof tangible forms of capital in conjunction with one intangible form of capital: data about customers and suppliers.At the end of the 1980s and during the 1990s, a technological networks theory of innovation management was developed by a new group of experts under thelabel of "systems of innovation." Here the theorists assumed that innovativefirms are linked to a highly diversified set of agents through collaborative networks and the exchange of information. This view stressed the importance of sources of information that are external to the firm: clients, suppliers, consultants, government laboratories, government agencies, universities, etc.Finally, the "social network" theory of innovation management is based on twoearlier ideas and one new insight. The earlier ideas are that innovation is determined by research (technology push theory) and by unordered interaction between firms and other actors (technological networks theory). The insight is that knowledge plays a more crucial role in fostering innovation. The growing importance of knowledge as a production factor and as a determinant of innovation can be explained by the continuous accumulation of technical knowledge overtime, and by the use of communications technologies that make that knowledge available very rapidly on a worldwide scale.The evolution from a technological network perspective of innovation management to a social network perspective has been led by the challenge to transform information into knowledge (e.g. information contextually connected to the development or improvement of products or processes). Knowledge-based innovation requires not one but many kinds of knowledge. Furthermore, it requires the convergence of many different kinds of knowledge retained by a variety of actors.
Rodney D. Ryder

IPN - Health, Innovation and IP

The International Policy Network has released a new report from a global coalition of sixteen civil society groups that analyses the relationship between intellectual property, innovation, and health. With regard to intellectual property, "Civil Society Report on Intellectual Property, Innovation and Health" concludes that Weak intellectual property legislation in countries with incipient or extant knowledge-based industries acts as a serious disincentive on R&D into the diseases of poverty, not least because it jeopardises the ability to generate enough sales to cover the extremely high costs of innovation. This is particularly true of highly politicised diseases such as HIV/AIDS; with countries such as Brazil threatening to implement compulsory licenses for ARVs, it becomes more difficult for R&D companies to invest resources in the search for new medicines.

Strong intellectual property legislation can also go some way to encouraging the development of an indigenous R&D industry in countries where it currently does not exist. As India comes to terms with its recently enacted patent legislation, for example, more companies are turning to value-added R&D work, rather than merely producing copies. It is likely these companies are also finding commercial benefit in developing drugs for diseases prevalent among local populations, which, due to their lower cost base, can be developed at prices far lower than equivalent development in wealthy countries.
Proposals that seek to restrict the granting of patents for so-called ‘me-too’ drugs misunderstand the incremental nature of innovation. The vast majority of drugs that exist today are incremental improvements on preceding drugs. The existence of many similar drugs in the same class is vital for improving safety, efficacy, selectivity and utility ofdrugs within a specific class.
Transferable patent extensions may work but need to be given careful consideration. A scheme that allowed a drug company to extend the patent on a single blockbuster for a year or more, for example, would effectively force the users of that drug to pay for the development of a drug for a completely different disease. This is ethically dubious and would likely be met with fierce resistance by patient groups. If, however, the patent extension was spread more thinly, for example by granting a short patent extension to many drugs, then these concerns would likely be alleviated.
Countries with slow and inefficient patent offices should introduce measures to improve the speed and efficiency of the patenting process. This might entail the introduction of incentive-based pay schemes, the contracting out of services to the private sector, or the merging of patent offices in different countries.
International Policy Network (IPN) is a charity based in the UK, and a non-profit (501c3) organization in the US. It is a non-governmental, educational and non-partisan organization that "aims to empower individuals and promote respect for people and property in order to eliminate poverty, improve human health and protect the environment."
Rodney D. Ryder

Thursday, March 30, 2006

Intellectual Property – Concept to Commercialisation™

Intellectual Property – Concept to Commercialisation™ is a programme based on my book – Intellectual Property Law – Concept to Commercialisation, published by Macmillan, that focuses on intellectual property law and the specific issues that stem from the effective management and commercialisation of intellectual property. The process aims to provide grassroot workers and innovation mangers with an understanding of the major principles and approaches to generating revenue from and valuing intellectual property.

The programme will include many significant issues that are associated with intellectual property risk management. These include: the selection of intellectual property to be commercialised, risk management, brand management, corporate governance, employee compensation and rewards and negotiation principles. The focus is holistic and focussed on traditional and non-traditional methods of revenue generation with particular focus on licensing, franchising, transfer, structuring and venture capital.
Rodney D. Ryder

Wednesday, March 29, 2006

Creative Commons - IP Comics

International Commons ("iCommons") is an offshoot of the Creative Commons licensing project dedicated to the drafting and eventual adoption of free, jurisdiction-specific copyright licenses. They have now developed licenses for the United States, Brazil, Finland, Germany, Japan, and Netherlands, and are in the process of developing licenses for Australia, Austria, Canada, Catalonia, China, Croatia, France, Ireland, Israel, Italy, Jordan, Spain, Sweden, Taiwan, and United Kingdom.
According to their website "With a Creative Commons license, you keep your copyright but allow people to copy and distribute your work provided they give you credit -- and only on the conditions you specify here. Or, if you want to offer your work with no conditions, choose the public domain.
If you're new to Creative Commons, here are a few quick ways to learn about "the concepts behind the organization"
Get Creative is a 5-minute long Flash presentation that covers why Creative Commons was formed, what it does, and how it does it.
A Spectrum of Rights describes, in comic-book format, how the licenses work.
How It Works is the story, also in comic-book format, of a typical collaboration.
Rodney D. Ryder

Intellectual Property and Computer Software

According to the forward, this paper from the UNCTAD-ICTSD Project on IPRs and Sustainable Development puts forward five main findings. First, that copyrights and other forms of intellectual property protection have erected a clear barrier to the spread of software across the South. Second, free software formats are moving fast in most developing countries where users are attempting to develop new products, innovations and adaptations in a effort to reduce the digital divide. Third, after comparing the license costs of proprietary and free software formats, the paper suggests that costs associated with free software are significantly lower although some learning, maintenance and services costs need to be taken into account when adopting these technologies. Fourth, free software formats might offer different advantages for technology transfer and follow-up applications depending on the model used (i.e. open source or general public licences). Finally, in the current international context free software systems are not a mere policy choice for developing countries, they are an important alternative for building, maintaining and changing rules that govern information flows.
Rodney D. Ryder

Copyright Industries in the US Economy

In 2002, the U.S. "core" copyright industries accounted for an estimated 6% of the U.S. gross domestic product ($626.6 billion). The "core" industries are those industries whose primary purpose is to produce or distribute copyright materials. These industries includenewspapers, book publishing, recording, music, and periodicals, motion pictures, radio and television broadcasting, and computer software (including business application and entertainmentsoftware).

In 2002, the U.S. "total" copyright industries accounted for an estimated 12% of the U.S. gross domestic product ($1.25 trillion). The "total" industries are composed of four groups called the core, partial, non-dedicated support, and interdependent sectors.
The "core" copyright industries employed 4% of U.S. workers in 2002 (5.48 million workers).
The "total" copyright industries employed 8.41% of U.S. workers in 2002 (11.47 million workers). This level approaches the total employment levels of the entire health care and social assistance sector (15.3 million) and the entire U.S. manufacturing sector (14.5 million workers in 21 manufacturing industries).
Between 1997-2002, the core copyright industries added workers at an annual rate of 1.33%, exceeding that of the U.S. economy as a whole (1.05%) by 27%. Factoring out the difficult economic year of 2002, between 1997-2001, employment in the core copyright industries grew at an annual growth rate of 3.19% per year, a rate more than double the annual employment rate achieved by the U.S. economy as a whole (1.39%).

In 2002, the U.S. copyright industries achieved foreign sales and exports estimated at $89.26 billion, leading other major industry sectors such as: chemicals and related products, food and live animals, motor vehicles, parts, and accessories, and aircraft and associated equipment sectors.

The report concludes that "U.S. copyright industries have consistentlyoutperformed the rest of the U.S. economy, in terms of contribution to gross domestic product and employment levels, and have played an increasingly prominent role in the growth of U.S. exports. These consistent positive trends in value added, employment levels, and foreign sales and exports solidify the status of the copyright industries as a key industry leading U.S. economic growth."
Rodney D. Ryder

WIPO - Intellectual Property Digital Library ["IDPL"]

The World Intellectual Property Organization's "Intellectual Property Digital Library ("IDPL") website provides access to all of the intellectual property data collections hosted by the WIPO, including PCT (Patents), Madrid (Trademarks), Hague (Industrial Designs), Article 6ter (State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations) and others.
Rodney D. Ryder

WIPO - Setting Standards in Intellectual Property

Among other things, the author of this paper reports that the Technical Standardization Law Committee of the Science and Technology Law Section of the American Bar Association has reached a consensus on the need for clearer Standards Development Orarganization ("SDO") disclosure policies;
that significant disputes arise with increasing frequency within SDOs concerning policy language, and
that ambiguous policy language increases litigation costs.
Rodney D. Ryder

[Festo and] The Doctrine of Equivalents

The UK House of Lords' decision in Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others[2004] UKHL 46 makes a pointed observation about the current state of the U.S. Doctrine of Equivalents.

Since the Catnic case we have article 69 [of the European Patent Convention] which, as it seems to me, firmly shuts the door on any doctrine which extends protection outside the claims. I cannot say that I am sorry because the Festo litigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims.With regard to the scope of EPC Article 69, Lord Hoffman goes on to write that that Although the EPC thus adopted the United Kingdom principle of using the claims to determine the extent of protection, the Contracting States were unwilling to accept what were understood to be the principles of construction which UnitedKingdom courts applied in deciding what the claims meant. These principles, which I shall explain in greater detail in a moment, were perceived as having sometimes resulted in claims being given an unduly narrow and literal construction. The Contracting Parties wanted to make it clear that legal technicalities of this kind should be rejected. On the other hand, it was accepted that countries which had previously looked to the "essence of the invention" rather than the actual terms of the claims should not carry on exactly as before under the guise of giving the claims a generous interpretation.

This compromise was given effect by the "Protocol on the Interpretation of Article 69":
"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

It used to be thought that despite article 69 and the Protocol, there remained serious differences between the approaches to construction of the United Kingdom on the one hand and Germany and the Netherlands on the other. And it is true that in the early years of the EPC, there was a view in the German and Netherlands courts that the Convention had made no difference and that the Protocol entitled the courts of Contracting States to go on deciding the extent of protection exactly as before. The highest courts in both Germany and the Netherlands have said that the effect of article 69 is to give the claims what the European Patent Office has called a "central role."A more-detailed story from "The IPKat marvels at Lord Hoffmann's clarity of thought and lucidity of expression. Does anyone in the UK seriously advocate exchanging this sort of quality for an unknown and untried Community patent court?"
Rodney D. Ryder

Intellectual Property in Third Countries [EU]

On November 10, 2004 the European Commission announced that it has adopted the following strategy for the enforcement of intellectual property rights in third countries.
Identifying priority countries: EU action will focus on the most problematic countries in terms of IPR violations.
These countries will be identified according to a regular survey to be conducted by the Commission among all stakeholders.
Awareness raising: promote initiatives to raise public awareness about the impact of counterfeiting (loss of foreign investment and technology transfer, risks to health, link with organised crime, etc.) and make available to the public and to the authorities of third countries concerned a ?Guidebook on Enforcement of Intellectual Property Rights?
Political dialogue, incentives and technical co-operation: ensuring that technical assistance provided to third countries focuses on IPR enforcement, especially in priority countries; exchanging ideas and information with other key providers of technical co-operation, like the World Intellectual Property Organisation (WIPO), the US or Japan, with the aim of avoiding duplication of efforts and sharing of best-practices.
IPR mechanisms in multilateral (including TRIPs), bi-regional and bilateral agreements: raising enforcement concerns in the framework of these agreements more systematically; consulting trading partners with the aim of launching an initiative in the WTO TRIPs Council, sounding the alert on the growing dimension of the problem, identifying the causes and proposing solutions and strengthening IPR enforcement clauses in bilateral agreements.
Dispute settlement - sanctions: recall the possibility that right-holders have to make use of the Trade Barriers Regulation or of bilateral agreements, in cases of evidence of violations of TRIPs; in addition to the WTO dispute settlement, recall the possibility to use dispute settlement mechanisms included in bilateral agreements in case of non-compliance with the required standards of IPR protection.
Creation of public-private partnerships: supporting/participating in local IP networks established in relevant third countries; using mechanisms already put in place by Commission services (IPR Help Desk and Innovation Relay Centres) to exchange information with right-holders and associations; build on the co-operation with companies and associations that are very active in the fight against piracy/counterfeiting.
EU Trade Commissioner Pascal Lamy said "Piracy and counterfeiting continue to grow every year and have become industries, increasingly run by criminal organisations. This is a serious problem for us but also for third countries whose companies are also suffering the consequences of violation of their own intellectual property rights. Some of these fakes, like pharmaceuticals and foodstuffs constitute an outright danger to the public, while others undermine the survival of EU?s most innovative sectors, confronted with the misappropriation of their creations. Adopting new legislation on intellectual property is one thing. But devising the right tools to enforce it is another. This is now our priority."
Rodney D. Ryder

Intellectual Property - Due Diligence

According to Patent Issues Relating to Acquisitions: Conducting Intellectual Property Due Diligence, while every IP due diligence must be tailored to meet the particular business situation at hand, certain basic steps should at least be considered:
Identify Products and Services
Identify Corresponding Intellectual Property
Prioritize Analysis (if necessary)
Analyze State of Relevant Industry
Determine Scope of Protection Provided by IP Assets
Verify "Exploitability" of IP Assets
Conduct Non-Infringement Investigation
Review Warranties and Indemnities
Review Any Other Considerations
Establish a Value

Intellectual Property in Strategic Alliances

Finding a "good technological fit is only the starting point for successful strategic alliance negotiation. . . . This article flags some common issues and explores a variety of ways of solving them."
Rodney D. Ryder

WIPO - Laws for Electronic Access

The World Intellectual Property Organization's Collection of Laws for Electronic Access (CLEA) is a free, electronic database providing easy access to intellectual property legislation and treaties from a wide range of countries and regions.
CLEA consists of:
a bibliographic index of Intellectual Property laws and treaties in English linked with
a full-text database available in English, French, and/or Spanish.
CLEA contains:
bibliographic data concerning each legislative text and treaty
national legislative texts in all fields of intellectual property and related matter
texts of multilateral treaties administered by WIPO
texts of multilateral treaties not administered by WIPO
The legislative texts contained in CLEA:
have been transmitted to WIPO by the competent authorities of the countries concerned, under Article 15(2) of the Paris Convention (1967 Act) and Article 24(2) of the Berne Convention (1971 Act) regarding industrial property and copyright, respectively, and/or have been notified by the competent authorities of the countries concerned to the Council for Trade Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization (WTO) - under Article 63(2) of the TRIPS Agreement: these notifications have then been communicated by the WTO to WIPO - under Article 2(4) of the Agreement between WIPO and the WTO of December 22, 1995.
Rodney D. Ryder

Dictionary of the History of Ideas

Click here for the free, online Dictionary of the History of Ideas: Studies of Selected Pivotal Ideas, edited by Philip P. Wiener, published by Charles Scribner's Sons, New York, in 1973-74. Courtesy of The Journal of the History of Ideas
Rodney D. Ryder

Intellectual Property Comics [WIPO]

Please 'click' on the links to download the WIPO 'comics' on Intellectual Property -

Click here for WIPO's patent comic book.
Click here for WIPO's trademark comic book.
Click here for WIPO's copyright comic book.
Click here for WIPO's comic books in non-English languages.

Rodney D. Ryder

Patent Valuation [Twenty Steps]

The ability to appraise patents can be important for GAAP financial reporting purposes under FASB nos. 141 and 142, especially for auditors and valuators in high-tech industries in which there are lots of business combinations.
Here are the "20 Steps for Pricing a Patent" according to J. Timothy Cromley, CPA, an accredited senior appraiser with the Valuation Advisory Services Group of JPMorgan Chase & Co:
Check whether the patent is in force.
Identify the business context.
Gather information including file history, business plans, licenses, etc.
Assemble a valuation team with expertise in patent law, an understanding of monopolies, business valuation skills, and a background in the technology of the patent
Read the patent or carefully interview an independent patent attorney who has.
Investigate the patent's claim scope.
Talk with a patent attorney.
Inquire about the patent's validity.
Inquire into blocking patents.
Investigate foreign patent protection.
Consider synergies among patents
Consider the remaining life of the patent.
Analyze any prior royalties paid for the patent.
Inquire into any actual or threatened litigation involving the patent.
Identify the next-best alternative technologies.
Estimate a demand curve for the patented item.
Determine the patented product's point of profit maximization.
Consider the applicability of traditional valuation approaches.
Do an income-approach valuation.
Write the patent valuation report.
Rodney D. Ryder

Personality Rights Database [Comparative Law]

Starting with Australia, France, Germany, the UK and the US, this website produces abstracts of some of the major cases that have relevance to the protection of personality rights, also referred to as rights of publicity in the U.S. It also contains a list of literature. The website will be updated and enhanced on an ongoing basis. Comments and contributions are welcomed by the AHRB Research Centre for Studies in Intellectual Property and Technology Law.
Rodney D. Ryder

Patents - Joint Research

The Cooperative Research and Technology Enhancement ("CREATE") Act of 2004 (see I/P Updates June 24, 2004) was enacted on December 10, 2004 and eliminates the type of secret prior art addressed in OddzOn Products, Inc. v. Just Toys, Inc. (Fed. Cir. 1997) for joint research projects, as long as the invention was made as a result of activities undertaken within the scope of a written joint research agreement in effect on the date the invention was made; and any patent application for the invention discloses or is amended to disclose the names of the parties to the joint research agreement.

The OddzOn decision held that information from related research projects qualifying as prior art under 35 USC 102(f) or 102(g) can be used to invalidate a patent for obviousness, even if that information was confidential, shared among consenting parties, or otherwise undocumented. Although many entities attempted to maneuver around this problem by assigning intellectual property rights to a single entity, it was viewd as a trap for the unwary that negatively affected collaboration.
Rodney D. Ryder

Trademarks - What it takes to be a famous mark

This October 2004 Report by the INTA Dilution Committee addresses what is required for a mark to be found famous in the context of a claim for trademark dilution. Other reports that were prepared under the auspices of the INTA as groundwork for the introduction of a dilution reform bill in early 2005 include
Defenses to a Dilution Claim Under the FTDA
Proof of Dilution in the United States
U.S. State Dilution Laws
Summary of State Dilution Cases
The Protection of Well-Known Marks in the European Union, Canada and the MiddleEast

Appendix A - Summaries of Key OHIM Decisions
Appendix B - Austria, Denmark, Finland, Sweden
Appendix C - Benelux, Ireland, United Kingdom
Appendix D - France, Germany, Italy, Spain
Appendix E - Hungary, Latvia, Slovakia, Slovenia
Appendix F - Norway, Switzerland, Czech Republic, Poland
Appendix G - Bahrain, Egypt, Gaza, Israel
The Protection of Well-Known Marks in Asia-Pacific, Latin America and Africa

Rodney D. Ryder

Patents - Claim Differentiation

In Versa Corporation v. AG-BAG International Limited (Fed. Cir. December 14, 1004), the court (rather selectively) looked at the specification, other language in the same claim, and structure a dependent claim to broadly construe "means associated with the bagging machine for creating air channels in the compost material in said bag to enhance the composting of the compost material" so as not to require the flutes that were illustrated in the drawings. The courts citations are ommitted in the excerpt below.

In most places the specification describes the invention as including both flutes and perforated pipe, and the drawings show both flutes and perforated pipe. Specifically, the abstract states that "[t]he presence of air in the channels created by the flutes and the air present in the perforated pipe ensures that sufficient air will be present in the mass to achieve complete decomposition of the material." The specification further states that "[t]he air present in the grooves in the material [i.e., the flutes] and the air present in the perforated pipe causes the material to properly decompose." However, the specification also points out that both structures are not required, stating: "[I]t is believed that sufficient air will be present to achieve decomposition with either the channels 48 or the perforated pipe 50 although it is preferred that both the flutes 46 and the pipe 50 be utilized." We conclude that, in light of this disclosure, flutes are not essential.
Moreover, here the language of the claim itself also suggests that the means for creating air channels does not have to include flutes. After setting forth the "means . . . for creating air channels" limitation, that limitation is further defined by the next clause of the claim, which reads: "said means for creating air channels comprising positioning means which positions at least one elongated, perforated pipe . . . ." Although "comprising" language is not limiting and may include features not recited in the claim, such language cannot be read to require other structure. Thus the claim language itself shows that flutes are not required structure for the "means . . . for creating air channels."
Furthermore, the doctrine of claim differentiation supports the conclusion that flutes are not necessary structure. The doctrine of claim differentiation "create[s] a presumption that each claim in a patent has a different scope." The difference in meaning and scope between claims is presumed to be significant "[t]o the extent that the absence of such difference in meaning and scope would make a claim superfluous." Here, claim 2 of the ’910 patent depends from claim 1 and adds that flutes are "also" present:
2. The machine of claim 1 wherein said tunnel means has inner and outer surfaces and wherein said means for creating air channels also comprises spaced-apart inwardly projecting flutes positioned on the inner surface of said tunnel means. However, as noted in the dissent by Judge Newman, other parts of the specification describe the flutes working in conjunction the perforated pipe to ensure that sufficient air will be present in the material to achieve complete decomposition. In her view, the applicant's "belief" statement in the specification did not require the air channels and was not the invention that was patented.
The specification, drawings, and prosecution history all teach that a material aspect of the device is the air channels or grooves created by the plurality of flutes. The patentee may have "believed" that some other structure could achieve decomposition, but that is not what was presented for examination.
So what's a patent practioner to do, you ask? I say, use as much "claim-type differentiation" as possible and hope like hell that you never have to bet your career on a means-plus-function claim.
Rodney D. Ryder

Tuesday, March 28, 2006

Copyright Clearance [for Employees]

According to a study by the Copyright Clearance Center, "Employees often do not understand what content is protected by copyright law, what activities violate the law, or where and how to seek copyright permission."
They suggest a few steps that employers can take to educate employees and enable compliance:
Develop a copyright compliance policy.
Communicate the compliance policy throughout the organization.
Develop a culture of compliance.
Create simple solutions for copyright compliance. Click here for the CCC's "Practical Guide to Copyright for Business Professionals.
Rodney D. Ryder

World Bank on Traditional Knowledge

Poor people can turn their own knowledge into higher incomes by using modern methods to protect and market it, says a new World Bank study. Until now, the global perspective has been largely defined by the WTO Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS), which protects knowledge overwhelmingly owned by developed countries.However, a new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," explores the "other side" -- the ground that TRIPS left uncharted -- by highlighting the knowledge that poor people can commercialize.
According to the introduction, this book aims to expand the international discourse by:
Calling attention to a broader range of knowledge that has commercial potentialin developing countries.
Bringing an economic dimension into the discussion of traditional knowledge, where legal analysis has thus far been at the forefront.
Bringing out the incentives for and concerns of poor people--which may be different from those of corporate research, Northern nongovernmental organizations (NGOs), or already successful entertainment stars.
Demonstrating that the best answer is sometimes a commercial one, for example, providing musicians basic training in small business management or reform of regulations that burden small businesses, rather than obtaining formal patent or copyright protection.
Calling attention to the many income-earning (rather than the income-using) dimensions of culture--to dispel the notion that culture and commerce are necessarily in opposition.
Bringing out instances in which more or less standard legal approaches have been effective as an antidote to the general sense of conflict between traditional knowledge and normal legal conceptions so as to identify the problems in which legal innovation—beyond diligent application--is really needed.
Imbuing into the discourse a sense of the legal and commercial tasks needed to solve a developmental problem--away from “knowledge� as an isolated legal issue.
Rodney D. Ryder

Economic Development Dimensions of Intellectual Property

In "Intellectual Property Research and Development Lessons from Recent Economic Research," editors Carsten Fink and Keith E. Maskus conclude that developing countries should carefully assess whether the economic benefits of additional rules for the protection of IPRs outweigh their costs. In their view, these costs encompass both the net fiscal expenditure of financing relevant government agencies and the opportunity cost of employing possibly scarce human capital in the administration of the intellectual property system.
The economic research presented in their book also suggests that there is an important development dimension to the protection of IPRs:
At the same time, in view of the various tradeoffs associated with alternative IPR standards, a "one size fits all" approach is unlikely to work. Developing countries may want to opt for different standards of protection than the ones that prevail in high income countries that have different technological and financial capabilities. Although the current international framework for the protection of intellectual property provides for some degree of harmonization of global IPR standards, TRIPS, in particular, still leaves important room to adjust IPR norms to domestic needs.“Countries that sharply strengthen their IPR regime are unlikely to experience sudden boosts in inward Foreign Direct Investment,� says Maskus. “They would be better advised to improve overall investment climate and business infrastructure.�
On the other hand, several studies in the book point to a significant development dimension to the protection of intellectual property. Interviews with firm managers in China show the negative effect of weak trademark protection on innovative Chinese enterprises. “Interestingly, there are strong regional disparities in the enforcements of IPRs�, says Maskus, “with the effect that firms are reluctant to expand into China’s poorer regions, where enforcement is comparatively weak.�
Rodney D. Ryder

Patent Laws and Traditional Knowledge

In one of the new series of case studies compiled in "Poor People's Knowledge: Promoting Intellectual Property in Developing Countries," Coenraad J. Visser writes with regard to patents in "Making Intellectual Property Laws Work for Traditional Knowledge" that:
Countries should use the (optional) morality requirement in the TRIPS Agreement to refuse the registration of a patent where the invention to which the application relates has special cultural or spiritual significance for indigenous or local communities, or where the application is likely to be considered culturally offensive to such communities.

Patent statutes should provide that where an applicant for the revocation of a patent for lack of prior informed consent can prove that the invention uses or derives from a genetic resource found within its territory, or from traditional ecological knowledge held by a local or indigenous community in it, it is presumed that the patentee has taken such resource or knowledge without the prior informed consent of the relevant indigenous or local community. Also, instead of revocation, patent statutes can allow the transfer of the patent to the successful applicant, effective from the filing date of the patent application.

Patent statutes should state that prior use by a local community of an invention that utilizes such community’s traditional technical knowledge does not anticipate (or destroy the novelty of) such invention.
Rodney D. Ryder

McCarthy on Comparative Dilution

No part of trademark law that has created so much doctrinal puzzlement and judicial incomprehension as the concept of dilution as a form of intrusion on a trademark. It is a daunting pedagogical challenge to explain even the basic theoretical concept of dilution to students, attorneys and judges. Few can successfully explain it without encountering stares of incomprehension or worse, nods of understanding which mask and conceal bewilderment and misinterpretation.With the advent of the 1988 E.U. Trademark Directive and a growing body of interpretive European Court of Justice (ECJ) case law, it is much easier than in the past to make a comparison of E.U. and U.S. trademark law, including anti-dilution law. While the anti-dilution provisions of Articles 4(4)(a) and 5(2) of the E.U. Directive are optional, in fact, every pre-2004 E.U. nation has adopted them in its domestic law. In the United States, since the enactment of the 1996 federal anti-dilution Act, in theory there is a uniform law consistent throughout the nation.
Click here for more from J. Thomas McCarthy, Senior Professor of Law at University of San Francisco, Founding Director of the McCarthy Institute of Intellectual Property and Technology Law, as well as the author of McCarthy on Trademarks & Unfair Competition.
Rodney D. Ryder

Music Downloads

The International Federation of the Phonographic Industry (IFPI) is reporting that
Record companies have digitised and licensed over a million songs. In 2004 the available catalogue on the biggest online services doubled from around 500,000 to around one million tracks.

Consumer attitudes are changing – the latest IFPI European survey shows increasing awareness of, use of, and intentions to use, legal download servicesAlso according to the report, the aim of the record industry’s educational and anti-piracy actions is to help create "a breathing space for the burgeoning online music market, to raise awareness, change attitudes and contain illegal file-sharing."
They even include a clever quip from Steve Jobs: "iTunes really competes with piracy, not with the other services. Piracy is thebig enemy. Buying music online legally is good karma."
Rodney D. Ryder

PCT - Publication Alerts

Thanks to the Invent Blog for pointing to PCT Alerts, "a free e-mail alerts service for people wanting to keep watch on publication of PCT Patents! Upon registering, you will receive an email alert as soon as the requested PCT Patent is published by WIPO (World Intellectual Property Organization)."
Rodney D. Ryder

WIPO - Trademark Law Treaty [Updated]

A new international treaty on trademarks, to be known as the Singapore Treaty on the Law of Trademarks in recognition of the country that hosted the final round of negotiations, was adopted on March 28, 2006 by member states of the World Intellectual Property Organization (WIPO). The new treaty concludes efforts by WIPO’s member states to update the 1994 Trademark Law Treaty (TLT) and bring it in line with the technological developments of the past decade.According to the press release from WIPO, the Singapore Treaty deals mainly with procedural aspects of trademark registration and licensing. It also creates a new Assembly of the contracting parties as a built-in review mechanism for administrative details of a less order.
In a nod to the current North-South divide on international IP issues, the press release also noted that during negotiations some developing and least developed states expressed concernabout their ability to fully benefit from the Treaty. These discussions resultedin a firm commitment by industrialized countries to provide adequate technicalassistance and other forms of support to strengthen the institutional capacityof those countries to enable them to take full advantage of the Treaty.
The Basic Proposal for a Revised Trademark Law Treaty is available here.The Basic Proposal for the Regulations under the Revised Trademark Law Treaty is available here.Other meeting dosuments are available here.
Rodney D. Ryder

Canada - IP Toolkit

The (Canadian) IP Toolkit "helps direct you through useful information about Intellectual Property (IP). It contains information, instructional modules, links and highlighted glossary terms that answer most IP questions asked by businesses and entrepreneurs. Here you can find out what IP is, why it is useful, how it fits as part of a business strategy, how to apply for it and how to use IP effectively."

China - IP Toolkit

The U.S. Ambassador to China hopes that you will find the China IPR Toolkit helpful in better understanding IPR protection in China. The Toolkit contains materials describing the scope of the IPR problem in China and suggestions regarding what American companies can do to protect their IPR and steps you should consider after an infringement comes to your attention.

Intellectual Property Issues in Advertising

Advertisements are common targets for infringement lawsuits. "If you are not cautious, you can lose your IP rights or be liable for infringement of the IP rights of others," writes Lien Verbauwhede in the January 2005 issue of WIPO's SME Newsletter.
His conclusion? "As with any undertaking, prevention is better than cure. Before launching an advertising campaign, businesses should have it ‘cleared’ or approved, both from a general legal perspective and from an IP perspective."

Tricks of the Trade Secret Case

In "Tricks of the Trade Secrets Case," Victoria A. Cundiff writes that attorneys can often focus on the wrong secret. She cites the example of a key sales person leaving a company. "The first 'secret' that may come to mind is the customer list," she writes. "The reality may be, however, that the customer list itself is not, or is just barely a trade secret." She suggests considering the following points in preparing your case:
Is It Really A Trade Secrets Case At All?
If It Is A Trade Secrets Case, Define The Secret
What Is The Dispute Really About?
Which Part Is The Secret Part?
Don't Put Too Many Secrets At Issue
Consider The Character Question
Sue In The Right Court
Don't Sue Too Late
Don't Sue Too Early
Don't Wait For Others To Take Action
Choose Defendants Carefully
Think About The Protective Order
Don't Overlook Inside Experts
Consider Outside Experts, Too
Don't Get Buried In The Details
Tailor The Injunctive Relief Requested
Policing The Injuction
Don't Overlook ADR
Anticipate Trouble

Intellectual Property and your website

Patent Claim Drafting - Methodical Approach

Here is an outline of a methodical approach to patent claim drafting for any area of technology, as discussed in "Structure, Function, and the Spectrum of Patent Claiming:"
Carefully identify the advantageous "effect" of the invention
Identify the fewest "elements" that will create that effect
Start with structure plus function claim type format to link the elements and effects, e.g. "element A for effecting (a, to, with, of, in, on, over) element B"
Use dependent claims to "structurally" define elements and/or "functionally" define effects
Use "claim-type differentiation" to expand that format with the same elements and effects
Use even uncommon claim types for your area of technology
Avoid unnecessary "hybrid structural/functional" recitations
Appeal rejections that are merely demands for additional structure

Confidentiality Agreements

According to the UK patent Office, confidential Disclosure Agreements (CDAs), also known as Non-Disclosure Agreements (NDAs), are legally-binding documents that enable you to record the terms under which you exchange secret information. You are strongly advised to consider using one if you are going to disclose the details of your secret technical idea to another party. That is not to say that a duty of confidence cannot arise even in the absence of such a contract. But recording the duty in a written agreement gives added legal certainty.
They suggest a few points to consider when using CDAs:
It is highly recommended that you consult a lawyer about how to protect your ideas and the risks of communicating these ideas to someone else.
Ask the person/company you are communicating with if they have a CDA they may wish to use that serves both of your interests - but read it carefully and consider taking legal advice.
Have a CDA prepared and send it to the other party for them to consider
Make some sort of record of what was disclosed at a meeting. For example, you could ask the other party to acknowledge a paper copy of a computer presentation, or drawings etc. that describe the technical details of your idea and the date on which you first showed it to them, in whatever form (eg. paper, an email attachment or an Internet video streaming player).
There is no "one-fits-all" CDA. Their example of a CDA shows the types of clauses that are often found in these documents. This typical agreement is merely an example and therefore may not apply directly to your particular circumstances.

ICC Roadmap for Intellectual Property

"As business, trade and the impact of technology become increasingly global, awareness of the value of intellectual assets grows and the very high costs of obtaining and litigating patents continue to increase, a strong worldwide cost-effective patent system becomes a very desirable objective. A truly worldwide patent system, giving rise to a single patent enforceable within every country within a single legal framework, would however raise major constitutional issues concerning a country's right to determine what commercialacts are permissible within its borders and what its citizens are allowed to do in relation to local economic issues and imperatives. This is therefore unlikely in the short term but much can be done to harmonize patent grant and enforcement systems by resolving other issues, and by regionalizing patenting and patent enforcement systems." From the sixth edition of “Current and Emerging Intellectual Property Issues for Business: A Roadmap for Business and Policy Makers,� by the International Chamber of Commerce.

Trademark Licensing Checklist

In order to provide practitioners with guidance in negotiating license agreements, this checklist outlines key areas that ought to be considered and addressed in reducing license agreements to writing. The attached Appendix also includes sample provisions covering various aspects of the a typical license agreement.

Trademarks - a brief history

The first marks – the branding of livestock depicted in Stone Age cave paintings – identified personal property to prevent theft. Egyptian masonry from some six thousand years ago shows quarry marks and stonecutters signs, which named the source of the stone and the laborer who carried out the work. The practice of marking goods with a graphic design to certify its origin and quality spread throughout the ancient world as the scale of commerce increased and goods became more sophisticated. Some of the marks used by trade guilds in the middle ages – such as the hallmark for gold purity – are still in use today although the guilds no longer exist.Over the years these marks evolved into today’s system of trademark registration and protection. The earliest trademark legislation was the Bakers’ Marking Law, obliging every baker to put his mark on the bread he baked, enacted by the British Parliament in 1266. Merchants’ marks – personal marks used from the 13th to 16th century – could be considered the predecessors of modern trademarks in that they bore names of traders and served as a guarantee that the goods sold were of the expected quality.

The Igor Naming Guide

Igor Naming and Brand Agency created the Igor Naming Guide in order to demystify the product and company naming process.
They say it shows how and why great product and company names work, starting with the relative strengths and weakness of four major categories of names:
Functional / Descriptive Names
Invented Names
Experiential Names
Evocative Names Igor's own naming process is presented in excruciating but logical detail, including tools such as "name taxonomy charts" for brining bring an elegant simplicity to a complex set of intertwined naming elements. The taxonomy chart keeps the process focused on the competitive aspect, forces you to quantify both the negative and positive attributes of each name under consideration, sets a high standard for you to meet, and gives everyone involved a clean and easy framework in which to disparage, insult, and belittle each other.Igor's own blog about naming and branding in popular culture is called "Snark Hunting." These are a great resources for when your client finds out that they need a new mark.

IP Strategy Blueprint [in five steps]

An April 18, 2005 article from offers a five-step blueprint for an IP strategy:
prepare employee contracts with nondisclosure provisions protecting business information and trade secrets
consider if patent protection is available and worthwhile business methods, software designs or inventions of any type
File trademark applications based on an intent to use the mark in commerce
register copyrights to recover statutory damages and attorney fees for copyright infringement
conduct yearly internal audits of IP rights
The author concludes that "Engineers know that the time and money spent in creating a detailed blueprint can avoid added expense during production. The importance of IP assets to modern business reinforces the benefit of a similar commitment of resources to create and implement an effective IP strategy."

WIPO - Guide for artisans and visual artists

This WIPO Guide provides basic information about marketing techniques and intellectual property for artisans and visual artists. It seeks to indicate why, which, what, where, when, whether and how consideration ought to be given to the effective management of IP assets by using IP tools for successful marketing of craft and visual art products.

Biotechnology - History of Intellectual Property

In the 50 years since Crick and Watson’s discovery of the structure of DNA, intellectual property law has evolved to the extent that it is now possible to acquire rights over most forms of genetic innovation with only limited exceptions. However this evolution has not been without controversy. Both in the 1880s, and subsequent to the events of the 1950s, disquiet has been expressed at the treatment of genetic material as private property.

This January 4, 2005 article from provides an outline of some of the developments in European bio-intellectual property rights (‘bio-IPRs’) post-Crick and Watson.

'Procedural' Claim Updates

In The Gillette Company v. Energizer Holdings, Inc. (Fed. Cir.; April 29, 2005), the court looked at the claim language "comprising . . . a group of first, second, and third blades" in order to determine whether it can encompass four-bladed safety razors (such as the QUATTRO®) or is limited to solely three-bladed safety razors.
The majority opinion by Judge Rader concluded that the "open" claim terms "comprising" and "group of," in addition to other language, to encompass subject matter beyond a razor with only three blades:
The specification specifically acknowledges that it is not the three blades themselves which solve the prior art problem of detrimental drag forces, but instead thearrangement of three blades in a particular spatial configuration, stating "thenovel aspects of the present invention residing in the provision of three bladesset in the blade unit set in particular dispositions with respect to each otherand the guard and the cap." The written description likewise discussesthese parameters with respect to the relative positioning of each of the threeblades at length. These principles of progressive blade exposure and progressive blade span could apply equally to four or five blades. Such a geometric arrangement of three, four, or even more blades will achieve a closer shave and, at the same time, minimize excess drag. It may be that a four-bladed safety razor is a less preferredembodiment. A four-bladed razor costs more to build, requires more parts, andadds more frictional drag compared to the three-bladed version. The court also noted that, in contrast to Markush group language using the word "consisting," the phrase "group of" is presumptively open.
Furtherore, with regard to the numerical references in the claim, the court pointed out that
The terms "first, second, and third" are terms to distinguish different elements of the claim, not terms supplying a numerical limit. Thus, the "first," "second," and "third" blades need not necessarily appear in that order or necessarily limit the blade unit to only three blades. Instead, these ordinal terms designate different blades within the "unit" according to their location and elevation. . . . . [T}he reference to "first," "second," and "third" blades was not a serial or numerical limitation, the claim does not follow a consecutive order (i.e., it does not discuss the second blade after the first). The claim is thus clearly not using the ordinals — first, second, third — to show a consecutive numerical limit but only to distinguish or identify the various members of the group. . . .And, finally, with regard to the file history,
The defendant itself endorsed an open interpretation of "comprising" when itargued to the European Patent Office (EPO) that a virtually identical claim inGillette’s European counterpart to the patent would not exclude an arrangementwith four or more blades. This blatant admission by this same defendant beforethe EPO clearly supports this court’s holding that those skilled in the artwould construe the claims of the ’777 patent to encompass razors with more thanthree blades. Professor Hal Wegner calls this decision "Phillips Claim Construction Tea Leaves" and writes that the case continues a trend of panel opinions that maintain the full literal scope of a claim without narrowing the scope of protection to preferred embodiments:
The case is of interest as a predictor of the [upcoming] en banc Phillips case because there is a well written dissent that fully expresses the countervailing view that the author of the majority opinion had once dubbed a “specification űber alles� approach. Thus, the matter was thoroughly thrashed out in the opinion making process. The dissent was written by Senior Judge Archer who is not a member of the en banc panel in Phillips. The folks at the Federal Circuit Claim Construction Project would likely agree Their Federal Circuit Predicter tool estimated a 71% chance that this panel would use a procedural claim construction approach "characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language." Based upon their current data, the odds appear to be running at about 2:1 strongly in favor of such a procedural outcome in the Philips en banc decision.