Saturday, April 29, 2006

Merck v. Integra - US Supreme Court Decision Seen as Victory for Research

The news that the Supereme Court had issued its opinion in the matter of Merck Pharmaceuticals v. Integra LifeSciences whipped through the bio world like wildfire. The unanimous decision, written by Justice Scalia, is already being hailed as major support for clinical research that could usher in faster development times for the pharmaceutical companies.

The Court held that:
The use of patented compounds in preclinical studies is protected under Sec. 271(e)(1) at least as long as there is a reasonable basis to believe that the compound tested could be the subject of an FDA submission and the experiments will produce the types of information relevant to an IND or NDA. The statutory text makes clear that Sec. 271(e)(1) provides a wide berth for the use of patented drugs in activities related to the regulatory process ... .

The Court was looking at what line could be drawn, if any, for when research would be considered experimentation that could go toward an FDA submission, and it surprised some by casting a fairly wide sweep. The Court of Appeals below had rested its opinion on the finding that the Merck experiments were not explicitly designed for submission to the FDA, but to find the best drug candidate to test further. The Supreme Court acknowledged that basic research on a compound is not "reasonably related to the development and submission of information to the FDA." However, the exemption in 271(e)(1) for patent infringement does cover, the Court held, experimentation even if the drug does not become part of an FDA submission and use in experiments whose results are not submitted to the FDA. Doing so would confound the purpose of experimentation.
The Court agreed with Merck's attorneys that a bright line could not be drawn at a clinical phase or type of research. Also, the Court took the government's amicus brief into serious consideration and noted that having all possible experiment results was what the FDA most wanted so it could evaluate the particular drug. Thus, there was no real limit on what could eventually be a part of an FDA submission.
The court did not opine as to how the patent infringement exemption affects "research tools,' as Integra did not argue that the compounds at hand were research tools and that the exemption might impinge upon them. That argument is left to another day and another lawsuit.
Rodney D. Ryder

Friday, April 28, 2006

Import Exclusion Basics [United States]

The first step in obtaining import exclusion protection for trademarks, tradenames, and copyrights in the U.S. is to record registrations with the Customs and Border Protection service ("CBP"). Import exclusion protection for patented items, on the other hand, may be obtained only after the U.S. International Trade Commission has completed a "Section 337" investigation and recorded its own "exclusion order" with CBP.
CBP then places these records in an electronic database in order to "actively monitor shipments and prevent the importation or exportation of infringing goods."CBP recently introduced an Intellectual Property Rights e-Recordation (IPRR) system to aid in adding information to the database. The electronic IPRR system requires a separate application for each recordation sought, and applications will be processed in the order in which they are received. The recordation fee for copyrights is $190 per registration while the recordation fee for trademarks is $190 per International Class of goods.
The CBP's sample trademark recordation application shows the various documents must be provided under 19 CFR 133.3 for trademarks, while the sample copyright recordation application shows the information that must be provided under 19 CFR 133.33 for copyrights. Tradename recordations are made by submitting an e-mail message to containing the information provided for in 19 CFR 133.11 et seq.
As noted on the CBP website, their "enforcement is accomplished through the cooperative efforts of our trained enforcement officers, other government agencies, and the trade community." In fact, as of April 2006, there were over 19,000 records in the database. Consequently, as discussed in a Customs publication (which is currently withdrawn and under revision) the CBP has in the past asked that Trademark and copyright owners who have recorded with Customs and are aware of suspected infringers may provide the following information along with their recordation application or at any time thereafter:
the name and business address of the importer and/or consignee of the allegedly infringing articles;
a sufficiently detailed description of the suspect goods to make themreadily recognizable by Customs, including a sample of the infringing article ora photographic or other likeness reproduced on paper;
the country of origin of the shipment and any countries through which the suspect goods are transhipped;
the country or countries of manufacture of the allegedly infringing merchandise;
the name and principal business address of each foreign person or business entity involved in the manufacture and/or distribution of suspect article;
the mode of transportation and the identity of the transporters of the allegedly infringing good;
the ports where it is anticipated the suspect articles will be presented to Customs;
the anticipated date of presentation to Customs;
the Harmonized Tariff Schedule designation of the suspect goods; and
any additional evidence relating to the importation of the suspect goods.
With regard to what information Customs will provide an IPR owner, this publication also states:
Pursuant to the Customs regulations, trademark and copyright owners will be provided certain information where merchandise is detained or seized as infringing a tradename or registered copyright or trademark. Where merchandise is detained as bearing a confusingly similar mark, as a gray market good or as possibly piratical of a registered and recorded copyright, the intellectual property owner will be provided the following information, if available, within 30 business days of the date of the detention:
date of importation
port of entry
description of merchandise
quantity involved and
country of origin of the merchandise
At any time following presentation of the merchandise for Customs examination but prior to seizure, Customs may provide a sample of the merchandise to the intellectual property right owner. The intellectual property right owner is required to file a bond with Customs in order to receive a sample.
Where merchandise is seized as bearing a counterfeit mark or is seized as clearly piratical of a registered copyright, Customs will disclose to the intellectual property right owner the following information, if available, within 30 business days of the date of the seizure notice:
date of importation
port of entry
description of merchandise
quantity involved
name and address of manufacturer
country of origin of merchandise
name and address of exporter and
name and address of importer
At any time following seizure of the merchandise, Customs may also provide a sample of the merchandise to the intellectual property right owner. To obtain a sample, the intellectual property right owner must furnish Customs a bond in the form and amount specified by the port director, but not less than $100, conditioned to hold harmless the United States, its officers and employees, and the importer or owner of the imported merchandise harmless from any loss or damage resulting from the furnishing of a sample by Customs to the intellectual property right owner.
Rodney D. Ryder

[A] Guide to Unfair Import Investigations in the US

The first step in obtaining import exclusion protection for trademarks, tradenames, and copyrights in the U.S. is to record registrations with the Customs and Border Protection service ("CBP"). Import exclusion protection for patented items, on the other hand, may be obtained only after the U.S. International Trade Commission has completed an "Unfair Import Investigation" and recorded its own "exclusion order" with CBP. In essence, so-called "Section 337 investigations" are administrative proceedings before the U.S. International Trade Commission to determine whether the Customs Service should be directed to excluded infringing goods from importation into the U.S. Most trademark and copyright infringing imports can be stopped by working directly with the Custom Service, without having to obtain an exclusion order from the ITC, as discussed here.
Consequently, most Section 337 investigations involve patent infringement allegations.The law and administrative procedures for these investigations are very similar to the "civil procedures" that are used to decide patent infringement allegations in the federal courts. However, parties to these investigations include "complainants," "respondents," and the ITC "staff" attorney representing the public interest. Section 337 investigation also tend to proceed more quickly than civil lawsuits.Following an evidentiary hearing, the Administrative Law Judge (or "ALJ") will issue an "initial determination" on all issues related to violations of section 337, usually within about 10 months from when the complaint was filed. The Commission may then review, adopt, modify, or reverse the ALJ's decision. If the Commission does not review the initial determination, it becomes the ITC's decision. You should also know that the ITC is authorized to grant only import exclusion orders, and cease and desist orders. Money damages are not awarded to the prevailing party. ITC orders are effective when issued and become final 60 days after issuance unless disapproved for policy reasons by the President of the United States within that 60-day period. Appeals of ITC determinations may be taken to the U.S. Court of Appeals for the Federal Circuit. Violators of ITC section 337 orders are liable for civil penalties of up to $100,000 a day or twice the value of the imported articles, payable to the government.
The cost of a Section 337 action is generally the same as an infringement action before the federal courts. However, since most Section 337 investigations are typically completed within twelve months, those cost can be compressed into a relatively short period. Furthermore, the ITC's rules require such detailed complaints that the initial preparations can cost $10,000 - $20,000, or more.
A copy of my June 2002 APLF Roundtable presentation on "Unfair Import Investigations at the U.S. International Trade Commission" is available on the Internet via the Association of Patent Law Firms at Official information on "Understanding Investigations of Intellectual Property Infringement and Other Unfair Practices in Import Trade" is available from the ITC at, including "Answers to Frequently Asked Questions" at "
Information on European "border measures" for import exclusion is available here and here.
Rodney D. Ryder

Thursday, April 27, 2006

A Lesson in Poor Trademark Specimens

According to the U.S. Trademark Trial and Appeal Board in In re Aerospace Optics, Inc., Serial No. 76171288 (April 12, 2006), the SPECTRUM trademark appearing in two separate locations inside applicant’s point-of-purchase display brochure that was submitted as a trademark specimen failed to function as a trademark for illuminated pushbutton switches:
According to the opinion by Administrative Trademark Judge Kuhlke, In view of the meaning of SPECTRUM, "a continuum of color formed when a beam of white light is dispersed (as by passage through a prism) so that its component wavelengths are arranged in order,"2 and the context of its use, i.e., among several terms identifying features of the goods, (e.g., "spectrum of colors"), prospective purchasers would not view this word as a source identifier, but rather as part of the text listing the features of the product. As used by applicant, and as likely perceived by purchasers and prospective purchasers, the applied-for mark merely informs the potential purchaser of an aspect of the goods, namely, the multiple color feature. The coloring and font are not sufficient to imbue this term, as used, with source-identifying significance or to set it apart from the other informational wording. See In re Brass-Craft, supra. Moreover, as noted by the examining attorney, the colors in the mark merely manifest and emphasize the information the word conveys.

The use of the TM symbol on the inner flap location of one specimen does not change the commercial impression of the applied-for mark, which as used in the specimen only informs the consumer of the features of the pushbutton switches. The "mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term a trademark." In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (THINK GREEN failed to function as a mark for, inter alia, mailing and shipping cardboard boxes). See also In re Volvo, supra (DRIVE SAFELY failed to function as a mark for automobiles and structural parts therefor); In re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN THE USA failed to function as a mark for electric shavers and parts thereof). Applicant attempts to distinguish these cases by noting that the subject matter was deemed unregistrable in each case due to the nature of the mark itself whereas, in this case, the mark contains both "informational aspects" and "aspects that communicate to purchasers that the mark is a trademark" and serves "both as a trademark (source/quality indicator) AND as an informational device."

However, while the applied-for mark has not been refused as descriptive under Section 2(e)(1) of the Trademark Act, the fact that the applied-for mark may be registrable if it were used in a different context is not the issue. Rather, the applied-for mark, as used, would not be perceived as a trademark, and the mere addition of the trademark symbol is not sufficient to transform the non-trademark use into trademark use. The term fails to function as a mark not only because of the informational nature of the term, but also because of the way it appears on the specimen. The manner in which the applied-for mark is used on the specimens presents the applied-for mark as part of the product features and not as a trademark. Even an inherently distinctive designation is not a trademark if it is not used in a trademark manner. See McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition §3.3 (4th ed. database updated 2005); see also In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT! held not merely descriptive, but refusal based on failure to function as a service mark affirmed).

In summary, the manner in which the applied-for mark is being used does not support a finding that potential consumers would perceive it as a trademark. As used in the specimens of record, the applied-for mark does not convey the commercial impression of a mark identifying the source of origin of applicant’s goods. This conclusion is not altered by the fact that a TM symbol is displayed in one location in one of applicant’s brochures adjacent to the word SPECTRUM. See In re B.C. Switzer & Co., 211 USPQ 644 (TTAB 1981).
Rodney D. Ryder

Law Wire - World Intellectual Property Day

Law Wire on World Intellectual Property Day.
WIPO Director General Dr Kamal Idris, according to the WIPO press release, has emphasised the limitless value of ideas in inspiring the work of inventors and creators from which we all ultimately benefit.
He adds:
"Ideas shape our world. They are the raw materials on which our future prosperity and heritage depend. This is why it is important to provide environments in which innovative ideas are encouraged and rewarded. This is why intellectual property exists".
Law Wire has recently been contemplating Article 2 of the WIPO Copyright Treaty ("Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such") has a teeny weeny problem with this: intellectual property law doesn't actually protect ideas. Or has he missed something? Rodney says: here's a little competition: the first person to let her know if there's anything in the text of any international IP treaty or convention administered by WIPO that suggests that ideas are indeed protectable wins a bottle of bubbly with which to drink the health of IP for another year.But here's an IDEA which is firmly protected by copyright ... and here's another one.
Rodney D. Ryder

Tuesday, April 25, 2006

World Intellectual Property Day - The Power of Ideas [It Starts with an Idea]

World IP Day 2006 Focuses on the Power of Ideas

The power of ideas as the seedbed for innovation and creativity is theme of this year’s World Intellectual Property (IP) Day on April 26, 2006, a press release by the World Intellectual Property Organization (WIPO) stated.

In his message to mark the sixth World IP Day, Dr. Kamil Idris, WIPO director, emphasized on the limitless value of ideas in inspiring the work of inventors and creators from which we all ultimately benefit. He said that the "World Intellectual Property Day is an occasion to reflect on how human creativity and innovation help provide a better world for everyone".
Dr. Idris released the following message:
“World Intellectual Property Day is an opportunity to encourage people to think about the role played by intellectual property in everyday life, and about its importance in stimulating and safeguarding innovation and creativity. This year we celebrate the starting point of all intellectual property, the seeds from which all innovations and creative works grow – ideas.
Mankind’s inexhaustible capacity for producing ideas makes us unique. Yet this extraordinary ability is often taken for granted. We hardly notice the countless ideas we generate every day, or how much of what we value is the fruit of others’ ideas: labor-saving inventions, pleasing designs, life-saving technologies.
Ideas shape our world. They are the raw materials on which our future prosperity and heritage depend. This is why it is important to provide environments in which innovative ideas are encouraged and rewarded. This is why intellectual property exists.
From the words, music and images which move us, to the brands which attract us; from the bicycle to bio-fuel; from the microchip to mobile phone – it all starts with an idea.
WIPO member states decided, in 2000, to designate a World Intellectual Property Day to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe. April 26 was chosen as this was the date on which the Convention establishing WIPO entered into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day on April 26 each year since its inception in 2001.
WIPO is committed to promoting an intellectual property culture in which there is broad-based understanding of the role and value of intellectual property. Through well-balanced IP systems and structures, WIPO seeks to help creators across the globe to generate economic value from their creations, and so to contribute to the social, cultural and economic advancement of their own societies and of the wider world.”
A list of activities organized by WIPO member states on the occasion of World Intellectual Property Day is available at
Rodney D. Ryder

Monday, April 24, 2006

Australia: Review of the relationship between trade marks and business names, company names and domain names

The Australian Advisory Council on Intellectual Property recently released a report on the issue of the relationship between TM and business names, company names and domain names.To the Council, "the two most significant issues regarding domain names are:• bad faith registration of domain names, whereby one party deliberately and unlawfully benefits by registering a domain name containing the other’s trade mark, business name or company name; and• a public misconception that domain name registrars check for existing prior rights, such as registered trade marks, when registering a domain name."It writes that "The Australian domain name industry has an important role to play in alerting domain name registrants of the possibility of infringement and of the need to undertake clearance searches before selecting a usable domain name."
The evidence collected for the report "suggests that bad faith registration of domain names has increased in recent years" but the Council "is satisfied the UDRP and auDRP have been successful at dealing with the problem."Though this report focuses on the Australian situation, it also takes into account the UK, US, Canada, New Zealand, China and Hong Kong experiences.
Rodney D. Ryder

Patent Cases - Top Ten [United States]

"Not since the Supreme Court granted certiorari in seven patent cases in 1965 has there been as much patent law activity at the Court as today," writes Professor Wegner in the prelude to his update on the Top Ten Supreme Court Patent Cases. "In all likelihood four or more cases in the Top Ten list will be heard or will have certiorari granted this term:"
The Metabolite Patent-Eligibility Case: Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., Supreme Court No. 04­607: Briefing schedule through January 2005; hearing February-April 2006; decision by June 2006.
The Schering-Plough Reverse Payments Antitrust Case: Federal Trade Comm’n v. Schering-Plough Corp., Supreme Court No. 05­273: Order outstanding asking the Solicitor General for the opinion of the United States whether to grant certiorari. The recent 2005 Second Circuit Tamoxifen opinion adds fuel to the certiorari fire.
The KSR Obviousness Case: KSR Intern. Co. v. Teleflex Inc., Supreme Court No. 04-1350: Order outstanding asking the Solicitor General for the opinion of the United States whether to grant certiorari.
The eBay Injunctive Relief Case: eBay, Inc. v. MercExchange, LLC, Supreme Court No. 05-130: Already thrice scheduled for a conference, a decision whether to grant certiorari may be forthcoming as early as November 14, 2005.
The Illinois Tool Market Share Case: Illinois Tool Works, Inc. v. Independent Ink, Inc., Supreme Court No. 04-1329: Argument is scheduled for November 29, 2005; a decision is likely by the end of January 2006 (but in any event by June 2006).
Unitherm Sufficiency of the Evidence Case: Unitherm Food Systems, Inc. v. Swift Eckrich, Inc., Supreme Court No. 04-597: A decision is expected before the end of 2005. (Oral argument took place on November 2, 2005).
SmithKline Paroxetine Case: SmithKline Beecham Corp. v. Apotex Corp., No. 05-489. Briefing stage for certiorari.
Phillips Claim .Construction Case: AWH Corp. v. Phillips, No. 05A292. Briefing stage for certiorari.
BlackBerry Extraterritoriality Case [future]: Research In Motion, Ltd. v. NTP, Inc., certiorari petition due January 5, 2006, opinion below, NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005).
Tamoxifen Reverse Payments Antitrust Case [future]: In re Tamoxifen Citrate Antitrust Litigation, __ F.3d __, 2005 WL 2l 864654 (2nd Cir. 2005)
Rodney D. Ryder

Foreign Patent File History is Prior Art [US]

In Mark Bruckelmyer v. Ground Heaters, (Fed. Cir., April 20, 2006), the court held that figures 3 and 4 of Canadian Patent 1,158,119 application were "printed publications" under 35 U.S.C. § 102(b) even though the application was not actually disseminated during the relevant prior art time frame and the figures were withdrawn before issuance of the patent.
According to Judge Lourie:
Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were"removed" from the application during prosecution, and thus a person of skill inthe art would not have looked past the ’119 patent in searching for the subjectmatter of the patents in suit. As a matter of undisputed fact, the ’119 patenteedid not physically remove figures 3 and 4 from the file wrapper, but merelycancelled the subject matter figures from the patent during prosecution. Thefigures were thus still in the file, although they did not appear in the issuedpatent. The declaration from Bruckelmyer’s Canadian patent law practitionerexplains that when subject matter is cancelled during prosecution a replacementpage may be put in front of the page containing the cancelled matter, but thepage containing the cancelled original matter still remains in the file wrapper.Moreover, for the reasons that we articulated above, it does not matter thatfigures 3 and 4 do not appear in the ’119 patent because no reasonable trier offact could find that there was not sufficient disclosure in the patent to allowone skilled in the art to locate the figures contained in the application.
In his dissent, Circuit Judge Linn noted that
It is not entirely sound to view the issued [Canadian] patent as a roadmap tothe underlying file history. . . . While it is commonplace for parties toexamine patent file histories for guidance on matters of claim interpretation,surrender, estoppel, disclaimer, or disavowal, researchers normally expect thetext of printed patents to correspond to and be coextensive with theapplications from which they have been issued. In that sense, the text of anissued patent does not generally serve to guide researchers to the file historyfor a more expansive disclosure of the described invention, and it certainlydoes not lead researchers to the file history for disclosure of subject matternot described in the issued text.”
Rodney D. Ryder

Friday, April 21, 2006

Patent Trolls - Strategic Responses

In their "Basic Framework for Effective Responses to Patent Trolls" Steven Gardner and E. Danielle Thompson Williams write that "in responding to a patent troll, it is important to: (a) know the business model and the patent troll’s current position on the time line of that model; (b) recognize the unique objectives of the patent troll; (c) identify the unique concerns of the patent troll; and (d) know your client (including its objectives, exposure, tolerance for risk, and view of litigation). . . . Often an effective response to a patent troll is one that increases its uncertainty, doubt, and fear such that the patent troll concludes that the best business decision is to end the accusation or to resolve the accusation with terms favorable to the accused company."Here are a few of the strategic responses and scenarios that they discuss in this regard:
Point Out Differences with Previously-Licensed Products.
Present Strong Prior Art Early.
Seek Another Venue; Explore a Stand Still Agreement.
Look For Ways Around the Most-Favored-Licensee Clause.
Use the Threat of a Very Interested Indemnitor.
Consider Fighting Tooth and Nail.
Search for and raise issues that require due diligence on the part of the patent troll’s attorneys
Consider whether your client is willing to agree to a license at a lower fee in exchange forallowing the patent troll publicize your client’s name as a licensee.
Consider counterclaims (patent infringement, inducement of patent infringement, unfairtrade practices, antitrust, etc.)
Consider acknowledging validity in exchange for a reduced license fee.
Consider whether the patent troll might be interested in the right to enforce your client’s patents.
Rodney D. Ryder

Copyright and Patent Law - the interface

In "What Copyright Teaches Patent Law About Fair Use: And Why Universities are Ignoring the Lesson" Professor Lorelei Ritchie de Larena writes that it is the "Paradox of the Patent Community," which provides a strong disincentive for for anyone to actually fight for a clear “fair use” doctrine in patent law:

This is due to the internally-conflicting interests of the largest players in the inventive community, who perform both research (i.e., use) and development (i.e., ownership) of technology. In copyright law there is a fairly clear line between the primary owners (Hollywood studios and publishing companies) and the primary infringers (high-tech companies, universities, and consumers). Not so in the patent community, where the primary patent owners (large companies and universities) are also the primary infringers, and are therefore loath to petition for a “fair use”doctrine that will benefit their research programs but potentially lower revenue for their licensing (and litigation) units.And universities are stuck in the middle. "As researchers, they want full and free access to patented technology owned by others," she writes. "As owners, however, universities are concerned that a research exemption could be construed to protect those who would infringe university patents as much as the reverse."
And, for patented technology which is not being practiced by the patent owner, or where some prongs of the fair use test are highly polarized, she also proposes a new Collective Rights Organization for patent owners:

In many cases, instead of the royalty- free license that impliedly is granted by a determination of “fair use,” it may be very appropriate to grant a paying, royalty-bearing compulsory license. This could be socially beneficial where a technology is not being brought to the market by the patentee or where transaction costs are very high for licensees or consumers, but where the patentee invested significantly in the patented technology. A compulsory license may also be appropriate in other situations where the “fair use” assessment is highly polarized in different prongs of the test (e.g., infringer is using technology purely for commercial reasons, but patentee is not otherwise commercializing it and has no plans to do so).

. . . A compulsory license scheme in United States patent law could be effectively administered by a Collective Rights Organization, as has successfully been done in copyright.211 In a CRO scheme, industry participants, rather than ex ante statutes or ex post court decisions, set the licensing rates. This makes the rates more likely to fit market conditions, and more easily adjustable with them. In the case of patent law, the very “Paradox of the Patent Community” means that the users are the owners, but this can be a real benefit in the CRO scheme, because it will act as an economic incentive to all participants. A CRO scheme could standardize the rules, the rates, and the situations where litigation (or preferably for most, arbitration), and even injunctions, become appropriate.

Besides, if you liked the Copyright Royalty Tribunal, the Copyright Royalty Arbitration Panel, and now the Copyright Royalty Board, you'll love the proposed Patent CRO. "Indeed, the idea has already been successfully implemented in sister-copyright law, the patent laws of internationaleconomic partners, and some areas within the current United States patent law," writes Professor de Larena.
Rodney D. Ryder

Intelectual Property - Size does matter!

In "Size Matters (or Should) in Copyright Law," Professor Justin Hughes explores how a series of court decisions are pulling copyright jurisprudence in a direction in which each coin valuation, medical procedure code, or parts numbering system is a copyrighted work. He argues that single words, numbers, and short phrases should be denied independent copyright protection, not because they always lack originality, but because they are never works.

When liability for copyright infringement boils down to copying a name, a couple of choice phrases, a slogan, or a small subset of numeric evaluations, copyright law is being dragged by clever lawyers into dark alleys where it should not go. These dark alleys threaten some of the most flourishing areas of recombinant culture—software programming, collage art, the cutting and pasting of snippets which is a wonder ofdigitization, criticism which requires significant quotation from the target of criticism—whether by a Ph.D. candidate or a blogger.
This lurking microwork protection is the result of our having used the originality requirement to justify copyright law’s prohibition against copying words and short phrases. The problem with small phrases is not that they always lack originality: The problem is that they are always too small. Existing case law gives us the material to develop, particularly for text works, an understanding of the minimum size or nature of a “work” that deserves to attract copyright protection.The adverse effects of using size in evaluating originality can also be seen in the current debate over just what is plagiarism. "Defining just where influence ends and plagiarism begins can be a difficult question," writes Scott McLemee. "Ralph Waldo Emerson, who wanted the American scholar to live in a state of radical originality, ended up conceding that 'all my best ideas were stolen by the ancients.'" Musicians know that all great composers steal; documentarian's lament over dissappearing history; and artists are plagued by intellectual property issues. Even technological contributions can be viewed as more of process involving every element of society, than the singular obsessions of lonely geniuses. It's no wonder that we are now seriously considering protection for "traditional knowledge" and "cultural expression."
According to Stuart P. Green, a professor of law at Louisiana State University at Baton Rouge, copyright law "protects a primarily economic interest that a copyright holder has in her work. . . whereas the rule against plagiarism protects a personal, or moral, interest." But just how far should we go to protect these non-economic interests? When Malcolm Gladwell described the plagiarism of his own work in a November 15 article for The New Yorker, he concluded that "In the worlds of academia and publishing, plagiarism has gone from being bad literary manners to something much closer to a crime. We have somehow decided that copying is never acceptable and the ethics of plagiarism have turned into the narcissism of small differences: because journalism cannot own up to its heavily derivative nature, it must enforce originality on the level of the sentence." Others have even gone so far as to suggest that if the phrase, "To promote the progress," in the U.S. Constitution means prioritizing people's access to writings and discoveries, then the rise of open source production and dissemination of content may now be demonstrating that the incentive justification for intellectual property just isn't true when the means of production and distribution are in the hands of individuals, without the need for significant capital contributions.Of course, most of us would like to see our works receive recognition, if not outright acknowledgement.
In the Talmud, notes Professor Green, "a person who reports something in the name of the one who said it brings redemption into the world." Rabbi, Joseph Telushkin explains the reasoning behind that text this way. "If a person presents as her own an intelligent observation that she learned from another, then it would seem that she did so only to impress everyone with how 'bright' she is. But if she cites the source from whom she learned this information, then it would seem that her motive was to deepen everyone's understanding. And a world in which people share information and insights to advance understanding, and not just to advance themselves, is one well on its way to redemption."
Rodney D. Ryder

Thursday, April 20, 2006

OHIM [OnLine Service Improvements]

New OHIM Internet Address
The new website address for the OHIM as of May 9, 2006 will be The OHIM says that it "is taking all the necessary steps to ensure that all of its services are accessible via its new Web address as of that date. Both the “old” and “new” OHIM web addresses will work to allow user-access to the same information for a “migration” period of 12 months from the launch of the new Web address."
Filing oppositions electronically
The OHIM will provide an electronic opposition form similar to the existing one for Community trade mark applications.MYPAGE users who have opted for e-communication will receive the first letters via their MYPAGE MailBox. This service is being tested externally in April.
B2B e-filing CTMThe objective of this service is to set up a system allowing the direct exchange of CTM applications from the IP management software used by the applicants and the OHIM systems. This tool will use a TM-XML ( format and offer a web service or FTP for the transmission of data. The OHIM has set up its system and the testing phase has started from 11/2005 with 6 users.
CTM consultation tool (CTM-ONLINE 2006)
The current CTM-ONLINE will be improved with enhanced information concerning renewal.This service should be available at beginning May 2006Payment by credit card (e-payment)Service is being tested and should be available in May 2006Search for a representative for CTM or RCD procedures (FindRep):The current CTM-AGENT databasewill be improved offering enhanced search criteria. MYPAGE users will have the possibility to change personal details directly. This service is in developmentTrade mark classification help tool (EUROCLASS)The OHIM is working together with the EU IP Offices to develop an online service to help with the classification of goods and services. This tool will contain all the accepted classification terms of the participating offices. This service is in its pilot phase with the first volunteer offices (UKPTO, Swedish Office). The first pilot should be available in September 2006.Electronic filing of RCD applicationsThe current RCD e-filing service will be significantly improved with a view to solving the problem of large attachments, among other things. RCD e-filing will also be accessible through MYPAGE and changes will be made to harmonise it with CTM e-filing. The OHIM is currently defining the scope of the service.
Online access to CTM filesCTM file documents will be viewable through CTM-ONLINE. A restricted access is applied to documents of unpublished CTM. Mechanism have been put in place to ensure confidentiality of documents indicated as such. MYPAGE users will also have the possibility to request inspection of files electronically. This service is in development following initial delays.
Rodney D. Ryder

Tuesday, April 18, 2006

US advised to promote open standards, source, innovation

A business- and university-led public policy group has issued a downloadable 72-page report examining open standards, open source software, and "open innovation." The report concludes that openness should be promoted as a matter of public policy, in order to foster innovation and economic growth in the U.S. and world economies.
The report was released by the Committee for Economic Development (CED), a non-profit, non-partisan public policy research organization comprised of about 200 senior corporate executives and university leaders. The report resulted from a project within CED's Digital Connections Council (DCC), which is chaired by Paul M. Horn, SVP of research at IBM. The project was directed by Elliot Maxwell, described as "a key advisor on digital economy issues in the Clinton Administration."The CED report concludes that intellectual property (IP) law and business practices designed for the trade of physical goods threaten economic development and innovation in digital information product markets such as software. It recommends several specific steps aimed at helping public policy makers promote openness, innovation, and economic growth:

Open Standards
Governments should "encourage the development and use of open standards, through processes as open to participation and contribution as possible"
The results of government-supported research should be readily available for inclusion in open standards
Governments should create incentives for early disclosure of intellectual property rights affecting open standards, because historically, companies have waited, in order to maximize damage claims

Open Source Software
Governments should not mandate any particular license, such as requiring open source software only; however...
No citizen should be required to use the hardware or software of any particular vendor
International procurements should also supprt inter-operability requirements
Open Innovation (such as 'peer production' systems like WikiPedia and eBay user ratings)
To foster open innovation, federally funded, non-classified research should be widely disseminated, following the example of the NIH (National Institute of Health)
"Any legislation or regulation regarding intellectual property rights [should be] weighed with a presumption against the granting of new rights ... because of the benefits to society of further innovation through greater access to technology."
The NSF (National Science Foundation) should fund research into "alternative compensation methods, similar to those created to facilitate the growth of radio, to reward creators of digital information products"The full 72-page CED report is available for download, here (PDF download). A brief summary, on which this story was largely based, is also available, here.
Rodney D. Ryder

Monday, April 17, 2006


The Chubb Group of Insurance Companies has published a new Intellectual Property, Privacy and Communications Risk Management Handbook, "designed to assist companies of any size in evaluating and managing their risk, focusing on copyrighted content, trademarks, trade secrets, patents, privacy and defamation."

According to the Chubb press release announcing the book:
"Intellectual property is no longer just a concern for the large, multinational companies," says Reed. "Today, any company can become the accused in an intellectual property lawsuit. Small- to mid-size firms that find themselves embroiled in lawsuits with larger, more financially strong adversaries may be especially disadvantaged. The best defense is a good offense. That?s why establishing a strong risk management program is critical for all companies in today?s market. Chubb?s new handbook can help management better understand the strategic implications of intellectual property and privacy to the overall business enterprise."
Among the steps management and risk managers can take:
Identify the dynamics of the company's particular market. What are the litigation trends in the industry and what is the potential impact on the company?
Determine the company?s risk quotient. How much legal, regulatory and operational risk can the company manage?
Mitigate the risk. Look for better ways to recognize and manage the company?s intellectual property exposures. Know the strengths and weaknesses of the competition's intellectual property assets. Educate and train employees, vendors and contractors on proper procedures for handling intellectual property.
Check the company's insurance protection. Don?t assume that its insurance program automatically protects against intellectual property, privacy and communications risk. Insurance may be scattered among errors & omissions, general liability and directors & officers policies and may only offer limited protection.
In order to obtain a copy of the handbook, you must contact one of Chubb's agents or brokers through their Find An Agent site.
With respect to the "best defense is good offense" point -- this is eerily similar to a recent article in Eweek describing Microsoft's recent patenting activities relating to its next OS codenamed "Longhorn". According to the writer, Microsft's elevated patent activities for Longhorn indicate a desire to make interoperability with open source platforms a non-starter.
But is Microsoft's strategy so Machiavellian? According to the Chris Pratley, a Microsoft employee who blogs here, Microsoft's new patenting stragetgy is a necessary defensive move:
At Microsoft, we used to pay little attention to patents - we would just make new things, and that would be it. Then we started getting worried - other big competitors (much bigger than we were at the time) had been patenting their inventions for some years, and it made us vulnerable. One of these big companies could dig through their patent portfolio, find something close to what we had done, then sue us, and we would have to go through an elaborate defense and possibly lose. So Microsoft did what most big companies do, which is start to build what is called a "defensive" patent portfolio. So if a big company tried to sue us, we could find something in our portfolio they were afoul of, and counter-sue. In the cold war days, this strategy was called "mutual assured destruction", and since it was intolerable for all parties to engage, it resulted in a state called "detente", or "standoff". This is what you see today for the most part in lots of industries. [thanks to Patently Obvious for the pointer & link]
Rodney D. Ryder

Sunday, April 16, 2006

U.S. Announces Outcome on IPR Requests to China

On April 11, 2006, U.S. Secretary of Commerce Carlos Gutierrez, United States Trade Ambassador Rob Portman and U.S. Secretary of Agriculture Mike Johanns met with Vice Premier Wu Yi for the 17th annual senior-level meeting of the Joint Commission on Commerce and Trade (JCCT). Thanks to the IPCentral Weblog for pointing to the U.S.-China Joint Commission on Commerce and Trade (JCCT) announcement entitled "Outcomes on U.S. Requests" for April 11, 2006:
In support of its commitment to significantly reduce intellectual property rights (IPR) infringement levels, China agreed to the following specific actions.

• Pirated Optical Disks (ODs). The Chinese government has taken action against 14 factories producing illegal optical disks and has pledged to step up enforcement in this important area to combat copyright piracy of films, music, and software. China and the U.S. will also explore new ways to strengthen cooperation in this area.• Requirements to Install Legitimate Software. The Chinese government has issued a notice requiring the pre-loading of legal operating system software on all computers produced or imported into China , as well as a notice requiring government agencies to purchase computers with pre-loaded software. In line with these requirements, several Chinese computer manufacturers have recently signed agreements to purchase U.S. operating system software.• Ensuring Use of Legal Software in Government and Enterprises. In addition to ongoing efforts to ensure use of legalized software at all levels of the government, China has launched efforts to ensure the legalization of software used in Chinese enterprises. In addition, China has agreed to discuss U.S. proposals regarding government and enterprise software asset management in the JCCT IPR Working Group.• Rid Consumer Markets of Infringing Goods. The Chinese government has agreed to intensify its efforts to ensure that public markets in China are free of infringing products and has announced enforcement actions in several major cities.• Individual Cases. The Chinese government agreed to help ensure that individual IPR cases raised by the U.S. government with China will be vigorously pursued.• Action Plan: China has announced a broad action plan to improve enforcement of IP rights, including steps in the areas of enforcement, legislation and education. Strongly implemented, these steps could lead to significant improvement in the IP situation in China. The plenary session of the 17th U.S.-China Joint Commission on Commerce and Trade (JCCT) was held in Washington, DC on April 11, 2006. Established in 1983, the JCCT is an annual government-to-government platform designed to develop and facilitate the U.S.-China commercial relationship. The U.S. uses the JCCT as a forum to identify and resolve problems and to expand trade opportunities.
Rodney D. Ryder

Friday, April 14, 2006

WTO Polarised on GI Extensions as EU System Grows

According to Tove Iren S. Gerhardsen writing for Intellectual Property Watch, there was no significant movement in members' positions during the April 13 World Trade Organization consultations on whether to extend geographical indication (GI) protection for wines and spirits to other products. Proponents want the higher level protection that wines and spirits currently enjoy under Article 23 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to also apply to other GI products, which currently have to be protected but only at the “regular” level under Article 22 of TRIPS. One participant reportedly said the discussions have become polarised with the European Union, Bulgaria, India, Sri Lanka and Switzerland speaking in favour of extension, and Argentina, Australia, Brazil, Canada, New Zealand and the United States opposing it.
At the same time, the Confederation of the Food and Drink Industries of the European Union (CIAA) released its annual report targeting the EU's geographical indications system as needing a "fundamental" review. CIAA is concerned that the system's credibility as a quality assurance scheme is being undermined by the vast number of applications for trademark protection under the system:
The EU instruments of Protected Denomination of Origin (PDO) and Protected Geographical Indication (PGI) protect a product's name and are based on specific quality standards and methods of production. Currently, almost 700 PDOs and PGIs have been registered in the EU.
More than 200 cases are still awaiting registration. There has been a rapid increase in the number of registered names and insufficientassurances concerning the specific requirements and characteristics of such products.

The large numbers of PGI and PDO products already registered, along withthe numerous cases still pending remain a matter of concern for the industry. Itmay make PDO and PGI products more commonplace. There is also a risk that PDO or PGI labelled foodstuffs will lose not only credibility, but also their comparative advantage.
Rodney D. Ryder

WIPO Patent Harmonization Effort Stalls Again

Member states of the World Intellectual Property Organization (WIPO) met at an informal session of the Standing Committee on the Law of Patents (SCP) in Geneva from April 10 to 12, 2006 to consider a work program for the Committee. The meeting ended with negotiators being unable to define a work programme for the next formal SCP meeting planned for later this year. That meeting now will not take place.According to the WIPO press release, "All delegations acknowledged the importance of all the issues raised by the different delegations, and several useful contributions and proposals were submitted with a view to bridging the differences between, on the one hand, those who wanted a larger number of issues to be addressed on an equal footing by the SCP and, on the other hand, those who expressed a preference for an approach limited to fewer issues.>"The outcome effectively grounds a long-standing push by the developed nations holding most of the world’s intellectual property to harmonise global patent systems through WIPO," writes William New in Intellectual Property Watch on April 12, 2006. "Some officials raised concern that the end of discussion on patent harmonisation could remove a bargaining chip for developing countries seeking major reform of WIPO toward development issues, and other policy changes related to protection of genetic resources and traditional knowledge."“It’s not like WIPO isn’t doing anything on patents,” Francis Gurry, WIPO Deputy Director General reportedly said. But the SCP meeting “was the work programme on the new issues.”
The matter will be referred back to the WIPO General Assembly at its meeting in September 2006. In the meantime, develeoped countries have already started moving patent harmonization talks outside of WIPO.“The United States intends to continue to pursue substantive patent law harmonisation discussions in a variety of fora, including in bilateral and plurilateral discussions,” USPTO spokesperson Brigid Quinn reportedly said. “The USPTO, while disappointed that WIPO member States could not agree on a work plan for the Standing Committee on Patents, is not particularly surprised by this result,” she said. “We think that the moratorium that was agreed upon may provide an opportunity for member states to reflect upon the benefits that patent harmonisation could bring for both developed and developing countries and permit the WIPO Secretariat to most effectively focus their limited resources on concrete projects rather than endless discussions.”
Rodney D. Ryder

China to Establish Local IPR Infringement Centers

According to Xinhua news service on April 11, 2006, "China has planned to set up special service centers in 50 cities this year to handle domestic complaints on the infringement of intellectual property rights (IPR)." The moove was announced on the same day that the Chinese "Iron Lady" Vice Premier Wu Yi and US Trade Representative Rob Portman met to discuss US-China trade and IPR, seeking to ease tensions before President Hu Jintao's visit to the US next week and preventing a WTO complaint by the US. Mark Drajem's story for Bloomberg is available here.

Wednesday, April 12, 2006

Intellectual Property as Strategy

There are more reasons now than ever for a company to pay attention to its intellectual property (IP).

Companies are discovering they can create new sources of revenue by selling or licensing their IP; and others -- like BlackBerry-maker Research In Motion Ltd. (RIM) -- learned the hard way that if you're not protecting your IP, somebody else may slip in ahead of you. In early March, RIM settled a lawsuit and agreed to pay the patent-holding company Network Technology Partners $612 million.

The practice of patent trolling magnifies a company's need to protect its IP portfolio. The strategic use of intellectual property boosts a company's bottom line and helps it maintain a competitive edge.

Law Wire suggests that a company know untapped areas in its industry ripe for competitive advantage. To do that, a company assesses its industry's patent landscape by searching patent databases. Law Wire believes a companies that addresses the development, prosecution, protection, liability avoidance, revenue generation and enforcement of its IP will create a successful IP program.

To start, Law Wire recommends doing an audit of the company's patents, copyrights, trademarks, proprietary information and so forth to see how IP is being used. If your company doesn't need it, maybe somebody else does.

According to the World Intellectual Property Group, royalty revenue from the licensing of patent rights increased from $15 billion in 1990 to more than $110 billion today. Constantly monitoring the IP landscape will help identify such opportunities. Often companies can strike cross-licensing agreements and "trade" IP with another company.

One company spending a tremendous amount of time and resources managing its IP portfolio is software giant Microsoft Corp.

Atlanta-based United Parcel Service Inc. uses its IP to create additional revenue streams as well. The $36 billion logistics company realized there was a growing market for access to the technologies it developed that enable the company to connect 2 million sellers with 6 million buyers every day. The realization led to the creation of UPS Supply Chain Solutions, UPS Consulting and UPS Professional Services, among others.

Law Wire reports that lending institutions are granting loans to companies like Inovis based on the company's future cash flow. The companies then use the capital to pay shareholders. Rather than hunting down capital in more traditional markets, the company can spend its time and resources growing its IP portfolio.
Rodney D. Ryder

Tuesday, April 11, 2006

Expanding the Innovation Horizon [IBM]

According to IBM's "Global CEO Study 2006," 76% of the 750 of CEOs and business leaders interviewed for the study ranked business partner and customer collaboration as top sources for new ideas. This greatly contrasts with internal R&D, which ranked eighth as a source for new ideas -- cited by only 14% of CEOs. However, only 51% say their organizations currently collaborate extensively.The study also suggests a link between collaboration and financial performance. Companies with higher revenue growth report using external sources significantly more than slower growers do. Outperformers used external sources 30% more than underperformers. Additionally, CEOs stated that the top benefits from collaboration with partners are: reduced costs, higher quality and customer satisfaction, access to skills and products, increased revenue, and access to new markets and customers.
On collaboration, one CEO said "We have at our disposal today a lot more capability and innovation in the marketplace of competitive dynamic suppliers than if we were to try to create on our own." Another commented that, "We need third parties as benchmarks and sparring partners. This also helps our staff to broaden their view." While another stated simply "If you think you have all of the answers internally, you are wrong."
In terms of driving innovation, CEOs stated that internal inhibitors were more significant than external hurdles. However, only 35% of CEOs were willing to take on these inhibitors by making innovation a CEO responsibility. The study reveals stark contrasts in varying geographies in terms of the responsibility for innovation. For example, in Japan, China, Korea and Eastern Europe, 47% of CEOs take strong ownership of the innovation agenda, versus 20% in India and the United States, where innovation management is widely distributed within the organization and externally via business partners and others.
Rodney D. Ryder

Yahoo Bans Use of Trademarks as Keywords for Comparative Advertising [US]

Law Wire reports that Yahoo has modified its editorial guidinelines with the following statement:
On March 1, 2006, Yahoo! Search Marketing will modify its editorial guidelines regarding the use of keywords containing trademarks. Previously, we allowed competitive advertising by allowing advertisers to bid on third-party trademarks if those advertisers offered detailed comparative information about the trademark owner's products or services in comparison to the competitive products and services that were offered or promoted on the advertiser's site.
Search Engine Watch has more on the story here.
Rodney D. Ryder

Monday, April 10, 2006

Patent Revocation [United Kingdom]

The UK Patents Court rendered a judgment in Ivax Pharmaceuticals (UK) Ltd v Chugai Seiyaku Kabushiki Kaisha [2006] EWHC 756 (Pat), conveniently posted here on BAILII.Chugai owned a patent for a method of producing a pharmaceutical preparation containing nicorandil, used for treating angina. Claim 1 of the patent described a method of producing a stable nicorandil preparation by mixing nicorandil with a saturated higher aliphatic acid or a saturated higher alcohol, both of which were solid at room temperatures. Ivax sought revocation on the ground of lack of inventive step.
Chugai denied that its patent was invalid but (i) nonetheless applied to amend it, saying that the proposed amendment was only intended to distinguish the invention further from the cited art and (ii) counterclaimed that Ivax was infringing. Ivax opposed the amendment on the ground that it added matter over the application as originally filed, contrary to section 76(3)(a) of the Patents Act 1977.
Kitchin J allowed Ivax's revocation claim.
* In considering whether a proposed amendment contained added matter, such matter would be regarded as additional unless it was clearly and unambiguously disclosed in the application as originally filed - even though that disclosure might be implicit.
* On the evidence, the unamended patent was invalid for lack of inventive step: Chugai's problem was that the claims were not limited to the technical advance that it had made, but instead covered work that would have been plainly technically obvious to the skilled person.
Law Wire is pleased to see how cautious the UK courts are when it comes to allowing applications to amend granted and litigated patents. They guard against the danger of moving the goalposts, while allowing amendments that help the players work out exactly where the goalposts are.
Rodney D. Ryder

PCT Updates

EPO Search Fee IncreaseThe amount of the search fee for the EPO to act as the International Searching Authority will increase to $1925, effective April 1, 2006. The revised PCT Fee Schedule will be posted at
Certain Rules, Forms, PublicationsPCT Rule 4.9(b) was amended effective April 1, 2006. Germany, Japan, Republic of Korea, and Russian Federation have notified the IB that Rule 4.9(b) shall apply in respect to the designation of their country. Consequently, the new Request form (April 2006 version) includes a revised Box V to allow applicants to exclude the designations of Japan, Republic of Korea, Russian Federation, and/or Germany.PCT Rule 48.2 has been amended to provide that Rule 4.17 declarations will be published with the international application. This change applies to international applications published on or after April 1, 2006.
International publication of international applications filed under the PCT, any republications of previously published international applications, and the PCT Gazette will be published wholly in electronic form. This change applies to the publications and issues of the Gazette published on or after April 1, 2006 and are available on WIPO Internet site
PCT Time Limit CalculatorWIPO has made available a web-based PCT Time Limit Calculator for assisting applicants in the computing of essential PCT time limits and full explanations of all the time limits. The Calculator is available free of charge on WIPO Internet site
Rodney D. Ryder

Punkah Pulling Machine [Indian Patent - 1856]

ON February 28, 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures". On March 3, 1856, a civil engineer, George Alfred DePenning of 7, Grant's Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention — "An Efficient Punkah Pulling Machine".
On September 2DePenning, submitted the Specifications for his invention along with drawings to illustrate its working. These were accepted and the invention was granted the first ever Intellectual Property protection in India. DePenning, submitted petitions for two more inventions that same year — No. 2 and No. 4 of 1856 under the Act and in the years to follow several patents were granted by the Calcutta Patent Office to this prodigious inventor.
Having secured his place in Indian history, George Alfred DePenning could well have rested. But he did not. The entrepreneur in him saw other inventors struggling with the process involved in patenting new inventions and he saw the possibility of representing them as a Patent Agent.

Rodney D. Ryder

Sunday, April 09, 2006

Unmasking an Anonymous Blogger

When does it make sense to spend the time and expense necessary to determine the identity of an anonymous blogger who is damaging the company?

This question is becoming increasingly important with the proliferation of blogs and Web postings for corporate criticism -- from to And whether companies and their in-house counsel pursue actions against bloggers in these cases involves more than the usual assessment of opportunity costs and the pure business interests of the company. There are limits to the rights of companies to compel an Internet Service Provider (ISP) to reveal the name of its customer, particularly when the ISP customer wishes to remain anonymous. This article explores what the courts are requiring companies to show before they will call for an ISP to divulge a blogger's identity and provides some guidelines in evaluating whether to pursue such a strategy.

Usually, these disputes arise from an anonymous Web posting or Web log (blog) including damaging comments about a company. The company, in an effort to stem the ill effects of the comments, particularly if they are false, sues the ISP to determine the blogger's identity. The ISP declines to identify the blogger either because of an internal policy or a demand or expectation of privacy by the blogger.

Indeed, contracts between ISP and bloggers typically include language obligating the ISP to make certain efforts to maintain the confidentiality of the blogger's identity. Under federal law, an ISP is required to notify a blogger if there has been a request for his identity. A court is then asked to consider compelling the ISP to unmask the blogger, either because an ISP files suit asking for such relief or a blogger files a John Doe suit to maintain his anonyminity.
Besides a desire to silence the company critic, other circumstances can instigate this kind of dispute. There have been reported decisions involving disgruntled or former employees seeking retribution, who spread rumors about a company on the Internet to induce a rise or fall in the stock price and then take advantage of the trading activity. Bloggers have also used anonymous postings to infringe on companies' intellectual property. What is a company to do?
In attempting to maintain their anonymity, bloggers have claimed protection under the First Amendment. There is a rich history in the United States of protecting anonymous free speech. Long before the days of the Web and blogging, Alexander Hamilton and Thomas Jefferson, among many others, frequently used pseudonyms in authoring various papers assailing their political opponents. More recently, the Supreme Court of the United States in Talley v. California, 362 U.S. 60 (1960) struck down a local ordinance that required the distributor of handbills to disclose the author's identity.
Of course, certain speech, like libel and defamation, is not protected. Moreover, an employer has some interest in protecting against the dissemination of certain other forms of speech, for example trade secrets and confidential proprietary information.
In addressing this delicate balance between protected and unprotected speech, the Supreme Court has expressed a concern for strike suits by monied parties seeking to quell criticism. See, e.g., Bradley v. American Constitutional Law Foundation, Inc., 525 U.S. 182 (1999). Furthermore. the monied parties are usually engaged in some expedited proceeding where one party is seeking some form of equitable relief. Here, the appellate courts are forced to review a limited record, not one where the parties have had a chance to explore all relevant evidence that supports their respective positions.
A number of courts have rushed to articulate a new set of standards to delineate the scope of discovery to determine the identity of anonymous bloggers. At times, the courts rulings have been described as "outcome determinative" -- when a court comes to decision as to the case's outcome and backs into its rationale for the result. Moreover, the results have not been consistent -- leaving in-house counsel to navigate among jurisdictions and determine which one is the friendliest in granting the relief they seek.
Under what circumstances can a company learn the identity of an anonymous blogger who disparages the company or its products or services, recognizing there is a First Amendment right to anonymous free speech? The rulings are conflicting.
Two decisions in 1999 and 2001 were the first to enunciate standards for the trial court's analysis in this arena. In Columbia Ins. Co. v., 185 F.R.D. 573 (N.D. Cal. 1999), the United States District Court for the Northern District of California, in a trademark infringement action, set forth safeguards that a plaintiff (company) must meet prior to granting discovery of the blogger's identity. The plaintiff must: 1) identify the target with sufficient specificity to establish the court's jurisdiction; 2) demonstrate prior efforts to locate the target; 3) demonstrate that it can withstand a motion to dismiss; and 4) explain what specific discovery it wants and why it will identify the target. The "Motion to Dismiss" standard is a fairly low benchmark, requiring the company seeking disclosure merely to plead facts necessary to succeed in its claim.
Two years later, in Dendrite Int'l, Inc. v. Doe, 775 A.2d 756 (N.J. Super. Ct., App. Div. 2001) a case involving two former employees who published critical comments concerning certain business practices of the company, the New Jersey Superior Court required: 1) notice to the target and an opportunity for the target to be heard; 2) fact specific pleadings; 3) a hearing to determine whether the plaintiff could survive a motion to dismiss and could set forth a prima facie claim with supporting evidence; and 4) assuming plaintiff survives the third hurdle, balancing the defendant's First Amendment rights against the strength of plaintiff's prima facie claim.
These two standards, i.e., "motion to dismiss" and "summary judgment," seem to have set forth the parameters of the debate. Other courts have since worked to elaborate or refine these standards.
In Doe v. Cahill, 884 A.2d 451 (Del. 2005), for example, the Delaware Supreme Court considered what a plaintiff must show in order to obtain a subpoena requiring an Internet service provider to disclose who posted anonymous comments about a politician on the Internet. After considering the First Amendment implications of various standards articulated by other courts, the Delaware Supreme Court, like the New Jersey Superior Court, held that a plaintiff must make a prima facie showing, sufficient to withstand a motion for summary judgment. After noting the long history of First Amendment protection for anonymous speech, the Delaware Supreme Court observed that the First Amendment did not protect defamatory or libelous speech. While it found that it had to construct a test that would protect the right to anonymous speech, the court would not extend First Amendment protection into new areas. Indicating that many "silly" libel cases can survive a motion to dismiss, the court decided that disclosing an anonymous Internet poster's identity -- any time a plaintiff could state a claim under Delaware's notice pleading rules -- would unduly burden the right to speak anonymously.
In Apple Computer, Inc. v. Doe 1, No. 1-04-CV-032178, 2005 WL 578641 (Cal. Super. Ct. March 11, 2005), the Superior Court of California ordered an ISP to identify people accused of misappropriating Apple Computer's trade secrets by leaking confidential information about Apple products to or through Web sites. Apple filed a complaint against a group of unnamed individuals and entities that allegedly leaked trade secrets about new Apple products to several online Web sites, including AppleInsider and PowerPage. According to Apple, the information could have only been obtained from Apple employees who breached company confidentiality agreements. Apple sought the identities of the source(s) for this information, and subpoenaed Nfox, PowerPage's e-mail service provider, for e-mail messages believed to identify names. Claiming that they were "journalists," and that the First Amendment and the California reporter's shield law allowed them to protect the confidentiality of their sources, three individuals moved for a protective order to block Apple's subpoena. Noting that the California legislature had not carved out any exception to these statutes for journalists, Web bloggers or anyone else, the court agreed with Apple, and denied the motion for a protective order. In deciding to enforce Apple's subpoena, the court reasoned that California's civil and criminal statutes prohibiting the misappropriation of trade secrets reflect the state's commitment to the protection of proprietary business information. Keeping this information secret is essential to the future of technology and innovation, and preserving this right outweighs any journalistic privilege.
The Pennsylvania Supreme Court has indicated that it might consider a balancing test in Melvin v. Doe, 836 A.2d 42 (Pa. 2003). In Melvin, a former state judge sought the identity of an Internet blogger who accused her of illegal lobbying. The case was decided on procedural grounds but a concurring opinion suggested that a test balancing the First Amendment right to anonymous speech with the right to address unprotected speech should be developed.
In Klehr Harrison Harvey y Branzberg & Ellers v. JPA Development, Inc., (Philadelphia Court of Common Pleas 2006) (Judge Sheppard), the court considered whether a Web site operator was required to turn over the names of anonymous authors of comments that allegedly defamed a Philadelphia law firm engaged in a contentious lawsuit. After reviewing the Dendrite and Doe v. Cahill decisions, the court found that a new set of rules or guidelines woulddo more harm than good. It observed that Rule 4011 of the Pennsylvania Rules of Civil Procedure already provided a mechanism to resolve the dispute. Under that rule, a defendant could seek a protective order for discovery sought in "bad faith" or which would cause "unreasonable annoyance, embarrassment, oppression, burden or expense." The court, however, concluded that the speech involved was defamation per se and from that found the Internet posting was not protected speech -- making his opinion, in some sense, outcome determinative. The court did, however, review current commentary on the issue and suggested that the balancing of interests utilized by other courts -- and recommended by the Melvin court -- would emerge as controlling precedent.
If identifying an anonymous blogger becomes necessary, investigation is a required prerequisite to determine the nature of the postings, and to place them in context of your business. For example, consider the following:
Who would have access to the information posted?
When would the information have been available to the blogger?
Can the company pinpoint potential targets because of the nature, content and accuracy/noticeable inaccuracies of the information disclosed, use of time sensitive information, or other specifically unique aspects that would "fingerprint" the information and allow the company to narrow the focus of its search for the author?
Preparation is also key. Before preparing pleadings to file in court, a company should draft affidavits with accompanying documents to describe the nature of the postings and why the postings do not deserve First Amendment protection, be it related to arguments of fraud, anti-competitive conduct, trade secrecy, violation of confidentiality agreements or other hallmarks of unprotected speech. Any pleading itself should conform to Federal Rule of Civil Procedure 9(b)'s requirements of specificity -- the who, what, when, where and why -- which provide sufficient detail to the court to tip the balancing in your favor.
Any decision to commence litigation to unmask a blogger who disparages the company on the Internet requires an informed judgment. If the goal is to intimidate authors of critical comments alone, it is likely any effort will be both expensive and ineffective. If, however, the company can frame the argument that attacks the speech as unprotected, and supports that argument with tangible evidence, it stands a much greater chance of silencing its critics.
Rodney D. Ryder

Patent Exclusions [United Kingdom]

Law Wire™ brings news of a patent decision of Mann J delivered today in Macrossan v Comptroller-General of Patents, Designs and Trade Marks [2006] EWHC 705 (Ch).Neil Macrossan applied for a patent for an automated method of acquiring the documents necessary to incorporate a company.
The Patent Office hearing officer described the would-be invention as
"The essence of the invention is that by means of posing questions to a user in a number of stages, enough information is gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages are determined from previous answers provided and the user's answers are stored in a database structure. This process is repeated until the user has provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates are also stored and the data processor is configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents may then be sent in an electronic form to the user for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user." The examiner rejected the application and the hearing officer concurred with him, finding that the application was for a computer programme, a business method and a mental act. Macrossan appealed.
The appeal was dismissed:
* The hearing officer had correctly recognised that any doubt as to patentability had to be resolved in favour of the applicant and had applied this principle to her decision.* The hearing officer had not failed to give her reasons;* Patent hearings are not inter partes proceedings and so the full bias rules do not apply. However, the hearing officer must employ principles of procedural fairness. The applicant has the right to know the points taken against him, but this does not prevent there from being internal Patent Office decisions on the issue of validity. There had been no breach of procedural fairness here and contrary to Macrossan’s submissions, the hearing officer’s decision did not suggest that she had received ‘secret submissions’ from the examiner. Moreover, he had not objected at the time of the hearing and even if he had had a right to object of fairness grounds at the time, any such right was now exhausted;
* The hearing officer was not obliged to look at the treatment of previous similar patents. The correct benchmark for the validity of patents is the statutory position. While it is desirable for like patents to be treated in a similar fashion, this is a result of their being treated the same way under the law, rather than of their being compared with each other;
* The invention was excluded from patentability as a mental act. This act of applying the criteria to arrive at the correctly documented conclusion was clearly a mental act and if the computer had not done the act, a human could have done so just as well;
* The claim was not excluded from protection as a way of doing business since it did not have the requisite level of abstraction. It was a tool that could be used as part of a business, rather than a way of conducting the entire business;
* The alleged invention was a computer programme as such. It was immaterial that the end result would be a physical thing i.e. a corporate document;
* The would-be invention did not make a technical contribution. It involved a technical process, but that process was a computer programme. It involved an automation, but what was automated was a mental act;
* Since the hearing officer had reached her decision, the law had moved on. Under the ‘new approach’ to the exclusions, the correct approach was to look at what fell within the exclusions and discount it, and then look at what fell outside the exclusions and to ask what these ‘leftovers’ contributed to the art and whether they had a technical effect. Here what was left contributed automation and efficiency, but what was automated and made more efficient was a mental act.
All that the supposed invention contributed was excluded from patentability and so could not save the application. Law Wire™ reckons that this is all pretty sensible. At the end of the day, the ‘invention’ was just doing what a person could have done. He notes the similarity of approach between the judge’s findings on procedural matter and the approach taken to such questions in other IP rights registries.
Rodney D. Ryder

Saturday, April 08, 2006

WHO Reports on Publis Health, Innovation, and IPRs

On April 3, 2006, the U.N. Commission on Intellectual Property Rights, Innovation and Public Health presented its report entitled "Public Health, Innovation and Intellectual Property Rights" to the World Health Organization.The 228-page report contains a set of 50-odd recommendations, of which only a handful are specific. According to the summary FAQ section,
Intellectual property rights are a general incentive provided by governments to promote innovation in all fields. In respect of public health, they are embedded in a set of other incentives which influence the pattern of innovation.
They need to be looked at as part of a bigger picture.In particular, because the market demand for diagnostics, vaccinesand medicines needed to address health problems mainly affecting developing countries is small and uncertain, the incentive effect of intellectual propertyrights may be limited or non-existent. Because intellectual property rightsmay not be an effective incentive in this area, there is a need for other incentives and financial mechanisms to be put in place and for collaborative efforts between different stakeholders.
Without access to the products of innovation, there can be no public health benefits. Defining the conditions by which products can be accessed is therefore an important aspect of the report. There has been significant progress in recent years, in particular initiatives taken by different stakeholders to promote innovation in health-care products e.g. increased funding by foundations and the formation of public-private partnerships for product development. This momentum for change is welcome but isinsufficient.More needs to be done. There are unsettled and debated issues in intellectual property for example the effectiveness of the recent amendment to TRIPS in increasing access to medicines in countries without manufacturing capacity, the impact of data exclusivity laws and the impact of intellectual property provisions in bilateral trade agreements.And there is a need to ensure enhanced financing on a sustainable basis of innovation and access and promote synergy between the different partners.Ultimately it is a responsibility that governments must accept if these objectives are to be achieved.It is appropriate that WHO should now take the lead in promoting a more sustainable and better-funded effort and addressing unresolved issues.WHO should accordingly develop a Global Plan of Action to secure enhanced and sustainable funding for developing and making accessible products to address diseases that disproportionately affect developing countries.

Initial reactions to the the report were mixed. According to Bridges Weekly Trade Digest, disagreements among the commission's ten members, who included representatives from industry, government, and academia, delayed publication of the report and resulted in a separate section containing individual commission members' assorted reservations about its content. Although the report explains to some extent why IP protections alone are not sufficient incentive to ensure the satisfaction of certain public health needs in developing countries, critics charge that it fails to provide a more comprehensive analysis of IP's effects on those needs -- and thus, to make more systemic policy recommendations. Others say that the study will encourage more concrete discussions on the topic.A competing report from the International Policy Network was released on March 28, 2006 with one of its lead authors concluding that When it comes to medicines for the diseases of poverty, governmentsare the main barriers to access and innovation. Intellectual property is animportant driver of innovation but in poor countries governments currentlyprevent people from accessing cheap, generic medicines that could cure many ofthe diseases they face. In such circumstance, what is the point of producing newdrugs for these diseases? Governments must remove the taxes, tariffs andregulations that prevent the sick from getting treatment.
Rodney D. Ryder