Wednesday, May 31, 2006

Pre-Grant Oppositions in India [Patents]

Pre-grant Opposition in the Product Patent Regime


A patent is a right secured through law on an invention that fulfils features of novelty, non-obviousness or inventive step and utility or industrial application. The process of obtaining a patent is called patent prosecution. The process entails preparing and filing a patent application through opposition to the issuance of a patent or the rejection or abandonment of the application. After examination of the application and acceptance of the specification of the invention, a patent application is published for opposition before the grant of a patent. This is also known as pre-grant opposition. The Patents Act 1970, as amended by the Patents (Amendment) Act 2005, specifies the grounds on which the application may be opposed. An application may be opposed on the following grounds:
wrongful obtention of the invention;
publication before the priority date of the claim;
the priority date of a claim in a specification being earlier than the application;
public knowledge or public use of the invention in India;
not being an invention or entitled to be patented under the act;
failure to disclose information required by the controller;
in the case of a convention application, failure to apply within 12 months of the date of the first application;
insufficient description of the invention in the complete specification;
wrongful mention of the source or geographical origin of biological material used for the invention; and
knowledge of the invention within the local or indigenous community in India.
Glivec Application
The opposition ground that the subject of any claim is not an invention or is not patentable under the act is often raised as an argument to combat a patent application, and it has become fertile ground for generic drug manufacturers to raise oppositions against the patent applications of pioneer drug manufacturers in the new product patent regime. For example, the pharmaceutical company Novartis was recently denied a patent in respect of its drug Glivec. Glivec is used to treat chronic myeloid leukaemia, a rare cancer. It fights the cancer by cutting off an enzyme that causes cells to become cancerous. A multiple pre-grant opposition against Novartis's product patent application (1602/MAS/1998) for a beta-crystal form of methanesulphonic acid salt, commercially called imatinib mesylate, was filed before the Chennai patents controller in regard to an invention entitled "crystal modification of AN phynyl-2-pyrimidineamine derivative, processes for its manufacture and use". The applicant claimed that the invention involved two improvements on the current invention: (i) the imatinib-free base had been chemically changed into a salt form; and (ii) a particular crystal form of the salt had been created through human intervention. Cipla Ltd, Ranbaxy Laboratories, Natco Pharma, Hetero Drugs and the Cancer Patients Aid Association India opposed this patent application under Section 3(d) of the Patents Act.

Relying on the technical expert's opinion with regard to the efficacy of the drug, as required under Section 3(d), the controller held that the patent application claimed only a new form of a known substance without making any significant improvements in efficacy, and hence constituted non-patentable subject matter.
Future Cases
Further pre-grant oppositions are in the pipeline. Oseltamivir, a drug which became popular as a result of the possible bird flu epidemic, was developed by Gilead Sciences and sold globally by Roche under the brand name Tamiflu. A pre-grant opposition application is now pending against it at the New Delhi Patent Office. The pre-grant opposition application was filed on the grounds that:
it is a known prior invention;
the claim is invalid; and
there is a lack of novelty or inventive steps.
Similarly, the Manipur Network of Positive People and the Indian Network of People have filed pre-grant oppositions at the Kolkata Patent Office against the anti-HIV drug Combivir, which is manufactured by GlaxoSmithKline, alleging that it is not a new formulation.
The denial of a patent to the drug Glivec through a pre-grant opposition, as well as the various imminent pre-grant oppositions, leads to the consideration of the most important aspect of the present product regime - patent eligibility.
Patent eligibility refers to the subject matter that is open to patenting - that is, a patent will be granted only when the invention does not fall into an excluded category. The Patents Act excludes the categories of inventions that are not eligible to be patented. It contains a non-exhaustive list of things that shall not be regarded as inventions - for example, the discovery of a new property to a known substance is not an invention under the act. Under the Patents (Amendment) Act 2005 the mere discovery of a new form of a known substance is not patentable subject matter unless there is an enhancement in the known efficacy of the substance. Mere discovery of any new property or new use of a known substance or the mere use of a known process, machine or apparatus is also excluded unless this use or process results in a new product or employs at least one new reactant. The 2005 act also includes an explanation that salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

Tuesday, May 30, 2006

Patent Drafting In the Wake of Phillips v. AWH

In a few months, we will know more about how the en banc Phillips v. AWH decision will be used precedentially. However, there are a few key points to take-home today.
1) The game is no longer about careful claim drafting — now, you must carefully draft the entire patent document.*
2) Be absolutely consistent between the claims and the specification. A stray modifier of a claim term in the specification can easily lead to unintended consequences.
3) Every word in the claims will be read in the context of the specification. Therefore the desired scope of every claim term must be fully supported in the specification.
4) Your initial reaction may be to make the ensure that the specification contains no limiting features. — That approach may not be the best. Your patent will be worthless if it attempts to cover the entire world of technology. Focused patents that stay within their bounds can be extremely powerful.
5) Give the courts 6–months to sort out some details. — But, set-up a docket reminder for January 15, 2006 for a review of all pending applications to (i) ensure that current claim terms are properly defined within the specification and (ii) whether any preemptive amendments are be in order.
* Of course, you were doing this already.
University of Pennsylvania law professor Polk Wagner has been writing extensively about claim construction for the past several years. His thoughtful comments and criticism of my tips are available here.
Profs Wagner and Joe Miller (Lewis & Clark) have proposed that patent drafters should “leave nothing to chance” and present a glossary of claim terms in the specification. This “clear thinking” approach would be helpful down the road when you are trying to spot infringers as well.

Patent Tips for a Small Business with Grand Ideas

Many small business owners have thought of becoming more aggressive in protecting their intellectual property rights. Although attorney's fees are always expensive, patent rights have become more important with each passing year. For many companies, a patent portfolio serves as a type of insurance that has small chance of having a great potential upside.
Here are a few tips for those getting their feet wet.
1. If someone at your company has an idea that may be patentable, act quickly. You can lose rights by disclosing the idea publicly or by offering it for sale before filing for a patent application. This type of disclosure can even occur before you make any engineering drawings or working models.
2. Try to keep records that help establish the novelty of the invention and the date of conception. This evidence may be important at a later date -- especially if there is any delay in filing for patent protection.
3. Before you hire a patent attorney, bone up on the subject -- Read the book “Patents and How to Get One.” It is very short and is a great book to read on your next business trip.
4. Retain a patent attorney to discuss your issues, to help you decide whether to file any patent applications, and then to help with the preparation and prosecution of the patent applications. Even if you are only filing a single patent application, the relationship with your patent attorney will likely last many years. Thus, it is important to find a patent attorney and law firm that you can trust and that are comfortable with. Get references.
5. When thinking about your potential inventions, remember that you can obtain patents on devices as well as methods. Methods, for example, may include methods of manufacturing an item, methods of doing business, methods of using a device, and process flow methods that describe the flow of data in a piece of software. (Merely a few examples.)
These tips are valid for almost any company that is starting down the road of patenting. However, every case is different. You should raise any concerns with your attorney.
Once you have applied for several patents, you will then begin to think about patent portfolio management, licensing and other forms of patent enforcement. However, that discussion is for another day.

Patent Rating [United States]

One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).
The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating: 1) Increase the number of claims. 2) Decrease the length of each claim. 3) Increase the length of the specification.4) File patent as a continuation or CIPs.5) Vary the type of claims. 6) Cite more references in your IDS.7) Cite non-patent references or foreign patents.8) Limit patent prosecution history.
FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.

Patent Litigation - Preventive Measures [US]

Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:
1) Thoroughly and diligently prosecute your patents.2) Learn about your competition and draft patents that cover competitor's technology.3) Identify competitor's patents early in your product development and consider design-arounds.

Structured Claim Drafting [Claim Drafting Tips]

Structured Claim Drafting
Stephen Becker has a useful technique for improving the quality of your claims. (Article).
1. List the elements sought to be protected and their interrelationships.2. Analyze each element asking:
a) Is the element necessary for preserving functionality? b) Is the element needed to distinguish over the prior art?c) Can the element be generalized in a way that retains claim novelty?d) Can elements be combined in a way that retains claim novelty?3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.According to Stephen:
Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.

Including Claims in Provisional Patent Applications? [Claim Drafting Tips]

An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications. According to the rules of practice, claims are not required in the provisional application. (MPEP 601). However, there are a few good reasons for including claims in the application.

In the wake of Phillips v. AWH, it has become even more important to ensure that a patent’s specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application. Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing. Russ argues that claims in the provisional can only hurt the applicant.
I disagree. The claims can be helpful in ensuring adequate disclosure and enablement — this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget. The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush. As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date. It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted — this is especially true in the fast-paced area of provisional applications. One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel. However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel — especially since the nonprovisional is newly-filed rather than simply an amended version.
An astute reader provided the following comment:
I include at least one extremely broad, never likely obtainable claim in a provisional. First under US law, it is true that a provisional need not include one in order to be considered valid. But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won't go foreign. I hear the arguments related to the effect of narrowing by amendment as creating PHE. In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE. Let's face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle. In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many. No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, "A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document." Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out. Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application. So if you present a very broad claim initially, you can amend narrower. But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader. It is for this reason you can include a "claim" that says something like, "I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration." or a "process to [...] comprising any process described, in any order, using any modality, ..."

Immoral Trademarks [FCUK!]

Law Wire promised to bring you further information about the UK Trade Mark Registry’s ruling in the FCUK revocation decision and lo and behold, here it is!French Connection holds the registered trade mark FCUK in relation to goods in various classes.
Mr Dennis Woodman applied for the mark to be invalidated for goods in Class 14 under s.47 of the UK Trade Marks Act 1994 on the ground that it was an immoral mark that was barred from registration under s.3(1)(f) of the TMA. He argued that that the FCUK mark was intended to be mistaken for the expletive fuck. French Connection argued that its mark was not of a sort that could be barred from registration.
Although a degree of word-play was possible, the origin of the mark was as an acronym for French Connection United Kingdom, and there had been a number of other acronyms that had been used internally (such as FCUS, standing for French Connection United States) to refer to the various branches of the company. Numerous traders had associated their products or events with the FCUK mark, or had sold FCUK goods. There had only been a few instances of complaints to organisations such as the Advertising Standards Agency, and most of these had focused on the use of the FCUK mark in particular contexts, rather than to the mark itself.As the Kat has already informed his readers, the application for revocation was rejected.*
Since Woodman’s case was that the public would misconstrue the FCUK mark as the word fuck, the initial question to be answered was whether fuck would be barred from registration as a trade mark on morality grounds. If the word fuck would be registrable, then French Connection would have no case to answer.Was the word “fuck” registrable as a trade mark?*The word fuck would not be registrable as a trade mark. The fact that it was commonly used in everyday life did not make it acceptable. It was more than merely smutty and would cause outrage among a significant section of the public. [IPKat NOTE: Note the similarity in the reasoning to the US KATRINA BLOWS, BUCK SUCKS decision, which the IPKat mentioned in his initial post on the FCUK decision]Would the FCUK mark be mistaken for the word fuck?*In judging whether the word FCUK would be construed as the word fuck, the hearing officer examined the visual, aural and conceptual impact of the mark on consumers. [IPKat NOTE: so far as he knows, it’s unprecedented for criteria for comparing marks in infringement/opposition cases to be deployed in immoral marks cases]
*It was not disputed that usually FCUK would be pronounced as its individual letters, rather than as a word, so aurally they would be quite different.*The conceptual meaning of the mark depended on whether the mark would be seen as fuck, either spelled correctly or mis-spelt. While the word fuck would cause offence to a significant section of the public, the offence was not caused by FCUK itself. Rather the possibility of offence arose through word play, mistake, or misconstruing of the letters, the mark though would enable the mark to be seen as the word.*It would not be right to see the mark as objectionable because it was capable of being seen as something that was not. There was no evidence that establishes that the trade mark FCUK solus was seen as the expletive amongst an identifiable section of the public.At what point should the offensiveness of the mark be judged?
*There was nothing in s.47 that allowed for the invalidation of a mark that had become objectionable on absolute grounds through the use that had been made of it post-application. Thus, the fact that French Connection had educated the public to view the mark as the objectionable word was not relevant to the hearing officer’s decision. However, the context in which FCUK had been used may have contaminated the term FCUK, causing the term itself to become offensive. This could be relevant to the hearing officer’s decision. [IPKat NOTE: This seems right – if you can educate consumers to see a descriptive word as a trade mark, you should be able to educate consumers to view neutral words as having taken on an offensive meaning.]
*In judging whether this had occurred, the reaction to the mark on the market proved a good barometer. Respectable traders had traded in FCUK goods with hardly any adverse response from members of the public. Also, there had been few complaints from the general public about the FCUK mark, and those that had been made tended to focus on the use of FCUK in a particular context, rather than on the term itself.The IPKat notes a number of examples of novel reasoning in the hearing officer’s deicision, particularly with regard to comparing plays on immoral words with the immoral words themselves, the point at which the immorality of the mark must be judged and the comments on educating consumers about the meaning of words. Merpel wonders why the revocation action was limited to jewellery and watches. If it's offensive for them, surely it's offensive for all goods?

Biotechnology - Thirty Years On

They say the modern biotechnology industry was born 30 years ago this year, with the founding of Genentech in April 1976. Now, in its 20th anniversary edition report called Beyond Borders 2006, Ernst & Young sets out an in-depth analysis and key trends for the biotechnology sector with a timeline charting the industrys evolution.

The news is good as biotech is booming across the globe, from the maturing US sector to the emerging Asia-Pacific. Revenues of the world’s publicly traded biotech companies grew 18 percent in 2005, reaching an all-time high of $63.1 billion. In addition, the sector raised $19.7 billion in capital, the sector’s second highest total since 2000.
According to Ernst & Young, the European biotechnology sector has emerged from a lengthy restructuring period with double-digit revenue growth and the second-strongest financing year on record, with €3.2 billion in capital raised. The pipelines of Europe's publicly traded biotech companies increased by 28 per cent. While the US biotechnology sector is still strong with 32 new product approvals, the Asia-Pacific biotechnology sector showed 46 per cent increase in revenues.
There is also tremendous growth in biotech crops despite the EU's chronic incapacity to lift national bans on GMO products. There is increasing pressure by the WTO to allow such crops. Other countries have asserted that the EU had been in violation of international trade rules since 1998 by imposing a moratorium on GM crops, contrary to scientific advice that they presented no health or safety risk. They complained that the EU has set no deadline to lift the moratorium.
Between 1997 and 2000, Austria, France, Germany, Greece, and Luxembourg imposed individual bans on GM crops that had secured approval by the European Food Safety Agency (EFSA). The bans were imposed on a temporary basis using a so-called "national safeguard clause" that EU member states can invoke when they have doubts about the products' safety for human health or the environment. The EU commission is responsible for the implementation of EU treaties and decisions but has imposed delays on biotech approvals, preventing the marketing of GM crops.
While oversold in the beginning, the next big thing in biotech may just be biogenerics (if the FDA ever sets out guidellines for their approval). It is predicted that by 2009, the pharmaceutical market will hit $650 billion, with biotech drug sales representing 15 percent to 20 percent of total sales. Furthermore, it is expected that 50 percent of all new drug approvals in 2010 will be for biotech drugs. Already, the top five biotech drugs represent almost $12 billion in sales with most of them already off patent but there are no generics given the regulatory hurdles for biogenerics.
Given the relatively complex nature of biotech products compared with conventional chemical generics, it is clear that when the FDA acts on biogenerics, it will most likely require substantially more data to obtain approval. Unlike small molecules, the data needed for biogenerics may depend on the product itself.

Patent injunctions are still discretionary, rules US Supreme Court

Essentially, the US Supreme Court has confirmed that injunctive relief for patent infringement is not in any sense an automatic remedy but remains at the discretion of the trial court, which is supposed to exercise its discretion after applying a four-factor equitable test:
(1) has the patent owner suffered an irreparable injury?
(2) are other remedies available at law, such as monetary damages, inadequate to compensate for that injury?
(3) considering the balance of hardships between the parties, is equitable relief justified?
(4) would a permanent injunction damage the public interest?
See also the coverage of this case in Patently-O ("a landmark unamimous decision"), Business Week ("a tepid triumph for eBay"), Jurist and The Raw Story ("a significant victory").

Securing Intellectual Property - Office Data Theft [India]

Securing IPRs: Beware of office data theft

Even as business process outsourcing (BPO) continues to be one of the fastest growing segment for India Inc, data privacy, network security and intellectual property rights (IPR) emerge as the biggest challenges. And, as the government intends to bring in amendments in the existing legislations dealing with the BPO industry — to inspire confidence among investors and silence the detractors — at a broader level, can there be a copyright on the list of clients and addresses maintained by professionals like lawyers, chartered accountants, BPO units, data management companies and others?

The Delhi High Court (HC) has replied the question in affirmative by stating that “The copyright exists not only in what is drafted and created but also in list of clients and addresses specially designed by an advocate or a law firm.” What it would mean in practice is that all companies maintaining a list of clients can claim copyright on such data and may sue employees for walking away with the list and telephone numbers of the clients under the provisions of the Copyright Act, 1957.
Citing the Berlington Hope Shopping case, the HC emphasised, “Customers’ list and information consisting of mail order, catalogues itself amount to confidential information.”

These observations were made by Delhi HC judge Sanjay Kishan Kaul recently while issuing an interim order in the Diljeet Titus vs Alfred A Adebare and Others case. The case, which is being contested by lawyers and being argued by advocates like Arun Jaitley, has also raised issues relating to various facets of copyright, distinction between contract of service and contract for service, and relationship between an advocate and law firm. Software forum Nasscom is reported to be closely studying the implications of the interim order that was given in favour of plaintiff Mr Titus.

The court, in its interim order, restrained the four defendants which included Nigerian national Alfred Adebare and lawyers Dimpy Mohanty, Alishan Naqvee and Seema Alhuwalia Jhingan from using the information allegedly stolen from the law firm Titus and Company. Later, the defendants sought an stay against the interim order of the Justice Kaul, but their contention was rejected by the division bench of the High court comprising Chief Justice Vijender Jain and Justice SN Agarwal. The final judgment, as and when delivered, will have implications for knowledge workers and entities in the IT sector.

What is more significant and may have implications for the business and industry is the treatment the court has accorded to the information about clients and solicitors which “to some extent is in public domain...appears in printed directories and everyone can use the same.”

Justice Kaul said, “Such a list is of great importance to an advocate or a law firm. The mere fact that defendants would have done work for such clients while being associated with the plaintiff would not give them the right to reproduce the list and take it away.”

In recent times, data security and protection, network security and intellectual property rights have been very strong concerns expressed by European and American firms about Indian BPOs. The government has set in motion the process of amending the IT Act, 2000 to include the data security concerns of the BPO sector. But it will take some time before this Act comes into place. On the other hand, Nasscom has decided to audit security practices of its members. This would enable Nasscom to devise some data security standards.

According to a Nasscom survey, IPR protection is perhaps the single most important policy for promoting investment in software development industries.In the absence of protection and enforcement of IPRs, a strong commercial software production industry will fail to become established and grow; investment in IT by businesses, households, government, and educational institutions will be slow.

Source : Financial Express, May 29, 2006

Monday, May 29, 2006

Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical 100 Ltd. [UK]

Law Wire's attention has been drawn to Friday's decision of the Court of Appeal [2006] EWCA Civ 661 (Lord Justices Mummery and Longmore, Mr Justice Lewison) in Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical 100 Ltd. This is the second recent Court of Appeal ruling that summary judgment on an IP infringement action may not be given where a Eurodefence is raised, the first being Sportswear v Stone Style). Law Wire hopes to make further comments on this case.
In the meantime, we offer you these words from Lord Justice Mummery:
"I doubt, however, whether the decision to have or not to have a trial of the action is much affected by the fact that it is heard by a specialist judge. I see no objection, for example, to the use of judges or deputy judges, who are not intellectual property specialists, to hear and decide applications for summary judgment in this field. I mention this topic and wish to say a little more about it for two reasons. First, as a result of hearing some recent appeals against the grant of summary judgments in a variety of areas of law, I have some general concerns about the use of the summary judgment procedure. Secondly, I am aware of views recently aired in the profession questioning the "efficiency" of using non-specialist judges for summary judgment applications in intellectual property cases.In my opinion, the decision whether or not an action should go to trial is more a matter of general procedural law than of knowledge and experience of a specialised area of substantive law. All judges, specialist and non-specialist, are experienced in procedure and practice. Procedural justice is the judicial specialisation par excellence. It may take a little longer for the application to be opened to a non-specialist judge, but that may be no bad thing. I am confident that all judges to whom such applications are likely to be made will have the necessary procedural expertise to sort out those cases that can properly be disposed of without a trial. (I add that the leading practitioners' text book on trade mark law (Kerly 14th edition 2005) contains no discussion of summary judgment procedure in infringement actions. That is an indication that the decision whether or not to grant summary judgment is more one of general procedure and practice than specialist expertise in substantive trade mark law.)I also wish to say a few words about the litigation expectations and tactics of claimants and defendants. Claimants start civil proceedings (including intellectual property actions) in the expectation that they will win and often in the belief that the defendant has no real prospect of success. So the defence put forward may be seen as a misconceived, costly and time-wasting ploy designed to dodge an inevitable judgment for as long as possible. There is also a natural inclination on the part of optimistic claimants to go for a quick judgment, if possible, thereby avoiding the trouble, expense and delay involved in preparing for and having a trial.Everyone would agree that the summary disposal of rubbishy defences is in the interests of justice. The court has to be alert to the defendant, who seeks to avoid summary judgment by making a case look more complicated or difficult than it really is".

Thursday, May 18, 2006

Data Transfers, Data Privacy and Corporate Compliance

For decades, businesses have collected consumer data without much complaint. Every time a consumer completes a warranty card, the information on that card heads for a large corporate database, which subsequently drives dinner-time telephone solicitations. But the Internet makes it exponentially simpler to amass large quantities of extremely detailed personal information. To many, this ease, efficiency, volume and vigour of electronic data collection is an uncomfortable marriage of George Orwell and Adam Smith.

The basic structure
Privacy Law structured in its present context with Data Protection legislation on the lines of the EU Model is the norm for any business in the Internet Economy. Compliance with Privacy Law is of great practical relevance for any company doing business in today’s global information economy. It is important that organisations understand Privacy in Online Business and in the context of information management.

Data transfer takes place routinely in the course of everyday business transaction. A brief examination of the EU Directive and related principles such as the European Privacy Commissioner’s Model Contract clauses, the US Safe Harbor Principles, the European Convention on Human Rights and the UN Universal Declaration of Human Rights provide us with the possible content for a Code of Conduct.

It is important for companies/organisations to remember that it might be conceivable to profit for separate codes for the processing of employing data. Further a company might want separate rules for the processing of sensitive data (say medical data).

India has no data protection or privacy laws. Privacy has been in most cases interpreted as the right to be let alone as enshrined in Article 21 of the Constitution. However, except for the tort of unlawful invasion of privacy, there is no recourse against private parties.

Data Transfers and the IT Enabled Services Sector:
Both individuals and companies should be concerned about how the legal rules regarding the holding of information might apply to them. There are three perspectives from which the issue can be seen. The first is from the point of view of the individual person about whom data is held, the second is from the point of view of the commercial organisation holding the data and the third relates to the impact on the first two processes of the widespread development of computer use and of the internet.

These days it would be difficult to envisage a commercial venture, whether new or existing, which did not use computers for its everyday activities. This inevitably involves the storage of data either about its own employees, its existing clients and customers, about potential targets or about third parties. The definition of “personal data” under present European data protection legislation (as envisaged by the EC Data Protection Directive 1995) is wide enough for it to cover practically any information held about a human individual. This is because the simplest information such as a name associated with a terrestrial address will constitute personal data for the purposes of the legislation.

Holding such personal data requires the organisation in question to obtain registration with the data protection registrar (the Information Commissioner) and to provide specific details of the purposes for which the data is held. This obligation is supported by criminal sanctions if registration has not been obtained or if, following registration, the data which is held is not held and used in accordance with the eight principles laid down under the legislation.

All personal data which is held must comply with these eight principles. They are:-
Personal data shall be processed fairly and lawfully.
It must be obtained only for one or more specific and lawful purposes, and shall not be further processed in any manner incompatible with that purpose.
The data held must be adequate, relevant and not excessive in relation to the purpose or purposes for which it is processed.
It must be accurate, and where necessary, kept up to date.
It must not be kept for longer than is necessary for the purposes for which it was obtained.
It must be processed in accordance with the rights of data subjects under the Act.
Appropriate technical and organisational measures shall be taken against unauthorised or unlawful processing of personal data and against accidental loss or destruction of, or damage to, personal data.
Personal data shall not be transferred outside the European economic area unless the recipient provides an adequate level of protection (equivalent to the data protection principles within the European Union).

It will be obvious from reviewing the above set of eight principles that there is considerable overlap between the principles as well as quite a degree of opportunity for individual interpretation of the terms.

Special rules allow data to be processed if this is necessary in connection with legal proceedings. The application of this principle is relatively clear as regards the rights and duties of law enforcement agencies but not necessarily quite so clear when the issue arises regarding, for example, the use by an insurer of sensitive personal data about its insured. The point here is that if an insurer holds and uses data about an insured which might have a bearing on the level of risk to be accepted in a contract of insurance then the potential conflict of information between the use of that data needs to be identified, recognised and used in accordance with the obligation to use fairly.

Regretfully, the legislation does not provide any guidance to what is meant by the word “lawful” in the context of data processing. Decided case law suggests that the natural meaning of “unlawful” is “something which is contrary to some law or enactment or is done without lawful justification or excuse”. An essential prerequisite for the processing of personal data is that the data subject has given consent to the processing. That consent must be informed and unequivocal. It is also an important entitlement of the data subject that if information is held about them then they are entitled to ask to see exactly what is held and, where appropriate, they can insist on incorrect information being amended. A nominal fee can be charged for providing the information but it is important to recognise that if a request to supply data is not adequately fulfilled then the data holder may be the subject of a criminal prosecution under the legislation.

One of the fundamental consequences of the development of the Internet is that national boundaries are far easier to be crossed, often without those who are using the Internet being aware that this is happening. It is not unusual for Internet trading sites to carry personal data about customers. There is, therefore, the risk that the personal data might, albeit innocently and inadvertently, move outside the confines of the European Union. This is potentially a major problem for data users because, under the Data Protection Act, no personal data can be exported anywhere outside the European Union unless it is sent to a jurisdiction with equivalent legislative protection for data or unless it is subject to express confidentiality provisions. This is that data ‘exported’ to call centres, BPO operations, in India is governed by a contract structured in terms relating to European law, with jurisdiction and governing law in Europe.

Unfortunately, any business user of data must care about the operation of the legislation because there are quite a number of issues which need to be taken very carefully into consideration to ensure that the use of personal data is in accordance with the principles of the relevant legislation and is also consistent with the terms of the registration which all users must obtain.

Rodney D. Ryder is a lawyer specialising in trade and technology laws.

IPTV & Digital Piracy: Keeping Honest People Honest

A small interview on "digital piracy" and IPTV with Steve Oetegenn, Executive VP Global Sales & Marketing at Verimatrix, which read like a sales pitch. It's about keeping honest people honest, again:
One other problem which is often overlooked is theft of service. It is estimated that around 30% of cable and 50% of satellite programming is actually viewed without being paid for. Our system provides excellent clone detection functionality, which ensures that only paying customers have access to services. The problem with IPTV is to keep honest people honest. We’re going to be challenged by these type of hackers, if they can circumvent the system they will, but you need to provide a deterrent.

Wednesday, May 17, 2006

Data Exclusivity v. Patent: The myths and the realities

Data exclusivity must not be confused with patent. For a patent grant, an innovation has to fulfill the three criteria of "novelty", "inventive step" and "capable of industrial application". Following patent grant, the entire knowledge associated with innovation comes into public domain, unlike in the case of DE.

In February 2004, the Government constituted an Inter-Ministerial Committee to examine whether our laws meet the requirements of Article 39.3 of TRIPS on Data Protection (DP).

The Article states: "Members, when requiring, as condition of approving the marketing of pharmaceutical or agricultural chemicals products which utilise new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercial use. In addition, Members shall protect such data against disclosure, except where necessary to protect the public or unless steps are taken to ensure that the data are protected against unfair commercial use."

The above brief clarifies the scope and intent of the Article. It requires members to protect such data against both "disclosure" and "unfair commercial use". While the first requirement is straightforward, the second requires explanation.

Data have "commercial value" as they give the originator marketing rights. Now, if another person also gets these rights without having to submit his own data (hence, no effort), this will give the latter an "unfair commercial advantage".

This can be prevented by allowing a period of "exclusivity" (commonly called Data Exclusivity or DE) to the originator/first applicant during which period a subsequent applicant cannot get market approval citing former's data.

This will enable the originator recoup his investment in generating the data. At the same time, users will have access to the original knowledge (not possible if dozens of "me-too" registrants also apply from day one). On expiry of the DE period, the "me-too" applicants can be given market approval by demonstrating the parity of their products with that of the originator/first applicant.

The above dispensation fully complies with Article 39.3, is fair to all stakeholders and, in the current context, is in the best interest of Indian agriculture. Yet, the picture is clouded by a host of myths.

The use of the originator's data by the government for giving market approval to subsequent applicants does not constitute unfair commercial use.
The Registration Committee (RC) — a statutory body created under the Insecticides Act (1968) — is the sole authority that grants registrations for agrochemical products. Without its authorisation, no manufacturer/supplier can make/sell the product. Now, if the RC also grants registration to subsequent applicants without requiring them to generate their own data, that will constitute unfair commercial use.

Under Article 39.3, India is under no obligation to grant DE; that by giving protection against disclosure alone, we would have complied with its provisions.
Protection against disclosure merely prevents subsequent applicants from having unauthorised access to the data. It does not prevent the Regulator from granting them market approval, by relying on the originator's data. Consequently, the requirement of protection against unfair commercial use would still be violated. This can be complied with only by the grant of DE for a certain period. To ensure full compliance with the TRIPS agreement, the law must provide for protection against disclosure and DE.

With DE in place, subsequent applicants will be prevented from generating their own data for seeking market approval.
A person is free to come up with his own data for getting market approval. DE is only aimed at preventing a subsequent applicant from piggybacking on the data of the originator/first applicant.

A law on DE will enable the originator/first applicant establish monopoly in the market place.
This is ruled out as subsequent applicants can get market approval based on their own data. DE must not be confused with patent, which confers monopoly to the patent holder during the patent term.

The DE will prevent the regulator from comparing the data of subsequent applicants with that of the original registrant.
This is hypothetical. The data of subsequent registrants have to stand scrutiny — in terms of "safety" and "efficacy" effects — on their own.

A product already approved/in use abroad is not an NCE.
Even if an agrochemical product is already approved/in use abroad, the applicant must conduct long-term studies (three-four years) in India to assess its "safety" and "efficacy" under local conditions. Clearly, the RC treats the product as an NCE. Otherwise, it would not mandate studies in India for assessment of its impact on soil, crop, pests, users and the environment.

To be eligible for DE, a product should meet the criteria of NCE as per patent law.
Registration data and innovation are two separate intellectual properties. TRIPS agreement clearly recognises this by providing for DP and patent protection respectively under different articles.
Therefore, it won't be logical to transpose NCE as defined in the context of patent to read the provisions of the Article on DP. An attempt to do so would result in a dangerous situation whereby products not patent-protected will not qualify for grant of DP.

With DE in place, the Patent Office cannot refer to the data/information submitted by the patent holder for examining other patent applications.
The DE protects registration data (read long-term studies for getting market approval for a product whether protected by patent or not). It is irrelevant to the grant of patent. For a patent grant, an innovation has to fulfil the three fold criteria of "novelty", "inventive step" and "capable of industrial application". Following patent grant, the entire knowledge associated with innovation comes in public domain. Thus, it makes no sense to presume that the Patent Office cannot refer to information that is public knowledge.

Grant of DE, in addition to patent, leads to double protection.
Patent and DE are meant to protect distinct IP rights. Hence, there is no question of double protection. DE protects efforts involved in registration data. The applicant must generate it irrespective of whether the product is protected by patent or not. What happens if DE is not granted? An original applicant not protected by patent (not meeting patentability criteria; innovation of pre-1995 vintage or patent term expired) will be left in the lurch. Without DE, even an applicant enjoying patent protection at the time of registration could be vulnerable if the residual patent term is small.

DE helps in ever-greening of patents.
Ever-greening is a euphemism for extension of patent term. In simple terms, the apprehension is that grant of DE will enable the patentee to enjoy monopoly even after expiry of the patent term.
Unlike patent, grant of DE does not give market exclusivity. Thus, competitors are free to enter the fray immediately on expiry of patent term. Even so, generally, the DE term ends much before the expiry of patent term. Thus, for an innovation in 2005 and registration in 2015, DE for five years will end in 2020 while a patent would expire in 2025.

DE will render Compulsory Licences granted in respect of patent protected products redundant.
Compulsory licences (CL) are granted in exceptional situations. This should be treated strictly as an exception rather than a rule; otherwise, the very objective of patent grant will be defeated.
Even so, the expressed fear is baseless as the compulsory licensee can get registration based on his data. If need be, the government can even waive the condition of the licensee having to submit his own data. When, it can break a patent temporarily by granting CL (to address an emergency situation), it might as well break DE.

Grant of DE will affect growth of the generic industry in India.
The term "generic" is used to connote some thing that is "unbranded" or not protected by patent or trademark. Its use in the context of DE is a misnomer. DE gives protection to anyone who puts in an effort to generate registration data. Therefore, all companies, innovators or generics which are committed to R&D, will have the opportunity to grow.

Without DE, there will only be a proliferation of "me too" manufacturers/suppliers. All the myths are the result of a mind-set that views DP/DE through the prism of patent. This must change. Data Registration is an independent intellectual property. This must be protected by grant of DP/DE to the original registrant.

USPTO Requests Comments on Search Templates

On May 16, 2006, the USPTO issued a request for comments on its patent search templates.These search templates define the field of search, search tools, and search methodologies that should be considered each time a patent application is examined in a particular classification.
The USPTO has published templates’ for each of the classes found in the USPTO’s Manual of Classification.A search template will define the search field and resource areas of general subject matter, classes/ subclasses, patent documents (both domestic and foreign) and Non-Patent Literature that an examiner should consider each time a patent application is examined in a particular classification. Additionally, the search template will indicate what search tools or methodologies should be considered when performing the search. These search templates are based upon input from patent examiners and other searchers at the USPTO and represent an attempt to capture their institutional knowledge of what are the most relevant prior art searches for determining the patentability of subject matter in the area of technology.
In an effort to ensure that each classification has an appropriately structured field of search and search strategy, the USPTO has published the search templates on the USPTO’s Internet Web site at The USPTO is publishing this request for comments to gather public feedback on the adequacy and completeness of the search templates.
Rodney D. Ryder

Tuesday, May 16, 2006

Comparative Advertisements [India]

Comparative Advertisement’ as a concept may be new to India and the development of law by the Supreme Court of India and various High courts may be in the making but there are abundant judgements on this issue by the courts of England and USA. It may be explained as an advertisement where a party advertises his goods or services by comparing them with goods and services of another party, by projecting the advertiser’s product to be of the superior or same quality or by denigrating the quality of the compared product. The underlying assumption is - by comparative advertising the consumer comes to know of the two products and their comparative features/merits and thus gets benefited.
This globalised environment with fiercely competitive market of fast growing consumer products holds wide scope for comparative advertising. It is the new or unknown brands, which mainly benefit from comparative advertising as they try to transfer the potential intangible values associated with the compared brand, to the new brand. The first case to deal with the extent of permissibility of such comparative advertising in India arose before the Calcutta High Court in Reckitt & Colman of India Ltd. v. M.P. Ramchandran Anr. (1999 PTC (19) 741) (though the judgement was delivered on 19th Feb. 1996, it was reported 3 years later). Thereafter, various cases demanding attention to comparative advertising came before various courts, which further cleared the emerging concept. The case Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. (2006 (32) PTC 307 (Del.)) throws some light on this new area of law.

The plaintiff in the instant case was engaged in manufacturing insecticide with the trade name ‘HIT’ under two versions- one for killing cockroaches which was packed in red coloured container and the other for killing mosquitoes, packed in black coloured container. The defendant’s single product ‘MORTEIN’ was meant for destroying both cockroaches and mosquitoes which fact was highlighted in the advertisement on the electronic media. Plaintiff alleged that the defendant disparaged and denigrated the plaintiff’s product, which was impermissible. The punch line of the plaintiff’s advertisement was ‘do can kyon’ and that of the defendant was ‘do tarfa hamla’. Although the advertisement was on air since February, 2005 the plaintiff filed the suit against the defendant in September 2005 with the plea that it came to know of the impugned advertisement only in September 2005.
The advertiser has right to boast of its technological superiority in comparison with product of the competitor. Insinuating campaign against the competitor’s product is not permissible, however, the advertiser may highlight the positive features of his product and even claim that his product is better than his competitors but he is not permitted to project his competitor’s goods to be bad. In an action for disparagement it must be proved that the impugned advertisement is untrue, misleading and show’s the competitor’s products to be of an inferior quality. Relying on these principles enunciated in various judgements vis-à-vis Pepsi Co. Inc. and Ors. V. Hindustan Coca Cola Ltd. and Anr. (2003 (27) PTC 305 (Del.) (DB)), Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (1996 PTC (16) 393) etc., the court in Godrej Sara Lee Ltd.’s case held that the defendant provided a better and more convenient solution by giving two-in-one product. Telling the consumer that he could use one single product to kill two different species insects without undermining the plaintiff’s products by no stretch of imagination amounted to disparaging the product of the plaintiff. The choice was ultimately of the consumer. He would still like to buy the plaintiff’s products thinking that solution/spray for killing one particular insect would be more effective than the product of the defendant killing two insects. Even the punch line of both the advertisements were held to be two responses. Further it found it to be highly improbable that the plaintiff did not come to know of the impugned advertisement before and spotted it only in September, 2005 when the impugned advertisement was repeatedly aired on various TV channels since February, 2005.
The case besides holding that the consumer’s choice is ultimate highlights a particular comparative advantage of convenience in using the defendant’s product over the plaintiff’s product.
Rodney D. Ryder

[US] Patent Injunctions still discretionary

Law Wire reports the US Supreme Court ruling in eBay Inc. et al v MercExchange, L.L.C. 547 US _(2006).
Essentially, the US Supreme Court has confirmed that injunctive relief for patent infringement is not in any sense an automatic remedy but remains at the discretion of the trial court, which is supposed to exercise its discretion after applying a four-factor equitable test:
(1) has the patent owner suffered an irreparable injury?
(2) are other remedies available at law, such as monetary damages, inadequate to compensate for that injury?
(3) considering the balance of hardships between the parties, is equitable relief justified?
(4) would a permanent injunction damage the public interest?
Rodney D. Ryder

[US] Supreme Court Overturns Predilection for Patent Infringement Injunctions

According to the U.S. Supreme Court in the EBay v. MercExchange, No. 05-130, (May 15, 2006) in order to obtain an injunction in a patent case, the patent owner must demontsrate, "according to well-established principles of equity,"
that it has suffered an irreparable injury;
that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
that the public interest would not be disserved by a permanent injunction.
"These familiar principles apply with equal force to disputes arising under the Patent Act," wrote Justice Thomas in an unusually concise opinion vacating the judgment of the Federal Circuit:
Neither the District Court nor the Court of Appeals below fairly applied these traditional equitable principles in deciding respondent's motion for a permanent injunction. Although the District Court recited the traditional four-factor test, 275 F. Supp. 2d, at 711, it appeared to adopt certain expansive principles suggesting thatinjunctive relief could not issue in a broad swath of cases. Most notably, it concluded that a "plaintiff's willingness to license its patents" and "its lack of commercial activity in practicing the patents" would be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue. Id., at 712. But traditional equitable principles do not permit such broad classifications.
For example, some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertakeefforts to secure the financing necessary to bring their works to market themselves.Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so. To the extent that the District Court adopted such a categorical rule, then, its analysis cannot be squared with the principles of equity adopted by Congress. The court's categorical rule is also in tension with Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 422, 430 (1908), which rejected the contention that a court of equity hasno jurisdiction to grant injunctive relief to a patent holder who has unreasonably declined to use the patent.

In reversing the District Court, the Court of Appeals departed in the opposite direction from the four-factor test. The court articulated a "general rule," unique topatent disputes, "that a permanent injunction will issue once infringement and validity have been adjudged." 401 F. 3d, at 1338. The court further indicatedthat injunctions should be denied only in the "unusual" case, under "exceptional circumstances" and "in rare instances . . . to protect the public interest." Id., at 1338, 1339. Just as the District Court erred in its categorical denial of injunctiverelief, the Court of Appeals erred in its categorical grant of such relief. Cf. Roche Products v. Bolar Pharmaceutical Co., 733 F. 2d 858, 865 (CAFed 1984) (recognizingthe "considerable discretion" district courts have "in determining whether thefacts of a situation require it to issue an injunction").
Because we conclude that neither court below correctly applied the traditional four-factor framework that governs the award of injunctive relief, we vacate the judgment of the Court of Appeals, so that the District Court may apply that framework in the first instance. In doing so, we take no position on whether permanent injunctive relief should or should not issue in this particular case, or indeed in any number of other disputes arising under the Patent Act. We hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by suchstandards.However, while the methodology of the Federal Circuit may have changed, the availability of injunctive relief is arguably not much different than it was before the decision. In a concurring opinion by Chief Justice Roberts, with whom Justices Scalia and Ginsburg joined, it was noted that even though historical practice does not justify a general rule that patent injunctions should issue, "there is a difference between exercising equitable discretion pursuant to the established four-factor test and writing on an entirely clean slate." When it comes to discerning and applying those standards, in this area as others, "a page of history is worth a volume of logic."
On the other hand, a separate concurring opinion by Justice Kennedy, with whom Justices Stevens, Breyer, and Souter joined, warns district courts to "determine whether past practice fits the circumstances of the cases before them," especially with regard to so-called "patent trolls" and "business method patents:"
An industry has developed in which firms use patents not as a basis forproducing and selling goods but, instead, primarily for obtaining licensingfees. . . . When the patented invention is but a small component ofthe product the companies seek to produce and the threat of an injunction isemployed simply for undue leverage in negotiations, legal damages may well besufficient to compensate for the infringement and an injunction may not servethe public interest. In addition injunctive relief may have differentconsequences for the burgeoning number of patents over business methods, whichwere not of much economic and legal significance in earlier times. The potentialvagueness and suspect validity of some of these patents may affect the calculusunder the four-factor test.
To the extent earlier cases establish a pattern of granting an injunctionagainst patent infringers almost as a matter of course, this pattern simplyillustrates the result of the four-factor test in the contexts then prevalent.The lesson of the historical practice, therefore, is most helpful andinstructive when the circumstances of a case bear substantial parallels tolitigation the courts have confronted before.
Rodney D. Ryder

Sunday, May 14, 2006

Intellectual Property for Corporate Counsel [US]

The American Corporate Counsel Association's 149-page "Introduction to Intellectual Property for In-house Counsel" is intended "to provide corporate counsel with a general overview of intellectual property and to suggest useful practices for the handling of intellectual property issues in the corporate setting." It does, in fact, give some good background on the types of intellectual property protection available in the U.S. However, since it was written by attorneys at 375-attorney U.S. law firm with offices in DC, New York, and Los Angeles, it may not entirely answer all of the questions that attorneys might have about the business of I/P in a corporate setting.
For example, with regard to hourly billing rates, the authors conclude that while the concept of hourly billing rates seems logical and appropriate as a wayof valuing legal services, in reality corporate clients often suspect that the use of thismethod of billing can lead to excessive charges as a result of the firmÂ?s use of billable hours as a basis for evaluating attorney performance. On the other hand, law firms that view themselves primarily as members of a profession whose primary obligation is to serve the legitimate interests of their clients, and who conduct themselves accordingly, are usually not subject to this criticism. This would be in keeping with Abraham Lincoln's observation that "a lawyer's time and advice are his stock in trade."Still, when considered from the point of view that such a law firm might have when looking for new clients, the report does provide some interesting perspectives.
For example, the section on "Creating a Corporate IP Protection Plan That Makes Sense from Both Legal and Business Perspectives" contains this little gem on comparative organizational behavior in the legal environment:
Unlike a law firm, where there are no rigid limitations on the number of partners and an individualÂ?s potential for increased financial and professional reward is primarily limited only by his capabilities, the corporate pyramid restricts upward mobility within a company. Hence, the corporate professional must look in greater measure to the promise of more challenging work and increased independence as a reward. Inescapably, for most corporate professionals, responsibility for litigation, licensing, and other major work is seen as reward, and the lack of it as a penalty. Guidelines for allocation of this type of work should be clear, and departures from them explained. Failure to do so is detrimental to morale. This does not materially limit managementÂ?s ability to distribute work as they see fit, but it merely places upon them the burden of explanation.In-house practitioners might not agree with how these particular private practitioners expect them to run their business. But, in the end, everyone will acknowledge that it's a good place to start when thinking about how to organize a corporate I/P department.
Rodney D. Ryder

Saturday, May 13, 2006

UEFA scores an easy win

Law Wire has found Union des Associations Europeennes de Football and others v Briscomb and others, a decision of Mr Justice Lindsay from Monday 8 May which was noted on the Lawtel subscription-only service. This was an application for summary judgment in an action for copyright infringement brought by UEFA, the governing body for European football. In short, UEFA run an exciting if over-long football tournament called the European Champions League, games in which were broadcast live by two other claimsnts. Apart from the football games themselves, the broadcasts featured ancillary works in which UEFA purported to own the copyright, such as specially composed music, uniform branding, sequencing and the UEFA logo.
Briscomb and the other defendants transmitted the games to their subscribers via their website, having digitally captured and electonically processed UEFA's broadcasts. Claiming that Briscomb infringed its copyright in the broadcasts and the ancillary works by communicating them to the public contrary to the Copyright, Designs and Patents Act 1988 s.20 and by copying them contrary to s.17, UEFA sought and obtained summary judgment. Lindsay J agreed that all the claims had been made out and Briscomb had no real prospect of defending them.
Rodney D. Ryder

Electronic Filing [UK Patent Office]

Law Wire has just received news concerning a new United Kingdom Order: this is the Registered Designs Act 1949 and Patents Act 1977 (Electronic Communications) Order 2006 (Statutory Instrument 2006 No.1229), which comes into force on 1 October 2006. It amends the Registered Designs Act 1949 by enabling the registrar of designs to direct the manner in which electronic filing is made, also tidying up the provisions governing electronic communications under the Patents Act 1977.
Rodney D. Ryder

Thursday, May 11, 2006

Allegations of Improper Communications with USPTO Officials in Blackberry Reexam

Thanks to Steve Nipper and Hal Wegner for pointing to allegations of improper communications by USPTO officials during the blackberry patent reexamination proceedings. In it's "Response to Final Office Action On February 24, 2006," NTP alleges, among other things:
. . . On Saturday, January 1, 2005, Theodore W. Kassinger, the Deputy Secretaryof the Department of Commerce, sent an email to Mr. Dudas to arrange a meetingwith RIM officials. The substance of Mr. Kassinger's email to Mr. Dudas has been redacted without the assertion of any claim of privilege or exemption under FOIA. Redaction of the email without an assertion of a privilege or exemption is improper. Further, to the extent that Mr. Kassinger's email reflects the substance of any discussion with RIM or its representatives, that information should have bee noted in the record of decision.
Mr. Dudas responded on January 2 thanking Mr. Kassinger for arranging the meeting. He indicated he would be in his office on Tuesday, January 4, and that Jennifer Lo, the Under Secretary of Commerce for Intellectual Property, could work with Jane Dana, the Acting General Counsel of the Department of Commerce, to "set up a convenient time to meet with Mr. Cameron", a lawyer for RIM. A copy of thisemail is attached to the Anderson Declaration as Exhibit 5 p. 1.
Copied on Mr. Dudas' January 2 email, in addition to Ms. Lo, were Steve Pinkos, Deputy Under Secretary of Commerce and Deputy Director of the PTO, and EleanorK. Meltzer, an attorney-advisor in the office of Legislative and International Affairs of the PTO. Ms. Meltzer forwarded the emails between Mr. Kassinger and Mr. Dudas to James Toupin, General Counsel of the PTO, and John Whealan, Deputy General Counsel and Solicitor for the PTO. NTP infers from these facts and circumstances that Messrs. Toupin and Whealan joined Mr. Dudas and other Commerce Department and PTO officials to meet with Jim Balsille, President and Co-CEO of RIM, and Don Cameron, RIM's Canadian counsel, on January 4, 2005. See Anderson Declaration Exhibit 5, p. 45.
To prepare for the meeting with Mr. Balsille, Mr. Dudas requested that the PTO prepare briefing materials for him on, among other things, the status of the reexaminations of Patent Owner's patents and the lnfrngement Action. Ms. Meltzer sent a "High" Importance email at 9:36 A.M. on January 3 requiring, by 3:00 P.M. that day, the PTO to provide the following briefing materials for Mr. Dudas:
Identification of the various outstanding patents (by number and owner), and whether they are inter partes reexams (IPRs) or director-ordered re-exams (DORs);
current status of each;
Procedural history of each IPR and DOR;
Information-for each-on the volume of new materials being reviewed and the number of USPTO employees reviewing materials;
summary of the litigation history; and
Outstanding issues before the USPTO.
A copy of this email is attached to the Anderson Declaration as Exhibit 2, p. 87.
Ms. Meltzer's email indicated the briefing materials were for a meeting on January 4, at 4:00 P.M., where "Mr. Dudas, other Commerce Department representatives, and possibly representatives from the Department of Justice will meet to discuss the 'RIM' case." Prior to the meeting with RIM, an internal PTO meeting was scheduled for 11 :30 AM on January 4 with the subject "briefing RE: RIM". The email indicates "Required Attendees" were Mr. Dudas, Mr. Pinos, Nicholas Godici, Robert Bah, Elizabeth Doughery, Mr. Toupin, Mr. Whealan, Lois Boland, John Doll and Ms. Meltzer. A copy of this email is attached to the Anderson Declaration as Exhibit 3, p. 99.
It appears from the FOIA documents that the briefing materials Mr. Dudas requested for these meetings pertained directly to the reexaminations of Patent Owner's patents. NTP infers from these, the briefing materials contained non-public information related to the merits of the reexaminations, and the reexaminations where discussed in the meeting with RIM.
Further evidence that a meeting was scheduled between RIM and PTO officials involving the "RTP reexaminations" is contained in an email from Elizabeth Doughert in the Office of Patent Legal Administration. On March 31, 2005, Ms. Dougherty wrote to newly appointed PTO Commissioner John Doll to inquire about the propriety of "industry leaders" seeking an "audience with the Director." Ms. Dougherty states that although she does not know whether the meeting actually occurred, ''The present question reminds me somewhat of the situation in theRIM/NTP reexaminations where RIM wished to meet with officials at the Department of Commerce and Jim Toupin and John Whealan were to attend the meeting." See Anderson Declaration Exhibit 4, p. 5.

Patent Owner believes there are numerous communications with the third-party requester related to the January 4, 2005 meeting that have not been produced in response to the FOIA request, and which have not been included in the record of decision as required by regulation. . . .

Sinful Expert Detachment

Law Wire reports that in "The Se7en Deadly Expert Sins," Bill Hueter writes that lawyers often fail to work closely with an expert on outlines and deadlines and to communicate their expectations early and often.
Detachment can result in a weak expert report, strained relations and excessive costs. Avoid this by meeting with and reviewing the expert's work early and often. Establish a schedule well in advance of deadlines to work with the expert on outlines and drafts. Help the expert find the right tone for the report and define its breadth and depth.A related problem comes from a lawyer's fear of confronting an expert if problems do arise. Knowing the expert will soon be testifying and not wanting to create friction, the attorney may choose to say nothing. This only perpetuates and exacerbates the problem. Talk through problems as soon as they arise. Be frank and address your concerns. Use good management skills and good communication skills.

Tuesday, May 09, 2006

Uncommunicated Law Firm Work Product Protected When In-House Privilige is Waived

Law Wire reports In re EchoStar Communications Corporation (Fed. Cir. May 3, 2006) EchoStar had relied on the advice of its in-house counsel prior to the filing of the patent infringement action by Tivo. After the action was filed, EchoStar obtained additional legal advice from Merchant & Gould but elected not to rely on it. TiVo sought production of documents in the possession of EchoStar and Merchant & Gould in order to explore further EchoStar’s state of mind in determining that it did not infringe the patent.

The district court held that by relying on advice of in-house counsel EchoStar waived its attorney-client privilege and attorney work-product immunity relatingto advice of any counsel regarding infringement, including Merchant & Gould.The district court indicated that the scope of the waiver includedcommunications made either before or after the filing of the complaint and anywork product, whether or not the product was communicated to EchoStar. Thedistrict court also held that EchoStar could redact information related only totrial preparation or information unrelated to infringement. Circuit Judge Gajarsa agreed that "when EchoStar chose to rely on the advice of in-house counsel, it waived the attorney-client privilege with regard to any attorney-client communications relating to the same subject matter, including communications with counsel other than in-house counsel, which would include communications with Merchant & Gould." However, "Merchant & Gould work product that was not communicated to EchoStar or does not reflect a communication is not within the scope of EchoStar’s waiver because it obviously played no part in EchoStar’s belief as to infringement."

Here, Merchant & Gould work product that was not communicated to EchoStar or does not reflect a communication is not within the scope of EchoStar’s waiver because it obviously played no part in EchoStar’s belief as to infringement of the ’389 patent. See Steelcase, 954 F. Supp. at 1198-99. It may very well be true, as TiVo suggests, that at times some parties would communicate draft opinion letters or the contents thereof to the client confidentially in order to avoid disclosing that communication during potential discovery if and when the attorney-client privilege is waived, but we cannot eviscerate the legitimate policies of the work-product doctrine and chill the principles of our adversary system as a whole on account of the possibility that, from time to time, there may be occurrences of ethical ransgressions.In sum, the advice-of-counsel defense to willfulness requires the court to decide, inter alia, whether counsel’s opinion was thorough enough to "instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable." Ortho Pharm., 959 F.2d at 944. If a Merchant & Gould document was not communicated to EchoStar or if a Merchant & Gould document does not reference a communication between Merchant & Gould and EchoStar, its relevant value is outweighed by the policies of the work-product doctrine. Thus, it was an abuse of discretion for the district court to determine that the scope of the waiver of privilege extended to such documents.
Rodney D. Ryder

Novo Nordisk Files Unfair Import Complaint Against Sanofi Aventis

On May 8, 2006, Novo Nordisk filed a "Section 337" complaint at the U.S. International Trade Commission requesting that an unfair import investigation be instituted involving "Insulin Delivery Devices, Including Cartridges Having Adaptor Tops, and Components Thereof." The complaint has been designated as Docket No. 337-2483 for indexing in the Commission's database. The proposed respondent(s) are: Sanofi-Aventis Deutschland GmbH, Frankfurt am Main, Germany, Sanofi-Aventis, Paris, Cedex France and Aventis Pharmaceuticals, Inc., Bridgwater, New Jersey.
Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.
Click here for more information on the importance of monitoring these ITC investigations, and click here for an audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
Rodney D. Ryder

Monday, May 08, 2006

Intellectual Property National Plan - China

China's National Intellectual Property Rights Protection Working Group has released an action plan for 2006. The plan includes specific legislative, law enforcement, training, and other IP-related tasks that are designed to improve IP rights in the areas of patent, trademark, copyright, and import/export activities.This People's Daily article includes the action plan.One of the tasks includes implementing legislative change to the Chinese patent law, which has only existed for about 20 years (the law was promulgated in 1984). Since then, revisions have been used to "modernize" the immature system. Currently, a Third Revision has been proposed.
You can read more about the Third Revision here (official Chinese government site) and here.The patent legislation portion of the action plan follows:(III) To draft, formulate and revise a part of laws and regulations in relation to patent protection1. To revise the Regulations on Patent Agency in order to standardize the conduct of patent agents, safeguard the normal order of the patent agency industry, and protect the legitimate rights and interests of interested parties.2. To revise and issue the Guide on Patent Review, and edit, publish, and publicize the Guide on Patent Review and translate it into English. 3. To shape up the proposal on the third revision of the Patent Law by widely soliciting the opinions and suggestions from relevant departments of the State Council, the business community, public institutions, universities, academic research institutes and patent agents on the basis of completing the research on the third revision. Hopefully 2006 will bring an English version of the Chinese MPEP and movement on the Third Revision.
Rodney D. Ryder

Saturday, May 06, 2006

The Code, the judgement and a blooper!

The Da Vinci Code trial is over! But, Law Wire noticed that you cannot Mr Justice Peter Smith out of court. Just when he thought the Da Vinci Code case was dead and buried, it seems to have sprung to life again. First, the learned judge hit the headlines by sticking his own private bit of encryption into his judgment. Then, in Baigent and another v Random House (Re The Lawyer), heard yesterday, we saw a journalist with The Lawyer magazine getting into all sorts of trouble.
What happened, according to the Online Press Gazette, was that the journalist got hold of the draft judgment before it was supposed to be made public, then put it on The Lawyer's website. When he learned of the error of his ways, he apologised. But in court yesterday he got a good roasting from the judge, who explained that the privilege of making judgments available before they were fully baked would be taken away if journalists abused it again.
Rodney D. Ryder

Friday, May 05, 2006

Patent Portfolio Management Basics

"It does not make sense to invest thousands of dollars per year in patents, simply because any one of your patents could be worth millions," writes Dave Fisch, TAEUS Engineering Programs Director, in the Augsut 2005 issue of Taues Times. "If you owned real estate worth several hundred million dollars that cost you $5 million yearly taxes, you would actively manage the property to maximize your return and minimize your expenses. The same motivation needs to be applied to your patent assets, whether you own ten or ten thousand patents."He suggests conducting periodic human checks of each patent versus the potential market for the patented technology. "
It is critical that the information and opportunities you identify get captured in a way that allows you to easily retrieve this information," says Fisch. And we at Law Wire agree. With the right tools, processes, and leadership in place, a business can eaily identify those patents that can bring in licensing revenue and/or protect your business operation. It can also identify patents that should be sold or otherwise disposed of.Where to start, you ask? First, develop a "Proactive I/P Culture" with seminars and watch services for your engineers and marketers. If your current counsel can't, or won't, provide these services (at no charge), then maybe you need new counsel. Second, sit down with the individuals who are most knowledgable about a particular market segment and review the claims in your corresponding patents and goods identifications in your corresponding trademarks.
If your current counsel can't work with non-legal personnel to identify the point of novelty in each of the independent claims in an average of two minutes or less per patent, then maybe that counsel shouldn't be drafting the claims in your new applications. Third, when it comes to infringement, demand that your attorney explain the legal risks and expected costs to non-legal managers in a memo that is less than two pages long and/or a presentation that lasts less than fifteen minutes.
Rodney D. Ryder

Traditional Knowledge [IGC Report]

According to BRIDGES Weekly Trade News Digest, the ninth session of WIPO's Intergovernmental Committee (IGC) on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore ended without much fanfare on April 28. Click here for a brief summary of the working documents and here for the decicionsIn its opening statement on a compromise between developing and developed countries, Norway proposed that members focus on the policy objectives and guiding principles for the protection of TK and traditional cultural expressions. They suggested the establishment of an international norm for protecting TK from misappropriation modeled on Article 10bis of the WIPO-administered Paris Convention for the Protection of Industrial Property, which mandates "effective protection against unfair competition." The Norwegian proposal excluded genetic resources from its ambit.Developed countries including Canada and the US concurred with Norway's proposition for the way forward, and said they were willing to examine the Article 10bis proposal more carefully.
However, developing countries expressed disagreement, arguing that the proposal would not adequately protect TK from misappropriation outside the jurisdiction of its country of origin. Brazil also reportedly stated that there are no internationally accepted definitions for Paris Convention terms such as "honest practice" -- the absence of which could cause unfair competition.Nonetheless, most countries expressed appreciation for Norway's efforts to initiate a resolution process in this area.
A voluntary fund was also established to help indigenous and local communities participate in the IGC's work. Sweden and France were the first to make contributions.
Rodney D. Ryder

Worldwide Trademark Filing Cost Report [The Economist]

Each year, The Economist magazine publishes a "Big Mac Index" based on the theory of purchasing-power parity, under which exchange rates should adjust to equalise the cost of a basket of goods and services, wherever it is bought around the world. To make it simple, their basket includes just one McDonalds "Big Mac" hamburger. The cheapest burger in their chart for January 2006 was in China, where it costs $1.30, compared with an average American price of $3.15. The highest price was in Switzerland at $4.93.
In the spirit of identifying purchasing power parity for trademark applications, please feel free to contact me for an estimate of worlwide trademark filing costs by country for an application including three goods, in a single class, claiming one convention priority. According to IP Estimator software, these costs range from a low of $527 for Afghanistan to a high of $4,030 in the United Arab Emirates. Total costs add up to $281,596 with $177,572 for official/associate fees, $5,300 translation fees, and $98,722 in-house/miscellaneous.
Rodney D. Ryder

Worldwide Trademark Filing Cost Report [The Economist]

Each year, The Economist magazine publishes a "Big Mac Index" based on the theory of purchasing-power parity, under which exchange rates should adjust to equalise the cost of a basket of goods and services, wherever it is bought around the world. To make it simple, their basket includes just one McDonalds "Big Mac" hamburger. The cheapest burger in their chart for January 2006 was in China, where it costs $1.30, compared with an average American price of $3.15. The highest price was in Switzerland at $4.93.
In the spirit of identifying purchasing power parity for trademark applications, please feel free to contact me for an estimate of worlwide trademark filing costs by country for an application including three goods, in a single class, claiming one convention priority. According to IP Estimator software, these costs range from a low of $527 for Afghanistan to a high of $4,030 in the United Arab Emirates. Total costs add up to $281,596 with $177,572 for official/associate fees, $5,300 translation fees, and $98,722 in-house/miscellaneous.
Rodney D. Ryder

Thursday, May 04, 2006

European Patent Filings [The Scoreboard]

According to a press release from the European Commission, the top 25 applicants represent about 18% of the patent applications filed with the EPO. On average, 69% of the applicants at the EPO are granted one patent per year (US: 63%, Japan: 66%). 1% of the applicants receive more than 50 patent grants per year (US: 1%, Japan 2%).
In absolute numbers Germany has by far the highest number of patent applications with over 23 000 in 2005. France follows with 8 034 and The Netherlands with nearly 7 800, while the UK only put in 4 649 applications in 2005. Among their conclusions:
There is a very close link between IPR and the competitiveness of the EUeconomy. A proper, affordable IPR system is important to foster innovation. TheEuropean Inventor of the Year event offers an opportunity to highlight theachievements of European inventors. Knowledge and Intellectual Property Rights(IPR) are core elements of the revised growth and jobs initative. On thisoccasion the following ongoing key Commission policies regarding IPR should behighlighted.
The European Innovation Scoreboard 2005 provides empirical evidence that a lower level of patenting to a large extent accounts for the difference in innovation performance between EU countries and to the innovation gap between Europe, the US and Japan. However, leading Member States have a patenting activity similar to US one; they register twice as much EPO patents as the US, and the US registers twice as much USPTO patents as them. The available data clearly shows that patent indicators are highly correlated to countries global innovation performance. Countries doing well in terms of innovation performance also score high in patenting.
Rodney D. Ryder