Thursday, August 31, 2006

A Brief History of Standards for Patentability

According to John F. Duffy, in "Inventing Invention: A Case Study of Legal Innovation," the chart below summarizes some of different standards for patentable invention that have been employed in the last half millennium:

Obviousness doctrine will be least important in societies where (1) patent rights are expensive to obtain and to enforce, (2) the pace of social change is relatively slow, (3) few inventors are likely to working on similar projects, and (4) patent rights are kept relatively narrow. These conditions prevailed prior to the 19th century, and during that period, a clear conception of obviousness did not exist. As patents became easier to obtain and broader, inventors more numerous, and society less static, the need for obviousness or some similar doctrine grew more dire. Still, the progress toward a worldwide obviousness standard was not linear. . . .

Subjective tests look to the inventor’s own efforts. Such tests have been employed only occasionally throughout history. In the United States, a subjective approach to judging patentability is now precluded by the last sentence of § 103(a). The tests in the right column are objective; they are not contingent on any efforts or qualities of the inventor. Roughly, the tests listed lower in the columns are more difficult to satisfy.

Get more from the IP Central blog.

In other parts of the world, the Japanese Examination Guidelines require consideration of whether a person skilled in the art could have easily arrived at a claimed invention based on the cited inventions after precisely comprehending the state of the art in the field to which the invention pertains at the time of the filing.

The European Patent Office generally applies the "problem-solution approach" in order to decide whether an invention involves such an "inventive step," by

  1. identifying the closest prior art, i.e. the most relevant prior art;
  2. determining the objective technical problem, i.e. determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and
  3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

In the United Kingdom, the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, required

  1. Identifying the inventive concept embodied in the patent;
  2. Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
  3. Identifying the differences if any between the matter cited and the alleged invention; and
  4. Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

The U.S. Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) held that obviousness should be determined by looking at

  1. the scope and content of the prior art;
  2. the level of ordinary skill in the prior art;
  3. the differences between the claimed invention and the prior art; and
  4. objective evidence of nonobviousness.

In addition, the Court outlined factors that show "objective evidence of nonobviousness". They are:

  1. commercial success;
  2. long-felt but unsolved needs; and
  3. failure of others.

Other U.S. courts have considered additional factors as well. See Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 697-98, 218 USPQ 865, 869 (Fed. Cir. 1983) (considering skepticism or disbelief before the invention as an indicator of nonobviousness); Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092, 2 USPQ2d 1490, 1493 (Fed. Cir. 1987) (considering copying, praise, unexpected results, and industry acceptance as indicators of nonobviousness); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 679, 7 USPQ2d 1315, 1319 (Fed. Cir. 1988) (considering copying as an indicator of nonobviousness).

At present, sixteen briefs have been filed before the U.S. Supreme Court in KSR INTERNATIONAL CO. V. TELEFLEX INC., ET AL. where the question presented is

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held "obvious", and thus unpatentable under 35 U.S.C. § l03(a), in the absence of some proven "'teaching, suggestion, or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed."
An entirely different aproach would be to consider the resulting "Level of Invention," defined by TRIZ author G. S. Altshuller around 1946, as a relative degree of change to the previous system (or solution) as a result of solution of inventive problem (one containing a contradiction).

Friday, August 25, 2006

Law Blogs

The explosion in blogging has been felt within the legal field, with lawyers, academics, pundits and even judges introducing blogs of their own. Many of these blogs are interesting, some quite good, and a handful truly useful.

But blogs were not the only law-related Web sites started in 2002. Other notable sites debuted, covering topics ranging from Daubert to domestic violence. In a recent column, I review some of the year's most laudable launches. Among the sites I mention:

Tuesday, August 22, 2006

Innovation and IP Governance

Innovation, governance .. and what?

Intellectual Property Rights: Innovation, Governance and the Institutional Environment is another new IP book published by Edward Elgar. Edited by Birgitte Andersen (Reader in the Economics and Management of Innovation, School, Birkbeck College, London), this book bucks the trend by containing a smaller number of longer essays rather than the larger number of smaller ones.

What the publisher says:
"There is a growing need to understand the role of the regulation of intellectual property rights (IPRs), in order not only to achieve economic performance, growth and sustainable development at corporate, sectoral and global levels, but also to provide a higher quality of life for communities worldwide.

Intellectual Property Rights is cutting edge in addressing current debates affecting businesses, industry sectors and society today, and in focusing not only on the enabling welfare effects of IPR systems, but also on some of the possible adverse effects of IPR systems. [...]

Monday, August 21, 2006

Monitoring Intellectual Property Infringement

Obtaining intellectual property rights in new products is the first step necessary to protect new products from competitors and knock-offs. However, enforcement of intellectual property rights is equally important. In order to enforce intellectual property rights, potential infringers must first be identified. There are a number of sources that should be monitored to identify potential infringers of intellectual property rights. Here are a few suggestions for unearthing unwanted copycats and pesky knock-offs:

1. Tradeshows: The easiest way to identify potential patent and trademark infringers is to monitor industry competitors. Annual tradeshows are the first place to start because that is when new products are introduced into the marketplace. U.S. and foreign companies will display their new products and distribute promotional materials to customers and competitors. If samples are on display, sales and management team members can examine new products up close. Sometimes, companies may even offer product samples that can be further scrutinized.

It may also be beneficial to attend tradeshows in other regions around the world, especially in areas that foster cheap knock-off productions and have challenging intellectual property enforcement procedures. Identifying foreign companies is just as important as identifying U.S. companies, especially if they import infringing products into the U.S.

2. Company Websites: Additionally, company websites provide information on new products. After tradeshows, companies promote their new products via the internet to target the public at large. Large international companies will usually describe their new products, highlight important features or new improvements and identify which markets the products will be sold in.

3. Government Agencies: Information provided to the federal government can also be monitored to identify potential intellectual property infringers. Documents submitted to government agencies such as the United States Patent and Trademark Office (USPTO), the Food and Drug Administration (FDA) and the International Trade Commission (ITC) are made available to the public. For example, using the USPTO website search engines, published and issued patents as well as trademarks and trademark applications can be identified. Also, new drug applications and abbreviated new drug applications (for generics), as well as 510k submissions are available from the FDA.

Other agencies outside of the U.S. should also be consulted, especially if a product is sold internationally. For starters, the World Intellectual Property Organization is a useful resource of international patent applications.

4. Common vendors and Customers: In some instances, common vendors and customers of competing companies will unknowing exchange confidential information regarding new products. Uncovering confidential information regarding a competitor's new product before it is produced or sold can signal that a new product may infringe existing intellectual property rights.

5. Industry Specific Media Content: The prevalence of cable television and the internet has spawned industry specific media content that can also be monitored for new information regarding competing products. Cable television programs that discuss products for particular needs are abundant, and competitors generally advertise their new products during commercial spots or as part of the program's content.

6. Tracking Litigation: Tracking a competitor's court cases may also identify potential intellectual property infringers. In industries that have only a few major players, watching a company's competitor's court cases will likely identify potential infringers of multiple products in the market.

This list is by no means all inclusive. Rather, it is a sample of sources that should be monitored for intellectual property infringers. Lastly, and intentionally omitted from this list, are patent and trademark monitoring services. I do not advocate the use of these services as they are relatively expensive, and many times, they use these same sources to identify potential intellectual property infringers. If you have additional sources that should be included on this list, please feel free to comment.

Friday, August 18, 2006

US Top Ten Patent Cases

Here are the current "Top Ten" from Professor Hal Wegner:
  1. KSR v. Teleflex: § 103 nonobviousness standard
  2. Tamoxifen Citrate: “Reverse payment” settlement antitrust
  3. MedImmune v. Genentech: Licensee patent validity challenges
  4. Microsoft v AT & T: § 271(f) export of unpatented component
  5. Integra v. Merck: Experimental use; safe harbor
  6. Apotex v. Pfizer: DJ invalidity action against drug patentee
  7. Amgen v. HMR: Cybor de novo claim construction review
  8. Scruggs v. Monsanto: Patent misuse – tying
  9. Voda v. Cordis: Transnational patent enforcement
  10. In re Nuijten: § 101 patent-eligibility of claim to “signal

The new term of the U.S. Supreme Court starts on October 2, 2006. "No. 3 MedImmune is the only scheduled patent argument so far for Wednesday, October 4th. At the beginning of the Term, an Orders List will announce further grants of certiorari," writes the Good Professor.

Innovation Patents [Australia]

According to IP Australia's Final Report on Review of the Innovation Patent,
Although it is difficult to objectively measure whether low-level
innovation has been stimulated by the innovation patent, the higher use of the system than was the case for the petty patent suggests that it has to some degree. The innovation patent is predominantly being used by Australian individuals and SMEs for less-knowledge intensive innovations. The innovation patent system is also generally speedier and has lower fees than the standard patent system, although the cost difference is marginal when an agent is

Most of those who made submissions believed that "innovative step" was clearly a lower threshold than inventive step, and was a main reason for the reasonable level of use of the system. The latest opposition decisions by IP Australia support this view, however the level and effectiveness of innovative step can ultimately only be determined by the courts. Also, recent worldwide concerns over a possible proliferation of "trivial" patents creating barriers to innovation mean that the appropriateness of the innovation patent should be regularly reassessed.

Despite some concerns raised in submissions, the application and enforcement processes generally appear to be appropriate. At this stage there appears to be no reason to modify the eight year term, five claim limit or the subject matter covered. However, despite the clear intent of the innovation patent, there does appear to be a risk that a court would interpret the legislation to mean that the subject matter of an innovation patent would have to satisfy a threshold of inventiveness on the face of the specification that is higher than that of innovative step. This would undermine the system and significant modifications would be urgently required. It would be best to have the issue examined before such a situation eventuated.
The Australian "innovation patent" is a protection option, which is designed to protect inventions that are not sufficiently inventive to meet the inventive threshold required for standard patents. The innovation patent is designed to provide an incentive to small business to invest in innovation and it will provide a relatively cheap patent right that is quick and easy to obtain.

Innovation patents are available for most of the types of invention currently covered by standard patents, except human beings, plants and animals or biological processes for the generation of these.

The innovation patent has a shorter protection term than a standard patent - 8 years as opposed to 20.

You are unable to go to court to enforce the innovation patent until it has been examined and certified.

As the innovation patent is granted without substantive examination, IP Australia has not made any checks that the patent is valid. You are able to change an innovation patent to a standard patent in the period before it is granted. The period will, however, be short as innovation patents will be granted after a brief formalities check.

BALASHI Not Primarily Geographically Descriptive of Beer from Aruba

In In re Brouwerij Nacional Balashi (August 2, 2006), the U.S. Trademark Trial and Appeal Board decided that the marks "BALASHI BEER" and "BALASHI" were not primarily geographically descriptive of beer.

As a general proposition, in order for registration of a mark to be properly refused on the ground that it is primarily geographically descriptive of an applicant's goods or esrvices, it is necessary to establish (i) that the primary significance of the mark is that of the name of a place generally known to the public and (ii) that the public would make a goods/place or services/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. . . .

[I]n dealing with the supposed reactions of a segment of the American public, in this case the average American beer consumer and not the unusually well-traveled tourist or even the aficionados of foreign beers, the isolated area or neighborhood of Balashi in the Caribbean island of Aruba is simply so minor, remote and obscure that its geographic significance would not be known or otherwise readily apparent to purchasers of applicant's beer. To be sure, the average American beer consumer, after perhaps quaffing a few "brews" while spending some time lying around on, or at least contemplating a vacation to, the white sand beaches of Aruba that serve as the island's principal tourist destinations, might have occasion to research and/or check out whatever other attractions, including gold mine ruins, a large desalination plant and applicant's brewery, would be of interest as a side trip to the locale of Balashi. The geographical significance, however, of the term "Balashi" would not be apparent without, at a minimum, consulting sources of tourism information. We consequently hold that, on this record, the Examining Attorney has failed to establish that the term "Balashi" is a place name which is generally known, that is, is not remote or obscure in its geographical significance, to American beer consumers and thus has not shown a reasonable basis for concluding that the marks "BALASHI BEER" and "BALASHI" are primarily geographically descriptive of applicant's goods within the meaning of the statute.

Aruba is a 32 km long island in the Caribbean Sea, 27 km north of the Paraguaná Peninsula, Falcón State, Venezuela, and it forms a part of the Kingdom of the Netherlands.

Brouwerij Nacional Balashi was founded in 1996 by one of Aruba’s largest companies, MetaCorp. Construction started in 1998 and the first beer was brewed eight months later in May 1999. In 2001, Balashi, the flagship beer for the company, won a gold medal in the prestigious “Monde Selection” in Brussels. Balashi was the brewery’s first uniquely Arubian product, with malt imported from Scotland, hops from Germany, and made using the island’s water. Balashi contains no artificial additives, and is now being exported to Curaçao and Bonaire.

Balashi has been described as tasting like a Dutch pilsner, most likely due to the Dutch heritage of its native Aruba.

Collaborative Website Evidence to Be Considered in Context for Trademark Registration [US]

In response to a letter from the President of the International Trademark Association concerning "Use of in Trademark Examination, U.S. Commissioner for Trademarks Lynne Beresford stated on August 7, 2006 that the USPTO's Office of Trademark Quality Review and Training will give examinng attorneys guidance and instruction about the probative value of collaborative web sites with permissive edits. "Such evidence must be considered in light of the natue of the mark, the identified goods and services, the existence of corroborating sources, or the lack thereof," she wrote.

The United States Patent and Trademark Office appreciates your input with respect to the disclaimers and warngs as to the validity or accuracy of information contained on web sites that feature content submitted by members of the public rather than professionals with expertise in particular subject areas.

You request the USPTO to establish a policy that would prohibit the use and citation of such websites by examining attorneys.It is the position of the USPTO that questions of descriptiveness, misdescriptiveness, geographic descriptiveness, scandalousness and other grounds for refusal under the Trademark Act are to be determined on the totaity of the evidence of record. Should such evidence include entres from websites that may contain inaccuracies or unverifiable content, it must be considered in context and evaluated on a case by case basis. . . .

The USPTO continues to support its policy relating to any evidence acquired
from the Internet, as outlned in the Trademark Manual of Examing Procedure (TMEP) Section 710.01(b)(Articles downoaded from the Internet are admissible as
evidence of inormation available to the general public, and of the way in which a term is being used by the public. However, the weight given to this evidence must be carefully evaluated, because the source is often uknown. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TAB 1998)).

Wednesday, August 16, 2006

To Google [or perhaps not!] - Google and Genericide

Law Wire tries to draw your attention to this link, which shows just how much Google is suffering for its popularity.

For those too lazy to follow the link, search engine Google has instructed its lawyers to chase publishers who use 'to google' and other generic uses of the G-word - even though it is now in Merriam-Webster's Collegiate Dictionary. Cease and desist letters are being sent to media, aking them not to allow the use of Googling and apparently making helpful suggestions as to what else they might use instead.

Wikipedia on "to google" here
Other G-things here: 'G' Men, Gmail, G force, G-string, G-wizz [ not for people who are allergic to train-spotting].

Tuesday, August 15, 2006

PCT Update [August 2006]

Regulations under the PCT in Japanese, Russian and Spanish

The Regulations under the PCT, as in force from 1 April 2006, are now available in Japanese,
Russian and Spanish at, respectively:

The texts in English, French and German are also available at, respectively

Delays in the Processing of International Applications Filed with RO/EP

Due to the deployment of a new electronic system for the processing of PCT applications filed (both on paper and electronically) with the European Patent office as receiving Office, there may be a delay in the receipt by applicants (or their agents) of Forms PCT/IB/301 and PCT/IB/304 with respect to international applications.

Survey on the Patentscope Search Service

WIPO is conducting a survey on the Patentscope Search Service (which provides
access to over one million international patent applications at at

Requesting Early entry into the national/regional phase

According to PCT Articles 23(2) and 40(2), designated/elected Offices may start the processing and examination of the international application earlier if the applicant makes an express request to the Office(s) concerned. In order for that request to be effective, the applicant must have performed, or must perform at the same time, the acts necessary for entry into the national phase. It is recalled that those acts which must be performed, if applicable, by the applicant before the start of the national phase:

  • Payment of the national fee;
  • Furnishing of a translation, if prescribed;
  • Furnishing a copy of the international application, if the international
    application has not yet been made available to the designated Offices under PCT Article 20, and if required by the Office concerned
  • And, as is applicable only in very few cases: the furnishing of the indication of the name and address of the inventor if they were not given in the request when the international application was filed, but the designated Office allows them to be given at a time later than that of the filing of the national application.

More information is available from the PCT newsletter for August 2006 at

Thursday, August 10, 2006

Intellectual Property Law Wiki [UK]

David Pearce has created a website at that he says "contains an up to date complete consolidated, linked, annotated and searchable version of the UK Patents Act and Rules." According to David,

It is intended to be of use to anyone who has ever found it difficult to find their way round the often labyrinthine structure of the law at present, and in particular to prospective patent attorneys about to sit either the foundation or finals examinations.Also available (although not completely linked yet) is the Registered Designs Act 1949 and associated Rules. As of the 1st October, the Registered Designs Act will be amended by the Regulatory Reform (Registered Designs) Order 2006, and the Designs Rules will be replaced by the Registered Designs Rules 2006. The changes made to the Act have been made already (indicating which sections are to be changed), and the new Rules will be properly incorporated into this site shortly.

This being a wiki site, anyone can edit any page as well as create new pages. If you don't know what a wiki is, have a look here. Collaboration is the key to wiki sites, so do contribute if you have something to add. The more contributions, the more useful this resource will become. If you sign up as a member, you and others will be able to see what edits you have made.

"Wiki-wiki" means "hurry quick" in Hawaiian. The word is sometimes interpreted as the "backronym" for "What I know is," which describes the knowledge contribution, storage and exchange function of this format.

Australian Business Method Claims Require "Physical Effect"

Thanks to Bill Bennett for bringing the Australian Full Federal Court decision in Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006) to our attention where the Full Federal Court concluded (at para 32) that patent claims for business methods require "physical effect:"

32 A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required. In NRDC, an artificial effect was physically created on the land. In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all.
In Bennett's view,
It is noteworthy that the Full Federal Court expressly approved of earlier cases
where the methodology was implemented in a computer environment such that
performance of the patented method resulted in a "change of state or
information" in a part of the computer. It would seem clear that methods
which are implemented in a computer or other physical environment remain
patentable, and it is only those methods which exist only in an abstract or
intangible form which are excluded from patentability.
The Full Federal Court’s full decision can be reviewed at

The First Ten Comandments of (Individual) Inventors

  1. Stay away from invention marketing companies that advertise on radio and late night TV.
  2. Keep good records about your idea . . . some day they may be the back up you need to prove YOUR idea is YOURS!
  3. Do your own patent search.
  4. Build a model.
  5. Have your invention evaluated by a non-biased professional (even if your Mom’s in
    the business, go to someone else!)
  6. Read all you can about new product development.
  7. Network with other inventors. Join a local inventors’ organization.
  8. If your patent search looked promising (see #3), make an appointment with a
    patent attorney.
  9. Do what you do well and hire pros to do the rest.
  10. Don’t fall in love with your invention but if you’re really sure you’ve got a winner
    (see #5), hang in there!

Download Volume 1, "Inventing 101: What Every First Time Inventor MUST Know!" FREE during the month of August to celebrate National Inventors' Month, from the the folks at Inventor's Digest. (Sign up for their Free E-News Alerts.)

Monday, August 07, 2006

Baker & McKenzie Goes After Potential Infringers the World Over

This May, back when Italians were just beginning to dream about winning the World Cup, Baker & McKenzie started a little scrimmage of its own. Its client, Infront Sports & Media AG, just happens to own the exclusive broadcast rights to the World Cup games, and the firm's IP lawyers were determined to block any interlopers.
To that end, a letter signed "Baker & McKenzie" was sent to thousands of Web sites and Internet service providers, warning them of the perils of unauthorized downloading. But the aggressive move backfired when Boing Boing, a high-tech blog with 1.75 million daily visitors, posted the letter and proceeded to trash the firm's good name.
The incident begs the question: Was it worth generating bad publicity for the firm and its client, to achieve the goal of protecting a copyright?
Baker & McKenzie partner Michael Hart stands by the strategy. "I think the letters had some benefit, definitely," says Hart. "We know of various instances of people who hadn't been aware [of Infront's rights] saying, 'Thank you for letting us know.'" Hart declined to name specific positive responses, citing client confidentiality, but he noted that the 4,500 letters sent to entities in 24 countries produced very few negative responses. Hart says the letters were simply a polite attempt to notify Web sites of the client's rights.
But Boing Boing felt the letter's tone was ridiculous. In addition to threatening that Infront and its agents would be "taking strong and active measures ... both civilly and criminally" to prevent unlawful downloading, the firm said it would be "actively monitoring" sites for such illegal activity. In response, the site said that it would monitor Baker & McKenzie's Web site for instances of "wasting clients' money by sending out unnecessary and obnoxious warning letters." Not surprisingly, readers and other blogs jumped into the fray. The commentary included everything from nasty epithets about the law firm to support for the aggressive strategy.
IP lawyers are also divided. Some question the efficiency of a preemptive approach, given the Internet's scale and the fact that Internet service providers enjoy broad protection under the law. "[A preemptive letter] doesn't put you on some sort of duty to police your site," says Wilson Sonsini Goodrich & Rosati partner Catherine Kirkman.
In the United States, Kirkman explains, the Digital Millennium Copyright Act generally protects online providers and many Web sites from copyright liability over material contributed by others: As long as providers respond immediately to any notice of specific infringement by taking down the material, these parties are considered neutral.
Hart concedes that Infront would still bear the responsibility of notifying service providers in the event of actual infringement. But he says the letters served an educational purpose. "We felt that by getting people aware of this issue in advance it would speed up the process [of taking down material]."
And maybe that's reason enough for rights holders to contemplate the preemptive approach, say some IP veterans. "The Internet happens so fast, and the distribution of copyrighted materials is so rapid and virile," says Russell Frackman, a partner at Mitchell Silberberg & Knupp and the lawyer who represented the Recording Industry Association of America in its suit against Napster, Inc. "Frequently [regular] notice and takedown letters are closing the barn door after the horse has already escaped."
Perhaps Baker & McKenzie succeeded in stopping a lot of shots on goal.

Sunday, August 06, 2006

Heard the one about intellectual property? [Jokes and IP]

COMEDIANS taking part in this year's Festival Fringe are to be offered classes on how to stop their jokes being stolen by rivals.

A leading London law firm is travelling to the city to advise up-and-coming talents on guarding against plagiarism.
It follows a growing number of disputes between high-profile comedians in recent years, including an Edinburgh stand-up who demanded a written apology from comedian Dara O'Briain last year after claiming that O'Briain stole his joke and performed it on TV show Have I Got News For You.
Among the firm's top tips in the fight against "intellectual property theft" is that every comedian should insert their copyright on to a written copy of everything they perform. It means that should their own original material be copied they can take the offender to court because they can prove that they had it copyrighted first. Lawyers Hill Dickinson will be holding the "entertainment surgeries" on two weekends during the Festival, August 19/20 and August 26/27, at the Pleasance Dome in Bristo Square.

It will be sending intellectual law specialists to the venue to give the free advice and will also be advising comedians on what to look for in their first contract offer and how to pitch ideas to people without them being stolen.
Charlotte Harris, a barrister and intellectual property specialist at Hill Dickinson, said that not enough people are taking steps to ensure they have a legal right of ownership of their own material.
She said: "Often comedians in particular find that once they've performed a script or a joke it is in the public arena and their ownership of it has gone. But there is a need for comedians, like anyone else, to protect the work that they do and claim it as their own. To do that, they need to do something that proves that they have created it before someone else has.
"What people often don't realise is that they can copyright something quite easily by putting the copyright logo on to their script and writing their name and the date that it was written. It's not like a trademark - you don't need to send it away and register it or anything like that."
Ms Harris says that at the moment many people do not take action against joke theft and instead just accept it as a part of the industry.
One man who didn't was Mac Star, a regular at The Stand comedy club in York Place, who wrote to Dara O'Briain's management company after seeing a joke he claims he wrote performed on Have I Got News For You.
He said: "People come to Scotland and steal jokes from comedians here. I hope this will make people recognise it's going on and make it stop."
Although no precedent of a court case is known of, Ms Harris says that asserting their copyright on a script can allow the writer a strong position to write to a comedian and tell them to stop using the joke or face prosecution under the Copyright, Designs and Patents Act.
She added: "In my experience, as soon as you start exerting your legal right people will back off. And no professional wants to be known as someone who plagiarises."
But Tommy Sheppard, director of The Stand, is not sure the classes will be of any real benefit. He said: "It seems like a daft concept - the days of 'an Irishman, a Scotsman and an Englishman' jokes are long gone.
"It's all about the story nowadays and comedians tend to weave a story around the audience, not stand up and tell joke after joke.
"You can't copyright that kind of story. And when you perform it you need to accept that it becomes common property anyway - you can't set ownership of it."
THE comedy fraternity is not all a barrel of laughs if these joke-theft claims are anything to go by:
• Edinburgh comedian Mac Star demanded an apology and payment of around £1500 for a joke he claimed Dara O'Briain used on Have I Got News For You, whose production manager insisted they didn't steal the joke.
The joke went: "Wouldn't Hitler have been crap at the game paper, rock and scissors?" (He then mimes the game before breaking into Hitler's salute, which is like the symbol for paper.)
"Winston Churchill should have challenged him to a game." (He then holds his arm in the air mimicking Churchill's V-sign victory salute, which looks like scissors, which beats paper.)
• Jim Davidson also denied stealing fellow comedian Jimmy Carr's joke and refused to give an apology. Carr then consulted lawyers about further action.
• Entertainer Bob Monkhouse was the victim of a different kind of joke theft when his book of jokes was stolen. A BBC executive was arrested in connection with the theft, in 1996, and a man who eventually returned them got a reward of £10,000 from Monkhouse.

Friday, August 04, 2006

UK Patent Office - Inventive Step

Here are the "Preliminary Conclusions" from the UKPO's "Consultation on the inventive step requirement in United Kingdom:"
The overall message of the responses appears to be that respondents are happy with our current practice. Where there are complaints, these tend to be confined to specific scenarios rather than ‘across the board’ failings. For example the ‘obvious to try’ formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents involved in that sector.

There was some concern about lack of consistency either within the UKPO itself, between the UKPO and the UK courts, or between the UKPO and Europe, but again these were limited to particular situations rather than applying generally. Several comments were made that the quality of search is critical and this may well be a focus for future work. It certainly seems that the perceived difference in ‘strictness’ between the UK courts and UKPO is largely due to the more exhaustive prior art investigation that is done during post grant litigation of a patent.
The language of patent applications was a concern to some respondents with equests to simplify legalese in applications. There also appeared to be a lack of understanding among some respondents of the mechanism provided by section 21 of the Act for concerned third parties to make observations regarding the patentability of applications being considered.
As expected there were comments emphasising that a detailed analysis and well reasoned objection are vital in dealing with inventive step effectively. This analysis should include detailed consideration of such factors as why documents or references would be combined by the man skilled in the art. It is clear that a comprehensively argued objection is beneficial to the applicant and to the overall processing of the patent and several respondents highlighted this in their replies. However it must be remembered that there are occasions (such as where an overly broad initial claim islikely to be heavily amended) when a less detailed objection might be appropriate.

New U.K. Procedure on Relative Grounds for Refusal Expected in October 2007

In February 2006, the UK Trade Marks Registry, published a consultation paper on how to deal with the relative grounds for refusal contained in Section 5 of the Trade Marks Act 1994 ("the Act").
The consultation period ended on 17 May 2006 and the Registry announced on August 2, 2006 that
The next steps will to be to flesh out Option 5 in more detail and to introducethe legislative and administrative changes to bring it to fruition. This willinvolve further consultation with our users on the procedural rules we intend tointroduce, which will cover the procedures for notifying the applicant of anyrelevant marks identified in the official search, how long the applicant willhave to withdraw or restrict his application before it is published, and thecircumstances in which owners of earlier trade marks will be notified of laterconflicting marks. We anticipate that this process and the necessary changes tothe internal systems of the Trade Mark Registry of the Patent Office will takesome time to complete and, therefore, we expect the new regime to come intoforce in October 2007. Under the current U.K trademark regime, if the Registry finds an earlier mark that it considers likely to be confused with the new trade mark, it will "cite" the earlier mark as a reason to refuse registration of the later trade mark. Unless the applicant can persuade the Registry that they have misjudged the likelihood of confusion or can otherwise overcome our objection (for example, by gaining the consent of the owner of the earlier mark), registration is refused on what are known as ‘relative grounds’.
The owner of the earlier mark does not have to ask to do this, it is done automatically, whether or not the owner of the earlier mark is concerned about the later trade mark.The proposed Option 5, (Search and notify applicant and earlier mark's owner) places the onus on the applicant to make an informed decision on whether the application should proceed. The registrar would not raise any objection based on the existence of earlier marks. However, in this option the Registry would also notify the owners of any earlier marks that they have advised the applicant that may be in conflict. This will alert the owners of these marks to the prospective registration of the application and thus allow them to lodge an opposition. Receiving such notifications could be made optional.

Therpeutically Effective Amount Did Not Require Healing

In Amgen, Inc. v. Hoechst Marion Roussel, Inc. (August 8, 2006) the Federal Circuit disagreed with the district court’s construction of "therapeutically effective amount" in claim 1 of the patent to the extent that it was limited to EPO products that have one of the in vivo effects listed in the specification and that also increase hematocrit. The appellate court also disagreed with the district court’s conclusion that the claim was limited to EPO products that may be used to treat patients with the disorders listed in the specification.According to Circuit Judge Schall,
Based on a reading of the claims in light of the specification, it appears that the patentee used the words "therapeutically effective" in order to broadly claim a pharmaceutical composition with a wide range of effects. Those effects do not necessarily include curing disease in humans. During the prosecution of the ’422 patent, in an office action response filed October 23, 1997, the patentee noted that recombinant EPO, like that found in the claimed invention, "is the first therapeutic product which can be used to effectively treat hundreds of thousands of patients who suffer from anemia and other disorders involving low red blood cell counts." In our view, this statement merely lists some of the uses of the invention, without restricting the scope of the invention. . . .On remand, the district court should utilize the following revised construction of "therapeutically effective:"
A therapeutically effective amount is one that elicits any one or allof the effects often associated with in vivo biological activity of natural EPO, such as those listed in the specification, column 33, lines 16 through 22: stimulation of reticulocyte response, development of ferrokinetic effects (such as plasma iron turnover effects and marrow transit time effects), erythrocyte mass changes, stimulation of hemoglobin C synthesis and, as indicated in Example 10, increasing hematocrit levels in mammals.In his dissent, Chief Judge Michel argued that the term means more than simply eliciting in vivo biological effects:
Significantly, I note that the words "therapeutically effective" are conventionally employed in the pharmaceutical arts to indicate that the claimed pharmaceutical product has utility in the treatment of a human disease where such treatment tends to cause the "healing" or "curing" of the disease. The patentee, I think, intended to invoke that very convention. While the majority might be correct that the '422 patent is not necessarily limited to the exact class of patients described in the specification (as opposed to other blood disorders associated with low hematocrit levels), the district court correctly recognized that it would be "foolish to construe a term such as 'therapeutically effective,' without reference to a class of patients for which the product is intended to be 'therapeutically effective.'" Amgen III Validity & Literal Infringement Judgment, 339 F. Supp. 2d at 237.In his view, the claim should have therefore been properly construed as valid over the Goldwasser reference, which describes a prior art compound eliciting biological activity without curing.

Stanford Law Professor Pens First IP Legal Thriller

Over his 39-year career as a leading academic in the field of copyright, Stanford Law professor Paul Goldstein's work has been required reading for legions of intellectual property law students and practitioners. But his latest writing is attracting a very different fan base -- including Goldstein's barber of 20 years.
"He called me up and he said, 'This novel is terrific. I'm recommending it to all my customers,'" Goldstein says. "And I said, 'Wow, nobody ever called me up and said that about my treatise.'"
Goldstein's first novel, a legal thriller titled "Errors and Omissions," is also the first in the genre to be set against the backdrop of intellectual property law and practice.
The Lillick Professor of Law at Stanford, Goldstein is also of counsel to Morrison & Foerster. The novel is the first in a two-book contract with Doubleday. Goldstein is currently on a book tour and writing the sequel.
The book's hero, IP litigator Michael Seeley, is a brilliant attorney and devoted champion of artists' rights whose alcoholism has sent both his career and personal life into a sharp downward slide.
Initially asked by a Hollywood studio to write an opinion to verify that it owns the rights to its blockbuster franchise of "Spykiller" films, Seeley is ultimately drawn into an authorship mystery that winds back to Hollywood's communist blacklist in the 1950s and to Nazi-occupied Europe a decade before.
Goldstein says the idea to write a novel "has been percolating for about 50 years."
At age 12, Goldstein started writing a work of fiction set in 17th century Holland. Stymied after three pages, he says he was given some advice by his mother that is often given to writers: "Write what you know."
After publishing a long list of seminal casebooks and law review articles on intellectual property rights, Goldstein wrote his first trade book, "Copyright's Highway: From Gutenberg to the Celestial Jukebox," in 1995.
"That gave me the taste for trying to explain an area of law in an engaging way to general readers," he says. "For the first time, I had to write words that would compel the reader to turn the page."
The Publisher's Weekly review of the book discussed a chapter that the reviewer wrote "improbably reads like a legal thriller," Goldstein recalled. "That lit the spark. I thought, maybe I can do this."
The particular spark for "Errors and Omissions" came several years later, when Goldstein worked on the trial team defending MGM and United Artists' rights to the James Bond franchise against Sony Pictures, which was developing a competing Bond franchise with the consent of a writer who worked on the film treatment for "Thunderball."
"It was a billion-dollar, bet-the-company case involving copyright," he says.
The settlement in 1999 was a victory for MGM/UA, and the case led Goldstein to ask what he says is "the question at the threshold of every novel: 'What if?' What if this had been a different type of claim?"
Michael Seeley, the novel's protagonist, is not based on any one attorney Goldstein has known, he says.
"I knew at the outset that, given the way the story was structured, I needed a guy whose career, whose professional life was on the ropes. Because I wanted him to come under pressure to do things that ordinarily, morally, he wouldn't do," Goldstein says.
"I've been practicing law for almost 40 years. So I've met lawyers who are more or less on the ropes," he says. "And I would imagine that there are elements of some of them in Michael Seeley."
Though troubled, Seeley's character is ethical, Goldstein says. "The most important thing in the world to him is practicing law. He's got a real soft spot for the underdog, and he doesn't want to give that up."
Seeley's idealism about artists' rights is inspired by some real-life colleagues, "some here, some abroad," Goldstein says. "You tend to find more of them in Europe -- Germany and France. But there are plenty of lawyers in this country who are absolutely devoted to notions of authors' rights."
As Seeley races against time and enemies, his search for the true author of the original "Spykiller" screenplay takes him to Europe, and the reader witnesses the protections of copyright law stretching across international borders.
"One of the few things that separates U.S. copyright from copyright in Europe is the extent to which we protect moral right -- the author's right to the integrity of his work, or the right to attribution of the work," Goldstein says. "In Europe, it is almost a sacred right."
At a key point in the novel, Seeley seeks help from a German lawyer, Reiman, a character who personifies this tenacity -- and even endures bodily harm to protect the attorney-client privilege.
"Reiman is very popular among lawyers," Goldstein says. "I like him too."
The writing process for "Errors and Omissions," was much different than for his non-fiction work, Goldstein says.
"Unlike 'Copyright's Highway,' which was self-consciously an attempt to introduce general readers to an area of law that I love, in this book, my object was to tell a story, and only secondarily, to explain anything about IP," he says. "As it became necessary to do it to advance the story, I did it."
Through the editing process, Goldstein did something that likely seemed unnatural to a legal scholar: He took the law out of his work. He estimates that between the first and the final draft of the novel, "the amount of law got reduced by around 80 percent."
Slimming the legal content was a particular challenge, he says. "I do have a reputation as an academic. You have some poetic license, but I did want to get it right."
"I didn't want this to be a situation where people said, 'Hmm, let me think this one through.' I just wanted them to turn the pages," Goldstein says. "The law that's there is all authentic and realistic. But I really trimmed it down."
Writing this particular novel also demanded a fair amount of historical research -- something for which Goldstein was well equipped. "Teaching has taught me how to do research fairly efficiently," he says.
He found the subject of Hollywood's blacklist "a joy" to investigate.
"I knew about the blacklist atmospherically. When I was growing up it was something that was talked about in my household. I knew it was not a period in which Hollywood covered itself with glory," he says.
Writing the novel itself took about five years, and required balancing fiction writing with teaching, scholarship and other commitments, Goldstein says. He stole spare moments in airport Red Carpet lounges, on planes -- even, he admits, in faculty meetings.
"It took over a good part of my interior life," he says.
Concerning the plot of the second Seeley novel, Goldstein is under contract not to reveal too much. Part of the action will be centered in the San Francisco Bay Area, he says, specifically in Silicon Valley.
"I am really pleased with the way it's going," Goldstein says. "Michael Seeley is having more problems."
Goldstein does see the work as a potential series. "When I first started writing it, I didn't even know there would be a last page," he says. "But, halfway through the drafts, I shared it with a few people, and they said 'you know, he's really an attractive character.' And that was interesting and important to me. And I thought, you know, I could see him getting into trouble in other books. That would be fun."
Goldstein has retained the movie rights to the story, but there are no plans yet for Michael Seeley on the silver screen.
"That would be an interesting thing to think about, should it come along," Goldstein says.

USPTO Forms [Updated]

The following "fillable" PDF forms were updated by the U.S. Patent and Trademark Office during July 2006:
SB01 Declaration for Utility or Design Patent Application
SB01A Declaration (37 CFR 1.63) for Utility or Design Application Using An Application Data Sheet (37 CFR 1.76)
SB02 Declaration (Additional Inventors) and Supplemental Priority Data Sheet
SB05 Utility Patent Application Transmittal
SB08A (pg 1) and SB08B (pg 2) Information Disclosure Statement by Applicant
SB16 Provisional Application for Patent Cover Sheet
SB25 Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application
SB26 Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patensign Patent Application Transmittal
SB30 Request for Continued Examination (RCE) Transmittal
SB32 Request for Oral Hearing before the Board of Patent Appeals and Interferences
SB62 Terminal Disclaimer to Accompany Petition (Period Specified)
SB63 Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)
SB64 Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b)
SB64a Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))

A fillable PDF form is a PDF file that contains fillable form fields. Someone using either the full version of Acrobat 5.0, or Acrobat 6 Professional must add these. Once a PDF has fillable form fields, anyone using Adobe Reader, Adobe Approval, or Adobe Acrobat will be able to fill out the information on that PDF.

The USPTO has also updated or added various other nonfillable PDF forms. Why all of the forms aren't fillable is beyond me. It is relatively easy to add the form fields to the image. In fact, I would be pleased to convert any of the USPTO's nonfillable form to a fillable format which is useable by clients at no charge.

Dependent Claim Failed to Specify a Further Limitation

A technical claim drafting problem in Pfizer, Inc., et al. v. Ranbaxy Laboratories, Limited, et (Fed. Cir. ; August 8, 2006) led to the invalidity of Claim 6 of U.S. Patent No. 5,273,995 under 35 U.S.C. § 112, ¶ 4, which requires

a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. Dedpendent claim 6, with intervening claims 1 and 2, recited
1. [R-(R *,R*)]-2-(4-fluorophenyl)-.beta.,.delta.-dihydroxy-5-(1-methylethyl)-3-phenyl-4-[(phenylamino)-carbonyl]-1H-pyrrole-1-heptanoic acid or(2R-trans)-5-(4-fluorophenyl)-2-(1-methylethyl)-N,4-diphenyl-1-[2-(tetrahydro-4-hydroxy-6-oxo-2H-pyran-2-yl)ethyl]-1H-pyrrole-3-carboxamide; orpharmaceutically acceptable salts thereof.
2. A compound of claim 1 which is [R-(R*R*)]-2-(4-fluorophenyl)[(phenylamino)carbonyl]-1H-pyrrole-1-heptanoic acid.6. The hemicalcium salt of the compound of claim 2.In a footnote, the court acknowledged that, theoretically, a claimed acid could be liberally construed to include the corresponding salts. See Merck & Co., Inc. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003).
But here, given the absence of the "pharmaceutically acceptable salts thereof" language which was used in claim 1, the intrinsic evidence would not have supported such an interpretation of claim 2.However, according to Chief Judge Michel,
We recognize that the patentee was attempting to claim what might otherwisehave been patentable subject matter. Indeed, claim 6 could have been properlydrafted either as dependent from claim 1 or as an independent claim—i.e., "thehemicalcium salt of atorvastatin acid." But, we "should not rewrite claims topreserve validity." Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364,1368 (Fed. Cir. 2005); see also Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.Cir. 1999) ("[I]f the only claim construction that is consistent with theclaim's language and the written description renders the claim invalid, then . .. the claim is simply invalid.").
Ranbaxy correctly argues that claim 6 fails to"specify a further limitation of the subject matter" of the claim to which itrefers because it is completely outside the scope of claim 2. We must thereforereverse the district court with respect to this issue and hold claim 6 invalidfor failure to comply with § 112, ¶ 4.
Although the district court was reluctant to find the fourth paragraph of §112 to be an invalidating provision, doing so does not exalt form oversubstance. Rather, it is consistent with the overall statutory scheme thatrequires applicants to satisfy certain requirements before obtaining a patent,some of which are more procedural or technical than others. See, e.g., 35 U.S.C.§ 102(b) & (d) (establishing statutory one-year bars to patentability); 35U.S.C. § 111(a)(2)(C) (requiring submission of an oath by the applicant); 35U.S.C. § 111(a)(3) (requiring submission of a fee with the application); 35U.S.C. § 116 (requiring joint inventors to apply for a patent jointly).

Thursday, August 03, 2006

Legal Tactics 'R' Us: Internet as Witness Turns Trial

Legal Tactics 'R' Us: Internet as Witness Turns Trial
How Toys "R" Us won its case against using Amazon's own live Web site
When, Toys "R" Us, Inc.'s Internet retail business, sued to end their Internet partnership for breach of contract, it faced a key strategic decision: Could it gamble on using its opponent's own Web site as a key trial witness? Toys "R" Us had to prove to the court that Amazon was violating its exclusivity rights under their contract. The only way to effectively do this was to show the court, live, what was happening in real time on

The decision was risky. There was a chance that the Amazon site would not show the violations. It also was not clear whether the live screenshots showing a particular violation -- which, of course, would not have existed during the discovery phase of the lawsuit -- could even be admitted as evidence.
In the end, however, Toys "R" Us was successful: The court not only allowed the use of the live Internet feed as a witness in the trial, but it also found in favor of Toys "R" Us, and on March 31, 2006, entered a judgment order terminating the contract. This article explores how and why Toys "R" Us decided to take this successful gamble.
In August 2000, Toys "R" Us signed a 10-year agreement with Amazon to become its exclusive retailer of toys, games and baby products. In 2003, however, Toys "R" Us began complaining that some of its competitors were also selling toys, games and baby products on Amazon responded by stating that it read the term "exclusive" to mean that others could not sell the specific products which Toys "R" Us offered (although Amazon had been allowing them to do so by the hundreds), and if Toys "R" Us elected not to sell a specific item, Amazon could invite other merchants to its site to offer those products. Mediation in the summer of 2004 failed, and Toys "R" Us was left with no choice but to seek termination of the agreement.
Immediately after the complaint was filed, Toys "R" Us asked for interim injunctive relief to prevent things from getting worse. The court took Amazon at its word and only prohibited it from allowing third parties to sell the same products that Toys "R" Us was offering until the meaning of "exclusivity" could be determined at trial. There was a real danger that the court's preliminary injunction, which allowed scores of Toys "R" Us' competitors to trade on the Toys "R" Us brand to draw traffic to their boutiques, would form the model for a permanent injunction that could destroy the value of the Toys "R" Us brand.
It was this concern over potential harm to the Toys "R" Us brand that led to the unique, and perhaps unprecedented, decision to use Amazon's own Web site as a witness at trial. By going live to early and often during pre-trial hearings, and, most importantly, during the 3-month bench trial, Toys "R" Us hoped to show the court precisely what customers were seeing at that very moment: toys, games and baby products being sold by third-party retailers alongside the Toys "R" Us' contractually exclusive assortment on
The issue was not whether Toys "R" Us could find third parties selling the same product, but whether they would be found often enough, and in sufficient quantity, to show that Amazon's new reading of the agreement -- and the way it was implementing that interpretation -- could not be what the parties originally intended. The strategy would call for Amazon either to admit the violations on its Web site, or to discredit this evidence and thus discredit itself. Either conclusion supported the Toys "R" Us position that the agreement could not be enforced by a permanent injunction and must be terminated.
The pre-trial hearings seeking interim relief allowed Toys "R" Us to test its strategy. Using laptop computers, wireless modems, projectors and screens, Toys "R" Us took the court directly to the Internet and conducted searches -- just like a customer sitting at home would. For example, by running a search for a "Magnadoodle" toy on before the court, a list of search results appeared containing a Magnadoodle sold by Toys "R" Us and one sold by a third party. This same exercise was repeated several times in pre-trial hearings. It is perhaps an understatement to say that the court found it very persuasive to have a real-time search conducted on Amazon's own Web site show third parties selling toys, games and baby products in violation of the court's injunction.
However successful the tactic was during pre-trial hearings, though, using the Internet as a witness during trial presented additional challenges. For one, Amazon could have changed its search methodology and altered the appearance of its site to mask its violations. And, while Amazon loaded its site with thousands of competing toys, games and baby products, it was doing a better job of policing the exact duplicates that Toys "R" Us had been able to find during the injunction hearings. Finally, in terms of admissibility, courts typically restrict evidence to those matters that have been shared with the other side during pre-trial discovery. Yet there was no way that Toys "R" Us could anticipate what would be on the Amazon site during trial in the fall when discovery closed at the end of June.
Just as importantly, Toys "R" Us also needed to win the argument that going live to the Internet during trial would not be unfair or surprising to Amazon. This was the most difficult legal hurdle. Toys "R" Us argued that if Amazon knew how its site was operating, it could not be "surprised" by a live visit and, therefore, the object of pre-trial discovery -- apprising your opponent of the evidence to be used at trial -- was met. On the other hand, if Amazon did not know what was happening on its own site, then how could the court expect a permanent injunction to work when there was no certainty that Amazon could comply? The court allowed Toys "R" Us to proceed with its unique strategy.
There was also the technological problem of bringing an Internet "witness" live to court each day and creating a record that would withstand appellate scrutiny. While architecturally inviting, the courthouse in Passaic County had older wiring that would not transmit the amount of data contained on the Amazon Web site relatively quickly. Without a sufficient hard-line connection, the most efficient way to bring the Internet live into court each day was through the use of wireless modems. Toys "R" Us therefore equipped its laptop computers with wireless modems to connect to Amazon's Web site, run its searches and "capture" the screenshots.
The ability to "capture" screenshots was critical to using the Internet as a witness. A trial simply could not be conducted without the ability to show, capture, mark as an exhibit and then introduce into evidence each screenshot that was shown in court. Toys "R" Us relied on a program called "Snagit," which saved each screenshot displayed in court in a matter of seconds. Each day after court was adjourned, Toys "R" Us would print and mark color copies of each screenshot and submit them to Amazon and the court. More than 100 of these "snagged" screenshots were moved into evidence during the course of the trial.
As for the risk that Amazon could change its site on a whim (as happened several times during the trial), each night Toys "R" Us scoured for violations of the interim orders and saved screenshots of third-party products it planned to use the next day. A few minutes before Toys "R" Us would ask a witness about a specific third-party product, it would check from a second laptop in the courtroom to see if the offending product was still offered. If so, Toys "R" Us would project the live image on a screen commanding one side of the room. Its counsel would ask the witness -- usually an Amazon executive -- whether a simple search on had returned both the Toys "R" Us product and the third-party product. The answer was always "yes," despite the provisions of the agreement and the injunction that prohibited such sales. When an Amazon witness denied that identical screenshots reflected identical products despite the images before everyone's eyes, the testimony seriously undermined Amazon's overall credibility, Toys "R" Us would order the products and bring them into court, confirming what the Internet had shown but the human witnesses had denied. While Amazon's CEO was on the stand, revealed that Amazon had posted more than 700 toys from Target, one of Toys "R" Us, Inc.'s biggest competitors, on the Amazon site (they were removed before the end of his testimony.) While another witness was discussing the importance of the Toys "R" Us brand, the Web site revealed that Amazon had posted adult-themed toys in its online toy store, incorrectly saying they were being offered for sale by Toys "R" Us (They were taken off the site minutes after the witness left the stand.)
In the end, it was the Internet that showed the strategic alliance had to come to a close. The court found Toys "R" Us' strategic decision to make its opponent's own Web site a key (and recurring) witness "unique but invaluable," and said the Internet "cannot be ignored as a tool for fact finding." The lesson is plain: In e-commerce litigation, ignore the Internet at your own peril.

Wednesday, August 02, 2006

Intel cannot move Intelmark [UK Trade Mark Update]

Law Wire is pleased to tell you all about Intel Corporation Inc v CPM United Kingdom Ltd [2006] EWHC 1878 (Ch), a decision last Wednesday of Mr Justice Patten in the Chancery Division. It still hasn't made BAILII but is noted on LexisNexis Butterworths (well done!).Intel owns a large number of United Kingdom and Community trade mark registrations for the word marks INTEL and INTEL INSIDE for goods in classes 9 and 16 and for services in classes 38 and 42. CPM subsequently registered the word INTELMARK as a service mark for marketing and telemarketing services in class 35. On discovering this, Intel sought a declaration of invalidity on the ground that the use of INTELMARK without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of its earlier INTEL marks under section 5(3) of the UK Trade Marks Act 1994.
The hearing officer dismissed Intel's application since he was not persuaded that there would be any material damage to the distinctiveness or repute of INTEL if INTELMARK was used in a normal and fair manner in relation to the services for which CPM registered it. Intel appealed on the grounds that (i) the hearing officer failed to give due weight to the evidence of the reputation enjoyed by INTEL in relation to computers and computer-linked products, and of its distinctive character, and that (ii) he failed to apply the "global appreciation" test required under section 5(3) when assessing whether the use of INTELMARK would lead to unfair advantage or detriment.Patten J dismissed Intel's appeal.
In his opinion
* When section 5(3) was relied on as a ground of opposition or invalidity, the question was whether use of the later mark would either take unfair advantage or be detrimental to the distinctive character or repute of the earlier mark, the emphasis being on the reputation enjoyed by the earlier mark and the use or misuse of that reputation by the owner of the later mark, either for its own benefit or at the expense of the earlier mark.
* When considering exploitation of the distinctive character of the earlier mark, one first must ask if any association or link was necessarily made between the two marks.
* The making of the association was not necessarily to be treated as a detriment or the taking of an unfair advantage in itself. In cases of unfair advantage it was likely to be necessary to show that the making of the link between the marks had economic consequences beneficial to the user of the later mark.
* As to detriment the association between the marks (and therefore potentially between the products or services to which they related) might be detrimental to the strength and reputation of the earlier mark if it tarnished it by association or made it less distinctive. That was likely to take place as a consequence of the same mental process which linked the two marks in the minds of consumers and was essentially a negative reaction and effect.
* Detriment could take the form of either blurring or tarnishing. Dilution occurred where the distinctiveness of the mark was eroded and could occur when the mark was regularly used in connection with different or less exclusive types of product which diminished or lessened its link in the eyes of the public with the goods or services for which the mark was created.
* It was necessary to show that in all the circumstances of the case the prospect of dilution was made out. Dilution was not established merely by the use of a similar, or even identical, sign for a dissimilar class of goods or services. The circumstances had to justify the conclusion that the character or repute of the earlier mark would actually be weakened in the eyes of consumers by its association through the later mark with a different class of goods or services assuming the fair and reasonable use of the later mark. Where the differences between the marks and the products or services to which they related indicated that no real connection would be made between them in the minds of the public, then that kind of damage could not occur.

Tuesday, August 01, 2006

Dead Convention "Lives" as Interpretational Tool [European Patent Law]

The Court of Appeal for England and Wales (Sir Anthony Clarke MR, Keene and Jacob LJJ) yesterday dismissed against the decision of Mr Justice Lewison in Yeda Research & Development Ltd v Rhône-Poulenc Rorer Holdings, Inclone Systems and the Comptroller [2006] EWCA Civ 1103.

This was an appeal by Yeda against a ruling that its amendments to a written statement, in support of its claim to joint ownership of a patent registered in the name of Rhône-Poulenc and exclusively licensed to Inclone, should not have been allowed. The grant of a European patent to Rhône-Poulenc, designating the UK among other jurisdictions, was published in the European Patent Bulletin on 27 March 2002. On 26 March 2004, Yeda made a reference to the Comptroller of Patents claiming joint ownership of that patent. On 29 June 2005, Yeda filed the contested statement in which it claimed sole ownership of the patent, seeking joint ownership as an alternative claim. Rhône-Poulenc objected to those amendments on the ground that they had been submitted out of time under the Patents Act 1977, section 37(5). After the Comptroller allowed the amendments, Rhône-Poulenc appealed on the ground that section 37(5) imposed a two-year limitation period for claiming entitlement to a patent that had been granted: this period had expired before Yeda submitted its amendment. Lewison J allowed the appeal, agreeing that the amendments should not have been allowed: since they constituted a new claim to sole ownership, they fell outside the limitation period of section 37(5). Yeda appealed.The Court of Appeal, whose judgment was given by Lord Justice Jacob, dismissed the appeal on the following basis:
* Section 37(5) had to be construed in the light of section 130(7) of the 1977 Act, which required the provisions of the Act to be given the same meaning as the corresponding provisions in the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty. This required the courts to read those provisions directly.* Even though the Community Patent Convention never came into force, the court had to construe section 37(5) as having the same meaning as the Community Patent Convention Article 23, which prevented the bringing of entitlement claims more than two years after a patente was granted.* It made no sense for section 130(7) to apply only when the Community Patent Convention came into effect.* The Conventions mentioned in section 130(7) were part of the travaux préparatoires of the 1977 Act and, on conventional principles as to construction, the United Kingdom provisions should be construed so as to have the same meaning as the provisions upon which they were based.* In this case there was a complete statutory bar to Yeda's amendment, which had to be disallowed.
Law Wire agrees, also noting the Court's interesting discussion of the phenomenon that, while a claim of sole ownership may be amended to a claim for joint ownership after the expiry of the period - since the greater claim automatically includes the lesser - that reasoning does not permit the out-of-time amendment of a joint ownership claim to a sole ownership claim. We agree but adds, it still seems odd that, despite the fact that the Community Patent Convention never came into force (and never will), it can still influence the construction of a provision of national patent law.