Thursday, February 28, 2008

A new ‘adda’ [hangout] for lawyers networking in India [India]

The Indian legal community has a new player in the online field: a portal called, which seems to have gotten the nod from Microsoft. Surprising, given the rather casual and colloquial use of the word ‘adda’ as part of the brand. Not the kind of company that Microsoft would like to keep. ‘Adda’, a colloquial word is Hindi slang for hangout. Is this a serious site? We will have to wait and see…
Law Wire™ had a look at the portal itself. It has this to say on the home page by way of introduction:
LegalAdda seeks to build a vibrant community of legal professionals in India.
The site aims to facilitate collaboration amongst the legal ecosystem and network with each other. We invite students, practicing lawyers, law firms, colleges & universities to actively participate at the site.
At LegalAdda, you can participate in discussions at the forums. Your white papers on legal topics are invited at the "Contributions" section. Events of interest to the legal community can be shared at the Events section. The "Jobs and Internships" tab provides opportunity for prospective employers to post their open positions. Candidates looking for internships & jobs can benefit from this section.

It is an interesting concept, and slightly different from the existing legal portals on the market, which serve as agglomerations [euphemism for ‘databases’ of laws and rules] and occasionally offer legal advice in violation of the Bar Council of India Rules. The USP of the website appears to be that it is essentially a social networking site and a space for people in the legal world to meet and connect with each other. One is curious to see if this will catch on.

CII hosts meet on innovation,creativity, IPR in Mumbai [India]

CII in collaboration with the U.S.Chamber of Commerce & U.S. India Business Council (USIBC) & Department of Industrial Policy & Promotion, Govt. of India, will host the 2nd Annual Global Forum on Innovation, Creativity and Intellectual Property in Mumbai, India on 26-27 February 2008 at Hotel Hyatt Regency. The forum is being Organized Further innovation and Intellectual Property Rights enforcement; Develop solutions to the persistent IP challenges throughout the world and Publicize new IP initiatives, including legislative reforms.

Some of the Key sessions of the forum are: Developing new treatments and cures: the role of innovation, the process of innovation; Case studies in developing a competitive environment, Judicial remedies for IP Infringement, Creator to consumer: Protecting Intellectual Property in a digital age, Global trends in IP protection and International law Enforcement: working with brand owners to protect IP.

This is has attracted participation from 15 Countries across the World. The Key speakers for the forum are: Ronald K. Noble, Secretary General, INTERPOL, Shanker Annaswamy, Chairman, CII, National Committee of IP Owners & Managing, Director, IBM India Pvt. Ltd, David Chavern, Executive Vice President & COO, US Chamber of Commerce, K.V. Subramaniam, President and CEO Reliance Life Sciences, Sangita Reddy, Executive Director (Operations), Apollo Hospitals Group, Dr. Swati Piramal, Director, Strategic Alliances and Communication ,Nicholas Piramal Ltd, Martin Shively, Director, Worldwide Intellectual Property Operations & Associate General Counsel, Microsoft, Mr. N N Prasad, Jt. Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Govt. of India. Hugh Stephens, Senior Vice President, International Relations & Strategic Policy, Asia Pacific, Time Warner, Ambassador Teresita C. Schaffer, Director for South Asia, Center for Strategic and International Studies, Geoffrey Yu, Senior Specialist Advisor, Ministry of Foreign Affairs and Ministry of Law, Singapore, Luiz Paulo Teles Ferreira Barreto, Vice Minister of Justice, and President of CNCP (Conselho Nacional de Combate a Pirataria), Government of Brazil, Benoit Battistelli, French IP Commissioner and Director General, National Institute for Industrial Property, France, Larry Molloy, Worldwide Vice President, Brand Protection, Johnson & Johnson Company, Jorge Amigo, Director-General, Mexican Institute of Industrial Property, Rakesh Bakshi, Director – Legal & Corporate Affairs, Microsoft Corporation (I) Pvt. Ltd, and Member, CII National of Intellectual Property Owners, New Delhi, India .

This is one of the flagship events of CII National Committee of IP Owners which spearheads CII National & International Initiatives in Intellectual Property Protection & Enforcement.

Patent Scorecard; India loses out [India]

If the number of patent applications filed under the World Intellectual Property Organisation’s (WIPO) Patent Cooperation Treaty (PCT) is any indication, India appears to be a laggard among the knowledge- and innovation-driven economies. That the country is way behind developed nations like the US and Japan in seeking patent safeguards for inventions, is understandable. What is more noteworthy is that it compares poorly even with a much smaller economy like South Korea, as also the much bigger China. The data put out by WIPO show that only 686 patent applications were filed from India in 2007, against 7,061 from Korea and 5,456 from China. And while the rate of patent filings is growing steadily elsewhere, it is on the slide in India. The number of applications in 2007, as a result, was the second-smallest in the last five years.

However, single-number comparisons of complex processes can be deceptive. So it is worth pointing out that any comparison based merely on the number of patent applications could be misleading, and other relevant factors also need to be taken into the reckoning. A comparison of India with China must be weighted for the fact that the sectors that drive economic growth are different in the two countries. While software and services predominate as Indian growth engines, Chinese growth is coming in substantial measure from new, mass-scale manufacturing activities. In the Indian software sector, research and development (R&D) activity is controlled largely by the big global companies, with headquarters elsewhere, and they treat India as an offshore R&D hub to make use of its low-cost, scientific and engineering talent pool. The patents filed on the basis of such work will mostly be done in the company’s country of origin, so it will not show up in India’s number. Also, there is little scope for patenting when it comes to software services. And where the life-science and pharmaceutical industry is concerned, investments in in-house R&D are a recent phenomenon. As this trend picks up, one should expect patent filings to increase.

That said, the importance of patenting has come slowly to Indian companies. This could be because of a slow awakening to globalisation, and because India is a signatory to a large number of global pacts and protocols that provide automatic intellectual property protection to innovations in different fields in all the member countries. China, on the other hand, has not been as open to embracing knowledge protection obligations through such treaties. In any case, the Chinese track record in respecting intellectual property has been dismal and many global companies have suffered on this account. Though India’s record in this respect may also not be perfect, it has taken two key steps through the amendment of the Patent Act in 2005 to align it with the international agreement on trade-related intellectual property rights (Trips), and the enactment of a law on sui generis plant variety and farmers’ rights protection. Nevertheless, even after considering these factors, the truth is that India does not score very well on the R&D front. The positive change is that, even in manufacturing industries like automobiles, Indian companies now show signs of doing serious R&D work.

Global patent body wants India to break walls [India]

The international patent body has invited India to join countries that are working on harmonisation, as this will enable patent procedures to be simplified. The harmonisation effort seems to have hit a roadblock given the two contentious issues raised by India and Brazil, namely those pertaining to genetic resources and traditional knowledge protection.

A panel of experts, including the George Washington University Law School (GWULS) professor Martin J Adelman, US Court of Appeals for the Federal Circuit judge Randall R Rader and Bardehle, Pagenberg, Dost Altenburg and Geissler partner Heinz Bardehle shared wide-ranging perspectives on patents at a press conference here on Wednesday. From seeking a simple system for filing a patent to how India has been “killing” patents and “destroying” efforts to harmonise, these issues were among the key points that were touched upon by the panelists. Prof Adelman said India’s wealth is not dependent on traditional knowledge, but the strides it makes technologically and scientifically apart from stoking the entrepreneurial spirit of its people. Everybody will be richer if India and Brazil recognise that traditional knowledge is not a patent issue. The patent system in India is about to expand in an enormous way.

The number of patent applications has more than tripled in recent times. Over 28,000 applications have been filed in the country. The patent examiners have also increased to 150 and given the “work-overload,” approval to have 600 additional examiners in the next five years, are in place, noted Intellectual Property Owners Association executive director Herbert C Wamsley. The patent procedures are under constant process of re-evaluation and the effort is to have a single patent system that will be suitable for all industries. This is needed, especially since it is only fast protection processes that will help industries like IT. “Even before the patent is granted, the technology becomes redundant,” he added. As countries have different systems, the endeavour is to have systems that will be high-quality, timely and cost-effective. This means the focus has to be on bringing harmonisation and uniformity in the patent systems, the experts said. Mr Rader said the world economy is driven by innovation, change and new products are the order of the day. In such a situation, it is imperative that human ingenuity has to get legal protection. Countries like Korea and Taiwan are already creating courts by emulating the models in Japan and the US. Even in the US, statutes to make its patent laws more uniform with the rest of the world, is pending in the Congress. Rather than the first inventor being recognised as the owner of the intellectual property (IP), the attempt is to target the first to disclose it to the public, he added.

Tuesday, February 26, 2008

New Net neutrality bill discourages ISP 'favoritism' [International]

Comcast, AT&T, and other network operators would be expected to refrain from "unreasonable discriminatory favoritism" of content on their pipes under a recrafted Net neutrality proposal introduced Wednesday in the U.S. House of Representatives.
"The bill contains no requirements for regulations on the Internet whatsoever," Markey said in a statement upon introducing the bill. "It does, however, suggest that the principles which have guided the Internet's development and expansion are highly worthy of retention, and it seeks to enshrine such principles in the law as guide stars for U.S. broadband policy."

Rep. Charles "Chip" Pickering (R-Miss.), who has argued against Net neutrality regulations in the past, is now co-sponsoring the rewritten measure, which is being called the Internet Freedom Preservation Act.
The modified approach is an apparent attempt to address the howls of protest from network operators, who have argued that previous Net neutrality bills in Congress amount to unnecessary Internet regulations.
The old bill decreed that broadband operators have certain duties: not blocking or degrading content, not prioritizing some applications over others, and not imposing "surcharges" for premium placement, to name a few. Violators would have been subject to penalties. A pending Senate bill, which hasn't yet seen any action in this session of Congress, takes a similar approach.
The new Markey-Pickering bill, by contrast, proposes adding four broadband policy statements to existing federal communications law. Those statements build upon a set of broadband policy principles that the Federal Communications Commission adopted years ago, including recommendations that the government allow consumers to reach the lawful content and applications of their choice and hook up whatever devices they please, provided that they don't harm the network.
Violation of those principles would not carry any penalties under the new bill, according to a Markey aide. The bill does, however, leave open the possibility of tougher rules later. One principle dictates that the government should adopt and enforce "baseline protections to guard against unreasonable discriminatory favoritism for, or degradation of, content by network operators based upon its source, ownership, or destination on the Internet."

The bill would direct the FCC to study broadband providers' current practices and whether "enforceable" rules governing Internet openness are necessary. The FCC would also be required to stage at least eight public "broadband summits" at "geographically diverse locations" around the United States to discuss the state of competition, consumer protection, and consumer choice in broadband.
The bill's introduction arrives amid a recent stepped-up focus in Washington on network management practices. The FCC is weighing whether it's "reasonable" for companies to slow down peer-to-peer traffic on their networks, as Comcast has admitted to doing in what it argues is an attempt to keep all its subscribers surfing smoothly.
The same consumer advocacy groups that support Net neutrality legislation have asked the FCC to declare that such practices aren't, in fact, "reasonable," and should be forcibly stopped.
The FCC also announced on Tuesday that it's holding a February 26 public hearing at Harvard Law School in Cambridge, Mass., to hear from experts on network management issues.
Fans of Net neutrality laws--including, Google, and a number of consumer advocacy groups--support Markey's latest proposal, heaping praise on the new language before the congressman had even formally introduced it. They have long argued that without strong Net neutrality principles enshrined in law, there will be nothing to stop network operators from, say, charging YouTube additional fees to be delivered to consumers faster than a rival video-sharing Web site.
The Markey bill is "an important step in ensuring the Internet remains open for consumers and innovators," said Markham Erickson, executive director of the Open Internet Coalition, whose members include major search engines, electronic retailers, librarians, and public-interest groups.
Network operators, by contrast, have long opposed Net neutrality regulations because they argue that they need the freedom to manage their networks as they see fit and that new obligations could discourage investments in building out their pipes.
Scott Cleland, the chairman of, a group whose members include all the major cable, telephone, and wireless companies, said Markey's new approach doesn't blunt those concerns. While the "letter" of the new Markey bill may not include those new regulations, he said, the "spirit" of it does, creating the same heartburn for opponents as the earlier version.

The U.S. Telecom Association, which represents large Internet service providers like AT&T and Verizon Communications, blasted the new bill. Group president Walter McCormick said it would "blindly legislate a new national broadband policy, without regard to its implications, and then require the FCC to spend the next year determining whether the Internet is being constructed, managed, and operated in conformance with this new government mandate."

Friday, February 22, 2008

USPTO Proposes Biological Material Deposits Be Made Available Before Patent Application Publication [USPTO]

Thanks to Christopher P. Singer at Patent Docs for describing the Federal Register notice on February 20, 2008 where the U.S. Patent and Trademark Office announced proposed changes to the rules regarding submission of biological deposits pertaning to patent applications:
In particular, the revised rules would require that any deposit of biological material be made before the application publishes, and that all restrictions on access to the deposited material imposed by the depositor be removed upon publication.

. . . For purposes of enablement, the Federal Circuit has held that even "the availability of a sample to the public after the patent has issued will meet the enablement requirement." In re Lundak, 773 F.2d 1216, 1223 (Fed. Cir. 1985). Since the American Inventors Protection Act went into effect, certain commentators have argued that because the publication of a U.S. application can create provisional rights for the applicant, the published application must be in compliance with the enablement and written description requirements of § 112. This means that, if needed for § 112 purposes, a deposit of biological material would need to be made prior to publication (i.e., that the AIPA supersedes the rule stated in Lundak). To be ensured of consideration, comments must be received by the USPTO on or before April 21, 2008.

Chinese Patent Trials to Allow Foreign Experts as Reference, Not Evidence [International]

According to Xie Chuanjiao writing for China Daily on February 20, 2008, foreign experts will be allowed to take part in Chinese patent rights trials involving foreign parties. Supreme People's Court vice-president Cao Jianming reportedly also told a national conference in Jinan, Shandong province that Courts should use more people with specialist technical backgrounds to serve on people's juries in IPR trials, and even invite renowned experts to serve as full jury members
Concerned parties will be encouraged to bring people with technical experts into court to speak on issues relating to the case.

"To improve the accuracy of deciding technical facts in such cases, local courts can also set up an expert consultation system," the Cao said."However, the consultants' opinions must be used only as reference for judges and not be presented as evidence."

OHIM Geographical Indications Database [International]

According to the Intellectual Property Research Institute of Australia "International Developments in IP Bulletin" for February 2008, the EU's Office for Harmonization of the Internal Market has created a database containing geographical indications of wines, spirits, agricultural productsand foodstuffs protected under Community Regulations and Bilateral Treatiesbetween the European Commission and third countries.
The publicly accessible database, in Excel format, is to be used by examiners when examining Community Trade Mark applications. To access the database, click on
OHIM has also released a new brochure on national laws relating to the Community TradeMark and the Community Design at

Thursday, February 21, 2008

Brand Wars in India [Update]

A sight, soccer star David Beckham, retailers Wal-Mart and GAP, food giant Kraft Food, automaker DaimlerChrysler, French bank BNP Paribas, media biggies Disney and Time Inc may not have much in common. Except that they are at loggerheads with small Indian entrepreneurs.

The dispute, curiously, is not playing out in their respective business areas, but in the country’s trademark office. These international business icons are opposing Indian entrepreneurs’ applications for trademark as they fear infringement of their intellectual property rights.

England soccer star David Beckham is miffed at one Jaiprakash Chamaria, who runs readymade garments firm Aayush Creations. Mr Chamaria has filed an application in Indian trademark office for the allotment of Beckon Shirts. As the proposed trademark sounds similar to Beckham, the soccer star is worried that the Mumbai-based firm might take undue advantage of his goodwill among consumers.

And to prevent that, Beckham has filed opposition to Mr Chamaria’s plea in India’s trademark office. Wal-Mart, meanwhile, is involved in at least two such cases: Puducherry-based apparel maker Walmart Textile’s Karkouzhali Panchtcharam’s request for ‘Wallmant’ and Delhi-based Malhotra Retail’s Ashok K Malhotra’s plea for ‘Mal-Mart’ have caught the world’s biggest retailer’s attention.

Similarly, the owner of Lee jeans, The HD Lee Company, is contesting New Delhi-based BNK Intrade’s application for the award of ‘Lee Mei’ trademark. BNK deals in synthetic leather. Another Mumbai-based readymade garment maker Mexico Clothing Company’s Dinesh Agarwal’s request for ‘GAB’ has made American retailer GAP uneasy.

Any combination of letters or numerals, images or colours can be claimed as trademark by an individual or a company to distinguish its goods and services from other similar goods. So, a trademark that comes close to any other established mark in appearance or pronunciation may be challenged. And most companies today are pretty vigilant in this arena.

“MNCs have a strong intellectual property department, which scrutinises journals from trademark and patent offices across the globe. Some of them have tie-ups with law firms who are assigned the responsibility. Even if there is a slight possibility of infringement, these companies spring into action,” says trademark lawyer Siddharth Bambha.

The Indian trademark office invites opposition to an application after its publication in the office journal. An application is published only after it has satisfied the examiners on the basic trademark requirements. The opposition can be filed within three months after the publication.
Every opposition is followed by many rounds of arguments from both sides, culminating in a final decision by the trademark office. The process is usually tedious and may take years. There is also a provision of filing opposition even after the trademark has been granted to a party. In the event of an opponent not being satisfied with the trademark office’s decision, he can move the Intellectual Property Appellate Board and subsequently the High Court. And if the opponent wins the case, it can claim cost of proceedings from the applicant.

In a recent case, the Madras High Court had ruled in favour of French retailer Carrefour, which had moved the court alleging illegal use of its trademark by a Chennai-based firm.

Trademark cannot be claimed on common English words [India]

The Bombay High Court has ruled that a trademark cannot be claimed on common, descriptive English words.

Division bench of Justices S Radhakrishnan and Anoop Mohta were hearing a petition filed by cigarette giant ITC challenging an order allowing rival GTC Industries to register a trademark in the name of 'Magnum' for a brand of cigarettes and cigars.

"We are of the view that the word 'magnum' is of common usage and purely descriptive," observed the judges in the order. "It can serve as an indication of character or quality or value of the goods since one of its laudatory and descriptive meaning is 'great'. Such words/marks should not be registered (as a trademark)," they held.

ITC has the major share of 65 percent in the market, owns several brands including Insignia, India Kings, Classic, Gold Flake, Silk Cut, Navy Cut, Scissors, Capstan, Berkeley, Bristol and Flake.

GTC Industries Limited (formerly known as the Golden Tobacco Company), a flagship of Dalmia Group, owns brands including Chancellor, Panama, Style, Esquire, Flair and Ms Special Filter cigarette for women. In December 1987, GTC had, for the first time, filed an application for registering a trademark in the name of 'Magnum' for a proposed brand of cigarettes.

In 1992, ITC opposed the grant of trademark, but the assistant registrar of trademarks, who passed an order in favour of GTC, dismissed its challenge.

ITC then approached the high court, where the matter went on for over eight years and in 2002, the court allowed GTC to register 'Magnum' as a trademark, saying it was not a common Indian word.

An appeal against the order was filed by ITC before a division bench.
The ITC advocate referred to English Law, which contained similar provisions as India's Trademarks Act as well as judgements of the European Courts of Justice to argue that laudatory words like 'magnum' could not be registered, which the court accepted.

The court held that purchasers of cigarettes are common men of all ages and include persons with knowledge of the English language.

The word 'magnum', the judges held, could serve as an indication of the characteristics of goods. Also Section 9(1) (b) of the TM Act "contains an absolute bar for registration of any descriptive and laudatory term," the judges stated in the order.

Monday, February 18, 2008

US patent reform to benefit Indian firms [India]

Indian pharmaceutical firms, which make most of their revenues and profits from the manufacture of off-patent, or generic, drugs, are set to play a larger role in the US, the world’s biggest drug market.

That is, if a US plan to reform patent laws by including provisions for what is called post-grant opposition to patents and limiting avenues for extending patent protection for medicine companies becomes law.

The immediate impact of the law change will be to ease challenges on drug patents and also lower legal costs in such challenges.
The changes anticipated in the Patent Reforms Act, which has already been passed by the US House of Representatives in February, would allow opposing a patent after its grant in the US, as is possible in countries such as the UK, Germany and India, along with a general tightening of patentability rules in the US.
It would also, to a large extent, halt the tactics of research-based drug giants in the US to include all possible claims in the patent application by modifying it several times during the life of a patent through what is known as “ever-greening”.
With the reforms, the US patent office sought to limit the number of times to two that a patent applicant can file “continuations” of patents. Currently, there is no limit on the number of times that a patent holder can keep updating its patent claims through such filings. The draft law is now under consideration of the US Senate.
The patent reforms in the US are aimed at eliminating frivolous patents as also invalidating several existing patents that have received such protection through “continuation” filings based on simple modifications. This would help generic players to enter the market with more products as the legal expenses will go down.
Patent experts said that the reforms that the US has initiated are an attempt to harmonize its patent law with the rest of the world, which follows a comparatively higher threshold for patentability.
The new rules, for instance, will replace the current US system that grants patents to applicant who can prove “first-to-invent” status with a “first-to-file” regime in force in others countries.
With the provision of post-grant opposition, generics companies will get a new opportunity to argue against the unsubstantiated claims made by the patent holder without going to court of law or infringing the patent—both expensive options.

Thursday, February 14, 2008

Bush Administration’s Annual IP Report: Intellectual Property Related Prosecutions Up, Focus on Health and Safety Redoubled

U.S. Coordinator for International Intellectual Property Enforcement Chris Israel released the administration’s Annual Report to the President and Congress on Coordination of Intellectual Property Enforcement and Protection today. The Annual Report conveys the yearly accomplishments and establishes priorities for the upcoming year for the federal agencies responsible for protecting and enforcing American intellectual property (IP) rights, both domestically and abroad.

“Creativity and innovation are the lifeblood of the American economy, and intellectual property protection is vital to ensure our economic health now and for the future,” said Commerce Secretary Carlos M. Gutierrez. “The Bush Administration recognizes the importance of IP rights and is dealing with counterfeiting and piracy through strong enforcement here at home and increased engagement abroad. We realize there’s more work to be done and will work to meet the goals outlined in the report.”
“The record increases in intellectual property enforcement carried out by U.S. law enforcement and other NIPLECC agencies during the past year prove the importance and effectiveness of our coordinated efforts," said Assistant Attorney General Alice S. Fisher. "The Department of Justice is committed to enhancing our already substantial efforts toaddress this growing problem.”
Highlights cited in the Annual Report include:
* Record increases in IP-related investigations and prosecutions. The Department of Justice reports substantial increases in federal investigations and prosecutions of IP violations. The Department filed 217 IP cases in FY2007, representing a 7% increase over cases reported in FY2006 (204), and a 33% increase over cases reported in FY2005 (169).
Also in FY2007, 287 defendants were sentenced for IP crimes, representing a 35% increase over FY2006 (213) and a 92% increase over FY2005 (149);
* Enhanced border enforcement. The Department of Homeland Security reports the estimated value of the goods seized by border agents continues to rise, this year, by approximately 27%, up to approximately $200 million;* Increased emphasis on the annual Special 301 Review, the USTR-led analysis of intellectual property protection within each country worldwide;
* Expanded engagement within the World Trade Organization (WTO) in an attempt to resolve IP-related trade disputes;
* The launch of a major multilateral anti-counterfeiting initiative, the Anti-Counterfeiting Trade Agreement;
* Deepened bilateral and multilateral relationships, such as the U.S.-EU Summit, G8, and Asia Pacific Economic Cooperation (APEC); and
* Redoubled focus by all agencies on the public health and safety implications of counterfeit goods.
“As this year's report underscores, the administration has a achieved a great deal with respect to protecting U.S. intellectual property--valued at more than $5 trillion," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Margaret J.A. Peterlin. "This year, the USPTO completed our Global Intellectual Property Academy, which allowed us to train more than 700 foreign officials on how to strengthen their IP rights and enforcement, which will benefit American IP rights holders around the world.”
“This year’s report demonstrates the continued commitment of the Administration to protect intellectual property rights with a coordinated, results-driven approach,” said Israel. “The Administration has made IP enforcement a high priority through senior-level leadership and smarter coordination. While widespread counterfeiting and piracy remains a serious problem, we are improving the global marketplace for American rights holders.”
The Annual Report to the President and Congress on Coordination of Intellectual Property Enforcement and Protection is published by the Office of the U.S. Coordinator for International Intellectual Property Enforcement, which heads the National Intellectual Property Law Enforcement Coordination Council (NIPLECC). NIPLECC is composed of the five federal agencies involved in intellectual property enforcement, including the Departments of Commerce, Homeland Security, and Justice; the State Department; and the Office of the U.S. Trade Representative. The Annual Report to the President and Congress on Coordination of Intellectual Property Enforcement and Protection can be found online at

E-commerce: new ruling will affect taxability of foreign firms [India]

The issue of permanent establishment in India remains a vexed one.

In a decision which would have significant ramifications for foreign companies in general, and Computer Reservation Service (CRS) majors in particular, the Delhi Income-tax Appellate Tribunal, in a recent ruling of Galileo International Inc., has held that payment of arm’s length remuneration to the Indian agent would absolve a company from any further liability to pay tax in India. This decision is in line with the principles laid down by the Supreme Court in the Morgan Stanley case and would surely comfort foreign companies, especially those engaged in e-commerce.
CRS companies specialize in providing electronic global distribution/ticketing services to airlines, hotels, cab operators, etc., by connecting them to travel agents. The issue before the tribunal was related to the taxability of Galileo in India. While rendering this decision, the tribunal made several observations which could impact the taxability of foreign companies operating in India. Also, the tribunal’s conclusions on profit attribution would be of particular importance.
The backdrop
The concept of permanent establishment is one of the most important in international tax treaty law. Virtually all modern tax treaties use it as the key tool to establish taxing jurisdiction over a foreigner’s business activities in the host country. It could be constituted either by having a fixed place of business, or a sustained presence of employees, or even an agent in the other country. So, the focus of this article is to explain the impact of the said ruling and analyse the principles it lays down to constitute permanent establishment in India and attribute profits to it.
The broad facts are as follows: Galileo is a US-based CRS company. CRS firms receive, process, store and disseminate data about flight schedules, seat/room availability, fares, etc. Galileo entered into agreements with various airlines to provide these services. To market and distribute CRS in India, it appointed a distributor in India, who in turn entered into subscription agreements with travel agents across the country. Further, to facilitate CRS operations, computers were installed at the premises of the subscribers.
Galileo was remunerated outside India by the airlines, while it paid fees to its Indian distributor for providing marketing and communication services, at the rate of 33.3% of the booking income from the country. It is against this backdrop that the issue of Galileo’s taxability in India arose.
In most countries, including India, the legislation has not kept pace with the rules of doing trade in the borderless world of e-commerce.
For instance, even the US treasury department has no specific guidance on e-commerce trade, except for a report it issued in 1996, which discussed the emerging trade challenges posed by the Internet economy.

Tuesday, February 12, 2008

Lawsuit on misuse of artists' name

An Indiana company is misleading the public about who has the rights to use the name of 19th century artist Frederic Remington, a federal lawsuit claims.
The lawsuit was filed by The Frederic Remington Art Museum.
It seeks to stop Gregory Shideler of Fort Wayne, Ind. from using the name Frederic Remington Art Museum Foundation on his Web site and literature. It also seeks cancellation of federal trademarks previously issued to the man and the Frederic Remington Trust 1861 LCC.
The Ogdensburg museum also wants a declaration that it can continue using Remington's name despite whatever trademark rights Shideler does hold, the museum's attorney, Edward Conan, said Tuesday.
The lawsuit accused Shideler of engaging in 'a wide-ranging scheme of trademark abuse and misuse' that has caused 'confusion and harm' to the museum's reputation and standing.
Shideler did not immediately return an e-mail seeking his comment. There was no telephone listing for him in the Fort Wayne area.
Born in 1861 in Canton, N.Y., and raised in Ogdensburg, Remington was an illustrator, sculptor and journalist whose depictions of cowboys and Indians helped burnish the legend of the wild West. His artwork remains widely exhibited today, with pieces on display from the White House to the Metropolitan Museum of Art.
The museum, originally founded as the Remington Art Memorial in 1923, is located in the home where Remington's wife lived after his death in 1909. It possess a comprehensive collection of original Remington art pieces, personal effects and correspondence.
Shideler's trust acquired a federal trademark in 1995 for the use of the name Frederic Remington on a variety of products, including eyeglasses, carbonated apple cider, umbrellas, cologne, clothing and cigarette cases, according to documents filed in U.S. District Court in Syracuse on Jan. 29.
In 2005, the trust trademarked the artist's name for the custom manufacture of two- and four-passenger horse-drawn sleighs with patent leather harnesses, brass sleigh bells, buffalo hide interiors and bison cape comforters.
In 2006, the company obtained a trademark for the Remington name for bronze sculptures.
Conan said Shideler has previously threatened legal action against the museum in an attempt to get it to stop offering what he claimed were unauthorized reproductions of Remington's work. Instead, the museum initiated legal action.
'He's made extravagant and insupportable claims about whatever rights he may or may not have. We felt some step had to be taken to get clarification and resolution,' Conan said.
According to court documents, the trust has variously represented itself as a 'Foreign Private Trust' with a mailing address in Mexico, or as a limited liability company with addresses in Fort Wayne.
Conan said Shideler's use of the Frederic Remington name has been problematic for the museum.
The lawsuit said the museum has been contacted by a tax review board in Indiana because of confusion over the foundation's name. It has also been contacted by law enforcement officials investigating a tax refund scheme in which refunds were being directed to the Frederic Remington Art Museum Foundation at an address for an inmate in an Arizona prison.
The trademarking of bronze statues by the trust is especially troubling for the museum, Conan said. Last year, the museum negotiated a partnership with J.W. Hulme Co. for an offering of a 'Frederic Remington Art Museum Collection' of merchandise in the Hulme catalog.
The trust allegedly sent Hulme a 'cease and desist demand' accusing the company of infringing on its trademark.
'Resolving this will allow us to give some assurance to potential partners with us that they can use Frederic Remington or the bronze statues and they don't have to worry that they are going to get sued or harassed for violating a trademark,' Conan said.

Advantages of a registered trademark

Is there any advantage to owning a trademark registration? What steps and costs are involved?
The U.S. Patent and Trademark Office defines a trademark as “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
One obvious item to trademark is a logo. Once used in connection with a product, a logo can be registered as a trademark. The patent office reviews trademark applications for federal registration. Trademark registration is not required to use a mark to identify the source of goods and/or services. The TM (trademark) designation may be used to alert the public to your claim, regardless of whether you have filed a trademark application. However, the federal registration symbol ® may be used only after the patent office registers a trademark.
While business owners historically retained attorneys to register trademarks, it is not uncommon today to navigate the process without attorney assistance through the Internet. Filing fees vary. More information is at
Federal registration affords additional rights once the trademark is used in commerce. Such rights include:
•Constructive notice to the public of the registrant’s claim of trademark ownership.
•Legal presumption of the registrant’s ownership of the mark and exclusive right to use the mark in connection with the listed goods and/or services.
•The ability to bring a legal action concerning the mark.
•Use of the U.S. registration as a basis to obtain registration in foreign countries and to prevent importation of infringing foreign goods.
Once a registration issues, it is up to the trademark owner to enforce its rights. Enforcement of intellectual property rights is a complex area of the law, and pursuing trademark infringement can be costly.
So why go to the effort and expense of registering a trademark? Many people believe that the registration itself serves as a deterrent and consequently helps to secure use for the rightful owner. Additionally, registered trademarks are often referred to as hidden assets, which can add value to a business.

Wikinomics - Ideagoras

So we’re on to the “ideagora” which, if you remember your Greek (I don’t) uses the word for market (agora) to produce something that means (surprise!) “idea market.”
So What?
And so it is. Don Tapscott tells the story of InnoCentive, an idea market launched by Eli Lilly in 2001. InnoCentive allows companies to post research problems that member scientists (who number more than 90,000 in 175 countries) can crack in exchange for cash rewards. A quick look at the InnoCentive site reveals that the current maximum reward is $1 million–quite a motivator. (The more relevant question, of course, is the average reward, which the site doesn’t reveal.)
The notion behind ideagoras seems to be to treat the world as a big part of your enterprise R&D lab. Use your internal R&D people–who understand your customers–to come up with the blue-sky ideas (we should sell platinum saltines!) and leave the down-to-earth problems (how do we get the salt to stick to the little squares?) for the ideagoras. Of course, one happy implication of this approach is that (other things equal) your R&D budget will shrink.
At the limit, Don Tapscott imagines a market of eBay-like proportions with people submitting both problems and solutions (patents) for general review and consumption. In his mind, such a market will drive innovation at a much faster pace than we’ve ever seen. I suspect that that’s probably true.
Now, one tiny problem with ideagoras (I feel we should get it out on the table) is that specifying a problem often presupposes a certain type of solution. In other words, getting the salt to stick might (to you) be a difficult materials science problem…but if it were reconceived as a chemistry problem, it might become easy. The unfortunate part is that you’re going to categorize the problem under “Materials Science” when you post it to the ideagora, and it’s possible that no chemist will ever see it.
In any case. Ideagoras seem to represent a powerful new approach to innovation and if you’re intrigued, I urge you to pick up
Wikinomics and read about them in more depth. Not to do so…would be hubris.

Innovation and Washington: On Collision Course? [International]

AS the US Senate prepares to tinker with the nation’s patent laws this spring, it’s worth recalling the law of unintended consequences.
From the vantage point of a half-century, for example, it’s clear that the formation of Silicon Valley involved serendipity more than intentional design.
The co-inventor of the transistor and the founder of the valley’s first chip company, William Shockley, moved to Palo Alto, Calif., because his mother lived there. Moreover, although the transistor was invented at Bell Labs in New Jersey, an antitrust lawsuit during the 1950s forced the
AT&T phone behemoth to license the technology openly at a nominal charge. And, the venture capital industry, an important part of the Silicon Valley ecosystem, was given a big boost by Congress in the late 1970s when legislation loosened pension fund regulations — touching off an early wave of high-profile initial public offerings.
Now, three decades later, Congress is likely to write legislation that could again reshape the contours of innovation and entrepreneurship for perhaps decades to come, in ways that are hard to predict.
Passed by the House of Representatives with relatively little debate, the Patent Reform Act of 2007 faces a bruising Senate fight this year. As it now stands, the bill would shift the balance of power in the legal quarrels between patent holders and possible infringers by significantly limiting damage awards.
Although it has become a perennial piece of proposed legislation in recent years, patent reform has acquired urgency in the past year, in the view of large technology companies.
Intel, Microsoft, I.B.M. and Apple and others are increasingly finding that the nation’s patent system has become a minefield, and they are looking for ways to limit the leverage of both small patent holders and patent “trolls,” or speculators who buy hundreds or thousands of patents.
Rather than depending on patents, large information technology companies can increasingly rely on their market power and cross-licensing relationships. As a result, they are trying to rein in huge patent settlements like the $612.5 million award that NTP Inc. won from Research In Motion, the maker of the popular BlackBerry wireless device, or the $1.52 billion award that Lucent briefly won against
Gateway Inc. and Microsoft. (It was recently overturned.)
It appears that the Senate leadership has sympathy for the large technology companies. Opposed to big tech is a small group of high-profile inventors, like the Segway designer
Dean Kamen and the former Apple engineer and QuickTime co-inventor Steve Perlman, as well as venture capitalists and a growing array of smaller businesses that do not share the market power of the largest companies. They have joined forces with the pharmaceutical industry, which has traditionally relied on the protection of a strong patent system.
The battle lines are now established, and legislators are being asked to grapple with the question of how best to protect innovation.
On the one hand, in changing the nation’s patent laws, Congress runs the risk of throttling the little guy — the Stephen Wozniaks and the Steven Jobses — who strike out from their garages with novel ideas that change the world. On the other hand, consumers have clearly benefited from the ability of large technology companies like Intel and Microsoft to use their prodigious market power to drive down prices.
If we limit the incentive of the individual inventor in a garage to transform an entire industry, will there still be enough innovation in the corporate research labs of industrial giants?
It is easy to see the imperfections of the current law and its impact on consumer products. For example, although the Apple
iPhone has many superior features, its e-mail function is in most cases clunky when compared with the earlier R.I.M. BlackBerry. Industry executives say that’s because Apple has been forced to tiptoe around the patents held by NTP. Although the patents have been largely invalidated by the United States Patent Office, there are still active lawsuits that NTP has brought.
Mr. Perlman says the
Supreme Court has already made two landmark rulings that he says have largely addressed the “troll” problem without harming independent inventors like himself. In one case, eBay v. MercExchange, the court limited the ability of a patent covering a small feature to be used as a weapon, as in the NTP-R.I.M. settlement. In April, the court went much further in KSR International v. Teleflex, substantially raising the bar for patent holders in proving that their invention is not obvious. The ruling will make many existing patents more vulnerable and make new patents harder to get as well.
The peril of the new patent legislation as currently written, he argues, is that it would allow the nation’s dominant high technology companies to largely control the pace of innovation, leading to a situation the country has seen once before — in the American auto industry.
“Detroit is a very clear example of what happens when you have large companies who have already established they’re the winners,” he said.
Under the proposed law, what are known as the “Georgia-Pacific factors,” a set of 15 guidelines that courts now use for determining damages in patent cases, would be boiled down to a single concept of “apportionment.” Damage calculations would be based on an economic analysis to ensure that a royalty damage award captures only the economic value attributable to the patent’s specific contribution over previous inventions.
Because the very nature of innovation in the computer industry is to increase performance while reducing cost, this change will create a perverse incentive for inventors, Mr. Perlman argues. If an invention reduces the cost of a device, “then your apportionment becomes less and less,” he said.
BACKERS of the new legislation are skeptical that the limits would have any major impact on incentives for individual inventors.
“I have to say I’m frankly astonished that apportionment has been this controversial,” said Mark A. Lemley, an intellectual-property scholar at Stanford who has testified in support of the legislation. “I can’t think of a straight-faced argument that you as a patent owner are entitled to more than your invention has contributed to a product.”
Congress watchers expect the bill to pass this year, even if the pendulum swings back partly toward the individual inventor before it clears the Senate. That would largely be because opponents may calculate that they have their best chance to water it down under the current Congress and administration.
For his part, Mr. Perlman, who has been awarded 73 United States patents, is fretting that a new patent law may permanently shift the balance between the big guys and the little guys.
“I need as much patent protection as I can get,” he said. “Otherwise Microsoft will clone a crummy version of one of my inventions, and I’ll be bowled over.”

Monday, February 11, 2008

J&J gets patent for ARV drug Etravirine [India]

US major Johnson and Johnson (J&J) has been granted a patent for its anti retroviral drug (ARV) Etravirine in India—the second anti-ARV drug to be patented in India. Pfizer, the world’s largest drug maker, received a patent for Maravoric last year, which made it the country’s first patented ARV drug. The drug got the US Food & Drug Administration’s (FDA) approval in January 2008. J&J received the Indian patent from the Mumbai patent office recently.
The drug already has a US patent and is used in combination with anti-HIV drugs to treat patients who develop resistance to multiple HIV drug medication. The drug is marketed by Tibotec Pharmaceuticals, a subsidiary of Johnson & Johnson, under the brand name Intelence. It is not immediately known the kind of impact J&J’s approval will have in India which has 3 million HIV patients in the country. Experts say that the drug could help prolong the use of a particular drug in a patient.
However, being a new drug its efficacy and relevance in developing countries like India is yet to be tested. NGOs and patient groups are studying the possible impact of the patent before deciding whether to file a post patent opposition against the drug. Interestingly, industry sources claimed out that J&J may use the approval not only to target the Indian market but also as a tool to stop any Indian generic competitor from manufacturing cheap copies of the drug and exporting it globally. Similarly, a patent in India will also make J&J case much stronger when it seeks patent in other developing countries. Since India became Trade-Related Aspects of Intellectual Property Rights (TRIPS) compliant in 1995, manufacturers can patent their products in India and enjoy a monopoly over marketing that product for 20 years. Global pharma companies have been aggressively filing patent applications across the country and some of them have been successful in getting patent protection in the country. However, patient groups and NGOs have been strongly opposing many application saying that the drugs are not new products but mere innovations.

Trademark breach: US software co plans action in India

Compuware looking at resolving issue, with a possible legal course against a Mumbai firm with similar name

Nasdaq-listed Compuware Corp., which makes business software and offers IT services, has been operating in India since 2000, and even set up a liaison office here last year. But the company was recently in for a rude shock—it discovered it wasn’t the only Compuware in the country.

The Detroit, Michigan-based firm, which ended the year to March with $1.2 billion (Rs4,716 crore) in revenue, discovered two weeks back that it shares its name with Mumbai-based Compuware (India), a company that offers business software such as payroll processing solutions to customers.
“We have just learnt about the infringement of our trademark and our legal arm at the US office is looking at it to see how best it can be resolved. We have to see if it requires a legal notice or any other mechanism,” said Raaj N. Shinde, vice-president, international operations of Compuware.
Shinde added the company would take all steps to protect its internationally recognized brand. Compuware has not yet written to the Indian firm about the violation. The founder and head of the Mumbai-based firm, Sunil Merchant, said his firm is not aware of the existence of the US company. “Compuware is a generic name. There are a dozen other companies having the same brand name as Compuware in some form or the other. As long as their (business) domains are different from us, we have no problem with that,” he added. The problem facing Compuware is one other multinationals have addressed before it.
Wal-Mart Stores Inc. was fighting 11 cases in Indian trademark offices to stop the use of names similar to its own. In 2006, it dragged a local dealer for Samsung Electronics Co. to court. The dealer’s lawyer, Pragyan Sharma, said in February that his client was filing for a settlement and would no longer use the Wal-Mart name. Wal-Mart’s lawyer Sharad Vadehra said at the time that his client had already registered around a hundred trademarks in India.

Legal experts say the Mumbai firm in this case could attract action for infringing a registered trademark of an international company. Compuware has registered its trademark in the US.
Under Indian laws, trademark protection applies to words, names, symbols, or devices that distinguish the owner’s goods from those of others. If the trademark is registered, legal action could be initiated against infringement. In the case of unregistered marks, the only protection is the common law remedy of “passing off”.

Anil Ambani set to gain from trademarks [India]

Having benefited handsomely from soaring valuations of his stakes in various Reliance Anil Dhirubhai Ambani Group (R-Adag) companies, Anil Ambani now stands to reap a hefty, steady income from letting various companies use the group name and other Reliance trademarks in their businesses.

It turns out that the R-Adag trademark is held by Anil Dhirubhai Ambani Ventures Ltd (Adav), which is part-owned by Ambani. And Adav is set to receive up to Rs160 crore for the use of the R-Adag trademark, along with the use of Reliance Infratel and Reliance Power trademarks, names and logos, according to the public share offer documents of these two firms of the group.
Last month, Reliance Power Ltd mopped up some Rs10,000 crore in India’s largest public offer, which was fully subscribed in the first minute it opened to the public.
Reliance Infratel Ltd, a towers unit of Reliance Communications Ltd, the country’s second biggest mobile phone services firm, has filed documents for an initial public offer to sell 89 million shares.
According to the respective offer documents, Adav has entered into brand licensing agreement with Reliance Power and Reliance Infratel in return for up to Rs80 crore each for a period of 10 years.
“On 19 July 2007, we entered into a brand licensing agreement with Adav, a company owned by our chairman, Mr Anil Dhirubhai Ambani. The agreement allows us to use the trademark and the ‘Reliance Infratel’ trademark, name and logo...for our services and products on a non-exclusive basis, for a period of 10 years. We are required to incur expenditure up to Rs800 million for these rights and the timing and amount of the payment (subject to this limit) will be determined in Adav’s sole discretion,” the Reliance Infratel draft prospectus reads.
In the Reliance Power filing, the trademark referred to in the first instance is Reliance Adag. Mint couldn’t ascertain whether Adav gets paid by other R-Adag group companies for trademarks as well.
It appears that Adav itself doesn’t yet own rights on the Reliance Infratel and Reliance Power trademarks and logos, which have to be given by Registrar of Trademarks in India, according to the offer documents of the two firms.
It is unclear when the registrar will formally approve the trademark and related applications.
Ambani directly owns around 19% in Adav, while Swan Consultants Pvt. Ltd holds nearly 80% stake in the company, according to latest information with the Registrar of Companies on the website of the Union ministry of corporate affairs.

The spokesperson couldn’t immediately explain the discrepancy between his statement and the regulatory filings from both those companies that clearly note the payments are to Adav.
Ambani, the estranged brother of Mukesh Ambani, India’s richest person, is ranked 18 on the Forbes magazine’s list of the global rich published in August last year.
His business interests span telecommunications, power, entertainment and finance.
This is not the first instance of promoters benefiting from the ownership of the brands used by their own units, ensuring income that tops what they earn as directors fees and through dividends on their stakes.
Omaxe Ltd, a New Delhi-based real estate company, gives money to its promoter, Rohtas Goel, who has registered the brand Omaxe and has entered into an agreement with the company for the use of the name. Omaxe has to pay a lump sum of Rs1.2 crore and a royalty of 2% of the real estate turnover every year to Goel. The agreement is valid until March this year. It couldn’t be established how these firms arrive at the value of the brands registered, nor was it immediately clear which other trade names are held by Adav and how much the company earns in such fees every year.

SUGAR NO. 11 Not Merely Descriptive of Financial Services

In In re ICE Futures U.S., Inc., Serial Nos. 78199832, 78199843, and 78199848 (January 16, 2008), the U.S. Trademark Trial and Appeal Board reversed refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2, finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services."
According to the TTAB:
While the full marks identify contracts with detailed, uniform terms, the record establishes that applicant created those terms for its exclusive use in the rendering of its services, that is, in the operation of a futures exchange.In fact, the evidence of third-party references to SUGAR NO. 11, SUGAR NO. 14 or COTTON NO. 2 in varying forms shows a consistent, explicit association of the marks with applicant, usually referred to as “NYBOT,” a reference to the New York Board of Trade, the predecessor owner. These references are drawn from reports of quotations and discussions regarding applicant and its activities. . . .Accordingly, based on the evidence of record we conclude that SUGAR NO. 11,SUGAR NO. 14 and COTTON NO. 2, when viewed in their entireties and in the fullcontext of their use, are not merely descriptive of applicant’s services. The marks, when viewed in their entireties, are arbitrary. They do not identify a commodity applicant sells, as the Examining Attorney argues. Furthermore, there is no evidence that others have a need to use these terms in rendering the identified services, as the Examining Attorney argues. We find applicant’s long, and apparently exclusive, use of the marks persuasive evidence of the absence of such a need -- for over sixty-five years in the case of the SUGAR NO. 11 and SUGAR NO. 14 marks and one hundred and thirty-five years in the case of the COTTON NO. 2 mark. The record does show that others can and do use the terms/marks to refer to applicant’s specific services. This use in no way indicates that the marks are merely descriptive of the identifiedservices."
Wow, was the Board determined to rule in favor of Applicant, or what? Apparently if one uses a term long enough, and exclusively, the requirements for proper specimens of use go out the window," writes John Welch.As noted in his TTABlog, the Board also reversed the PTO's refusal of registration based on the ground that Applicant's specimens fail to show use of each mark in connection with the identified services. "How in the heck are Applicant's specimens of use proper for its services? The specimens refer to the contracts and the terms. Is a contract a service? I just don't see it. "

No Public Use with General Understanding of Confidentiality from Observers

In American Seating v. USSC Group (January 29, 2008) the Federal Circuit affirmed a jury finding of no invalidity for public use where

. . . As they improved the invention, on several occasions Ditch and Razavi placed evolving prototypes in an out-of-service bus for the purpose of soliciting feedback from friends and colleagues who to varying degrees assisted in the invention’s development.Contrary to USSC’s argument, the fact that the inventors revealed the prototype to a select group of individuals without a written confidentiality agreement is not dispositive. When access to an invention is clearly limited and controlled by the inventor, depending upon the relationships of the observers and the inventor, an understanding of confidentiality can be implied. Id. at 1381; Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265-66 (Fed. Cir. 1986). In this case, the jury was entitled to conclude that Ditch, Razavi, and the limited number of people permitted to view the tie-down restraint system prototype shared a general understanding of confidentiality. Ditch demonstrated the prototype on an out-of-service bus, solicited feedback, and removed the invention to store under his control. There was no evidence that the prototype was placed in service before December 1995, and no evidence that an unrestricted number of people unconnected with the development of the invention observed the invention in use. The district court properly confirmed the jury verdict that the ‘038 patent is not invalid for public use.

Sunday, February 10, 2008

The Patent Pal Toolbar [International]

If you like toolbars, you'll love the free Patent Pal from Jay Wahlquist of Fogg & Powers.
It supports over 20 unique patent related searches, including Google Patents, FreePatentsOnline, Esp@cenet, WIPO, Pat2Pdf, the MPEP, and many more listed on the screenshots page. It also includes links to other useful resources for both US and foreign patent practice, such as links to every major patent office in the world and various ppatent law journals.

Tafas v. Dudas: Under Advisement

According to PLI,

The much anticipated Glaxo, Tafas and USPTO hearing on the cross motions for Summary Judgment concerning the USPTO's proposed patent claim and continuation limits is now over, and there will be no decision issued today.
Judge Cacheris will take the matter under advisement and render a decision as soon as possible. The court has recessed until Monday. Get more from PLI at and even more from Jill Browning at

Quotes of the Week (on the Future of De Novo Claim Construction at the Federal Circuit)

From Federal Circuit Judge Bryson in Tivo v. Echostar Communications (January 31, 2008) at footnote 2:

As noted, the district court based its construction of the software claims on its conclusion as to what the critical claim terms would mean to a person of skill in the art. That conclusion in turn was largely based on the court’s assessment of extrinsic evidence. Although we have characterized claim construction as a question of law even when it involves competing presentations of extrinsic evidence, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc), we recognize that there is substantial force to the proposition that such a conclusion is indistinguishable in any significant respect from a conventional finding of fact, to which we typically accord deference. See Amgen Inc. v. Hoechst Marion Rousel, Inc., 469 F.3d 1039, 1041 (Fed. Cir. 2006) (Michel, C.J., dissenting from denial of rehearing en banc); id. at 1043 (Newman, J., dissenting from denial of rehearing en banc); id. at 1044 (Rader, J., dissenting from denial of rehearing en banc); id. at 1045 (Gajarsa, J., concurring in denial of rehearing en banc); id. at 1046 (Moore, J., dissenting from denial of rehearing en banc). Applying our governing non-deferential standard of review, we uphold the district court’s conclusion in this case. If we were to treat that ruling as a finding of fact, we would uphold the district court’s ruling a fortiori in light of the more deferential “clear error” standard applicable to factual findings.
From Professor Harold C. Wegner in "THE SENATE ATTACKS CYBOR DE NOVO CLAIM CONSTRUCTION" (drafted February 6, 2008):
As seen from the TiVo “footnote 2”, fully six judges in Amgen are on record as favoring en banc review of Cybor for fact-based claim construction rulings. Clearly, Circuit Judge Mayer strongly favors overturning Cybor: “The court's opinion [in Phillips refraining from dealing with Cybor] is akin to rearranging the deck chairs on the Titanic-the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones' locker.” Phillips v. AWH Corp., 415 F.3d 1303, 1334-35 (Fed. Cir. 2005)(en banc)(Mayer, J., dissenting). With the vote of Judge Bryson as manifested in TiVo, this provides an eight vote majority for en banc review of an appropriate case – one more than needed.
. . . At some point, Cybor must be revisited to vest primary claim construction responsibility on trial courts. Whether a change will occur in the near term is unclear.

New Test for Business Method Patentability Produces Same Results [UKIPO]

The UK Court of Appeal’s recent judgment in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan’s Application [2006] EWCA Civ 1371 ("Aerotel/Macrossan") (236Kb) proposed a new test for assessing whether inventions such as business methods relate to patentable subject matter.
In response to that decision, the UK Intellectual Property Office ("Office") issued an official practice note on the way patent examiners assess whether inventions are for patentable subject matter.
This notice supersedes the following Practice Notices:
Patents Act 1977: Examining for Patentability (29 July 2005)
Handling Patent Applications for Excluded Subject Matter (8 February 2002)
Patents Act 1977: interpreting section 1(2) (24 April 2002)
Claims to Programs for computers (19 April 1999)Other Practice Notices on the question of patentable subject matter still stand save as follows:
Patentability of games (25 November 2005): Paragraph 4 is superseded by the present Notice. The rest of this Notice, which explained the comptroller would no longer rely on the Official Ruling 1926(A), still stands.
Patent applications relating to methods of doing business (24 November 2004): This said the Office would bring appropriate cases to a hearing at an earlier stage and issue abbreviated decisions. This still stands, and indeed may become even more relevant now that Aerotel/Macrossan has simplified the approach.A new assessment by the UKIPO now also gives some examples of how the Office sees the test being applied in practice. The examples chosen are patent applications that were refused by hearing officers earlier this year using the old tests. According to the Office, "In every case the new test appears to come to the same conclusion, thus confirming the Court’s view that the new test is consistent with previous decisions of the Court."

Wednesday, February 06, 2008

Docstoc IP Document Sharing Service

Docstoc is a user generated community for sharing professional documents, including free legal documents, legal forms, and legal templates. Download sample contracts, real estate forms, employment forms and much more.

Check out the IP section here, with subsections on
Sole Proprietorship
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Trademark The service also offers a vast quantity of business, financial, technology, educational, and creative documents for free. Users can upload their documents for all the world to share. In addition, users can store their documents in their own personal online folders for anytime, anywhere access.

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EPO on "Why researchers should care about patents"

In "Why researchers should care about patents," the European Patent Office notes that "Before starting a R&D-project, an effective study of the state of the art is useful and advisable. It shouldnot only focus on books and scientific journals, but also take patent information into account."
According to the EPO, there are several reasons for searching patent literature, to
Avoid duplication of R&D efforts and spending
Find solutions to technical problems
Gather business intelligence
"up to 30% of all expenditure in R&D is wasted on redeveloping existing inventions."
The report also goes on to discuss other basic topics such as "Why and when should I consider patenting in a R&D project?," "Respecting third parties’ rights," "Some facts about patent documents," and "Where can I get more help and information?"

Written Description Provides Singular Meaning for "A/An" [Patent Claim Construction]

In TIVO, Inc. vs. Echostar Communications Corporation (January 31, 2008), the Federal Circuit distinguished its Baldwin Graphic decision (on January 15, 2008), interpreting the claim phrase "wherein said Output Section assembles said video and audio components into an MPEG stream" as requiring the reassembly of the audio and video components into a single interleaved stream.EchoStar had argued that the "assembles" limitation covers only the assembly of audio and video components into a single, interleaved MPEG stream. TiVo argued that the "assembles" limitation also covers the assembly of each component, audio and video, into its own separate stream.According to the opinion by Circuit Judge Bryson.

As a general rule, the words "a" or "an" in a patent claim carry the meaning of "one or more." Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 2007-1262, slip op. at 7 (Fed. Cir. Jan. 15, 2008). That is particularly true when those words are used in vombination with the open-ended ntecedent "comprising." See, e.g., Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). However, the question whether "a" or "an" is treated as singular or plural depends heavily on the context of its use. See Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1359 (Fed. Cir. 2005). The general rule does not apply when the context clearly evidences that the usage is limited to the singular. Baldwin Graphic, slip op. at 10.Unlike the case in Baldwin Graphic, where the claims and the written description could be read to encompass either a singular or plural interpretation of "a" or "an," the claims and written description in this case make clear that the singular meaning applies. The pertinent claim language refers to "assembl[ing] said video and audio components into an MPEG stream," which in context clearly indicates that two separate components are assembled into a single stream, not that the video components are assembled into one stream and the audio components into a second stream. Earlier limitations in the claims refer to converting specific programs into an MPEG stream, parsing that MPEG stream and separating it "into its video and audio components." Later limitations refer to sending the reassembled MPEG stream to a decoder and converting it into TV output signals. Those steps clearly describe theseparation of a single stream into two components and then reassembly of the components into a single stream for conversion into television signals. Moreover, although the open-ended term "comprising" is used to refer generally to the limitations of the hardware claims, the "assembles" limitation itself does not contain that term. Rather, the claim language simply refers to the assembly of two components into "an MPEG stream."

The corresponding explanation in the specification refers to separating the MPEG stream into video and audio components, which are then "reassembled into an MPEG stream." ’389 patent, col. 2, ll. 15-29. That language describes the process of separating one stream into two sets of components and then reassembling the two sets of components into a single stream. In particular, when discussing the term "assembles," the specification states that "when the program is requested for display, the video and audio components are extracted from the storage device and reassembled into an MPEG stream which is sent to a decoder. The decoder converts the MPEG stream into TV output signals and delivers the TV output signals to a TV receiver." ’389 patent, Abstract; id., col. 2, ll. 27-32. The specification also provides that the "MPEG stream has interleaved video . . . and audio . . . segments." Id., col. 4, ll. 23-26. That language, like the claim language, describes the MPEG stream that is "reassembled" as a single MPEG stream, not two different streams. The concept of reassembly indicates that the MPEG stream is restored to an earlier state, which in this case would be the state in which it was initially received by the system, as a single stream of data. Accordingly, we agree with EchoStar that the claim would be interpreted by one having ordinary skill in the art to require the reassembly of the audio and video components into a single interleaved stream.

PatentScrounger Visual Patent Searching

The PatentScrounger visual patent searching website is available here at no charge.

Plager on the Importance of the Federal Circuit for Patent Cases

In "Rethinking Patent Law's Uniformity Principle: A Response To Nard and Duffey," Federal Senior Circuit Judge S. Jay Plager & his law clerk note "several respects in which [they] believe the case for overturning Congress’s decision to have one court rather than many deal with patent cases falls short of persuading:"

If we were writing on a clean slate, with no prior history and no established institutions for deciding patent law issues, the question whether there should be a single court that hears all patent cases or whether that assignment should be decentralized would be a topic worthy of careful and thoughtful consideration. In theAmerican judicial system, that consideration occurred and led Congress to enact the 1982 Act that created the Federal Circuit. Though it is true that we should not be wedded to a conclusion that no longer works, those who claim change is needed bear a heavy burden to prove it.
In our view, Professors Nard and Duffy have not been able to meet that burdenwith adequate proof. There is nothing to show that recreating the potentialfor forum-shopping by litigants, and reopening the disagreement among theseveral circuits as to whether patents are good or bad as national policy, will produce better decisions than we currently get. There is no showing that the process of airing diverse views and exposing alternative approaches would be carried forward more thoughtfully and to better purpose in a milieu of multiple courts and thirty or forty judges than it currently is with one court with sixteen judges who regularly publishconcurrences and dissents, sometimes more than some observers might think desirable. This is especially so when we consider the advantages that judges who regularly see a broad cross-section of patent cases have compared to those who see only an occasional case in the field.Senior Judge Plager also discusses the consequences of the visibility, significance and impact of the court in an earlier article titled "The Price of Popularity: The Court of Appeals for the Federal Circuit 2007."

Bone of Fido Parody: Louis Vuitton v. Chewy Vuiton [News Flash]

Louis Vuitton Malletier S.A. v. Haute Diggity Dog concluded that canine chew toys fashioned after Louis Vuitton handbags were a permitted parody that did not infringe or dilute Louis Vuitton’s admittedly well-known marks.
Although the decision breaks little new ground in the trademark jurisprudence of parody and infringement, it was a first opportunity for an appellate court to assess parody under the new Trademark Dilution Revision Act.

Patent Audits And Internal Invention Surveys: 7 Strategies, 33 Tactical Steps, And 2 Benchmarks

Both the corporate management and investment communities increasingly recognize that building and exploiting a strong corporate patent portfolio increases shareholder value. Recent empirical studies have shown for the first time that for both large cap S&P 500 index companies and new tech start-ups, strong patent portfolios and good patent strategies are essential to building revenues, operating margins, and shareholder value.

A first step in building a strong patent portfolio from internally developed concepts is to identify internally developed products and ideas for patenting. This requires an ongoing internal survey for patentable concepts, which is often called a "patent audit," or "patentability inventory," or "invention audit," or "invention data mining."
Following is a discussion of 7 strategies, 33 tactical steps, and 2 benchmarks that may be executed in a patent audit. A patent program may be developed with all these steps, or selected steps that are most applicable to a specific company. Analogous steps may be taken for other types of intellectual property, such as trademarks, copyrights, and domain name registration.
Strategy 1. Industrial Intelligence and Response
A patent audit may be used for legitimate industrial intelligence to determine what your major competitors are doing and to respond to the same before severe problems are generated for you by your competitors. The following steps may be followed:
Step 1: Identify your major competitors.
Step 2: Inventory the current U.S. and foreign patents issued to your major competitors. Also, search the published foreign patent applications of your competitors that have not yet resulted in patents in the United States.
Step 3: Group the resulting inventory of competitor patents by product line and industry.
Step 4: Characterize market niches and directions of the patent portfolios developing with your competitors.
Step 5: Determine if "invent-around" opportunities exist for you for any particular patent grouping of your competitors. (Rules for inventing-around competitor patents are discussed in Chapters 2 and 3 of Patent Strategies for Business, third edition.)1
Step 6: Determine whether you can use a leap frog and tollgate strategy for any group of competitor patents. (The leap frog strategy and tollgate strategy are discussed in Chapters 2 and 3 of Patent Strategies for Business, third edition.)
Step 7: Determine if any group of competitor patents blocks any of your planned products or lines of business. If so, develop an invent-around strategy for each of your blocked future products.
Step 8: Plot the number of patents issued per year for each competitor and product grouping. From this determine the rate of growth of competitor patents in your industry. Use this percentage growth as a benchmark for your development of a patent portfolio for your own company. Consult any available current data on patent strategy metrics and competitive benchmarks in your industry.
Step 9: Develop a list of key terms and key fields for patent developments in your industry.
Step 10: From the list in Step 9, find the key patents in your industry, and determine who owns these key patents. Determine invent-around strategy possibilities for such patents.
Strategy 2. Market Driven Intellectual Property Survey for Existing Products and Services
A market driven intellectual property survey process for existing lines of business may have the following steps.
Step 1: Inventory all the intellectual property in your company at this time. This includes patents, trademarks, copyrights, and trade secrets. The inventory should also include license agreements, joint development agreements, partnership agreements and other contractual arrangements that may impact intellectual property. This may include bringing intellectual property into your company, transferring out intellectual property from your company, and the development and ownership of intellectual property in the future.
Step 2: Inventory the major existing product or service lines of business of your company.
Step 3: Correlate each intellectual property with the products and services that are protected by the intellectual property. From the opposite point of view, also correlate each line of business with the intellectual property protecting each line of business from avoidable competition.
Step 4: Determine if any of your products or services are unprotected from avoidable competition by intellectual property. If so, develop an intellectual property strategy to protect each unprotected line of business. Be sure to apply this process to new lines of business that are not yet for sale but planned and under development. For each intellectual property that is protecting no line of business, consider selling off that property.
Benchmark 1
Each product should have at least one intellectual property protecting that product from competition. Utility patents, where they can be obtained, may be the best form of protection available.
Step 5: Plot the growth of your intellectual property portfolio, especially your patents, over time. As a benchmark, determine whether your rate of intellectual property portfolio growth is keeping up with that of your competitors.
Step 6: Determine the major lines of business of your competitors.
Step 7: Determine what intellectual property, if any, is protecting each of your competitors' lines of business.
Step 8: Develop a strategy to defeat any intellectual property protecting each of your competitors' lines of business from your competition. In the case of competitor patents, determine if they can be invented-around.
Strategy 3. Market Driven Intellectual Property Survey for New Products and Services
Step 1: Identify all your new lines of business (goods or services) currently under development.
Step 2: Itemize your intellectual property strategy for protecting each of these new lines of business from competition. Develop intellectual property for each new line.
Step 3: Determine the risk for each new line of business of suppression by competitors asserting infringement of the competitors' intellectual property. Where the risks are serious, determine a strategy to legitimately circumvent the competitor's intellectual property.
Strategy 4. Technology Driven Intellectual Property Survey
Step 1: Inventory each research and development effort at your company.
Step 2: Specify the intellectual property for each project under development, both offensive (to protect from copycat competition by competitors) and defensive (to avoid infringement attacks by your competitors enforcing their intellectual property).
Step 3: For unprotected R&D projects, develop an adequate intellectual property strategy (offensive and defensive), or consider terminating the project. (Sell what you can patent; patent what you can sell.)
Benchmark 2 (For Manufacturing)
A rule of thumb in some manufacturing industries is to develop one patent for each $1 million of research and development funds expended.
Strategy 5. Licensing
Step 1: From your intellectual property inventory, determine which intellectual properties do not cover a current or planned line of business. Determine for each of these intellectual properties if you may sell or license that intellectual property to a non-competitor to generate cash flow.
Step 2: Regarding each intellectual property that covers a current or planned good or service, determine if that intellectual property may be licensed on a non-exclusive basis for cash to use in a non-competitive way.
Strategy 6. Patent Cluster Analysis
Step 1: Identify your current patents.
Step 2: Check the appropriate databases to determine which of your patents are referred to as named prior art references in other patents. Develop a "lineage" chart of patent cross-references to prior art.
Step 3: Determine the owners of the various patents in the cross-reference lineage chart.
Step 4: Determine if any of your patents are developing a cluster of patents around them from a particular competitor referring to your individual patent. This may indicate that a competitor is attempting a "picket fence" strategy to contain the utility of one of your key patents. (The "picket fence" strategy is discussed in Chapter 3 of Patent Strategies for Business, third edition.)
Step 5: If any of your key patents are being "picket fenced," determine if the competitor's picket fence patents can be "leap frogged."
Step 6: Determine if you can "picket fence" any of your competitors patents in your industry.
Strategy 7. Special Tips for Software, Telecom Services and Financial Services
All industries now have patentable proprietary software, including the software, telecom services, and financial services industries.
Step 1: Patent your new software and services. Also, review your RFP's for software acquisitions, for possible patent opportunities. Software, telecom services and financial services are relatively new to patents and present unique opportunities for patent competition. Note in particular that in these three fields, new services and new infrastructures for providing old services are now candidates for patent protection. These new developments may also infringe the prior patents of others.