Monday, March 31, 2008

Indian Government to launch Rs. 300 Crore awareness programme on Intellectual Property [India]

The Indian government plans to revamp the existing intellectual property implementation mechanism to address concerns of international players in the pharma, and food and information technology industries.

The Department of Industrial Policy and Promotion (DIPP), the nodal department that handles intellectual property rights (IPR) related matters under the commerce ministry, is launching an ambitious Rs 300-crore project to sensitise all stakeholders, including law enforcement agencies, scientists, companies, ministries and the general public on IPR issues.

The department also plans to set up a state-of-the-art trademark registry office in Ahmedabad and enhance infrastructure capacities of the existing trademark office in New Delhi.

It is also planning to set up a National Institute for Intellectual Property Management at Nagpur. These steps come soon after the patent office modernisation programme that cost Rs 149 crore.

The project is in response to demands that India raises the level of intellectual property protection available in the country to multinational players.

On March 13, DIPP organised a meeting of all concerned ministries and departments that handle IP to facilitate better coordination and understanding on IP issues for improved compliance.

According to sources, DIPP wanted an update on all current and emerging issues in IP from ministries like education, health, information and broadcasting, chemicals and petrochemicals and agriculture.

Among the current issues that were discussed by these ministries were optical disc legislation (an initiative by the Ministry of Information and Broadcasting), copyright on internet (a matter pending with the department of higher education) and the protection of traditional knowledge.

Even though DIPP does not consider the issue of secrecy of clinical trial data as an IP problem, “data protection” was also discussed in the meeting.

“Data protection issues were discussed in the meeting as it is often linked to IP. A high-level committee headed by former chemical secretary had looked into the matter and gave its recommendations for data protection clauses in pharmaceutical and agrochemicals. We have been discussing these issues to facilitate exchange of views,” sources said.

The issue of “data protection” has been a matter of serious concern for multinational pharmaceutical companies for a long time.

Yahoo! Supports OpenSocial; Yahoo!, MySpace and Google to Form Non-Profit OpenSocial Foundation [International]

Yahoo!, MySpace, and Google today announced they have agreed to form the OpenSocial Foundation to ensure the neutrality and longevity of OpenSocial as an open, community-governed specification for building social applications across the web. Yahoo!'s support of OpenSocial and role as a founding member of the new foundation are landmarks for the rapidly growing specification which will now offer developers the potential to connect with more than 500 million people worldwide.

The OpenSocial Foundation will be an independent non-profit entity with a formal intellectual property and governance framework; related assets will be assigned to the new organization by July 1, 2008. The foundation will provide transparency and operational guidelines around technology, documentation, intellectual property, and other issues related to the evolution of the OpenSocial platform, while also ensuring all stakeholders share influence over its future direction.

The OpenSocial Foundation website at will serve as the portal for the community to find all information about OpenSocial and the foundation as they evolve. Developers and website owners can now visit for the latest specifications, links to other resources, and the opportunity to get involved.

Engineers from Yahoo!, MySpace, and Google will continue to work together and with the OpenSocial community to further advance the specification through the new foundation, continuing several core elements of OpenSocial since its announcement by Google, MySpace, and many others in November 2007:
· all specifications are available under a Creative Commons copyright license
· public community involvement shapes the specification's direction
· an open source reference implementation called Shindig is being created and developed as a project in the Apache Software Foundation incubator, available at

About OpenSocial
OpenSocial addresses an emerging problem for developers who are eagerly building applications people can enjoy with their friends: before OpenSocial, if a developer built a "favorite photos" application to work on one social network, it would have to be built all over again to work on another site. OpenSocial tackles this problem at its technology ro, providing common "plumbing" that lets social applications run on many different websites without requiring duplicate work from either developers or the websites.
The result is a vast distribution platform for social applications, whether they are for sharing photos or playing games or arranging real-world meetings or any number of other activities ' everything is more fun, interesting, and useful when users can involve their friends and contacts.

Steady Evolution, Important Milestones
Millions of people around the world are beginning to see the benefits of the OpenSocial platform as new features appear on their favorite social networks. MySpace launched the MySpace Developer Platform, which uses the OpenSocial APIs, and began rolling out applications to its users. orkut has also started making OpenSocial applications available to its users, and hi5 will do so at the end of March.

Thanks to the Shindig reference implementation, most websites can have a proof of concept of OpenSocial applications up and running in days. That means websites need only to make this small time investment in order to make thousands of new social features available to their users.

Global members of the OpenSocial community include, Friendster, hi5, Hyves, imeem, LinkedIn, Ning, Oracle, Orkut, Plaxo,, Six Apart, Tianji, Viadeo, XING, and others. In time, OpenSocial will unlock more powerful and pervasive social capabilities across the entire web, as developers' applications can easily reach users across any of the websites, web applications, or social networks they use.

Microsoft liable for income tax in India, finally? [India]

If a survey is conducted in India with the sole objective of finding a non-user of Microsoft software, the exercise may not yield tangible results at all. In other words, no computer literate can even feign ignorance about his familiarity with Microsoft products. So pervasive and entrenched are the Microsoft brand name and products in any computer-literate society.
Microsoft pays income tax on income generated from its software licensing in all other countries in the world. But not many know that the Microsoft Corporation does not contribute even a single penny to the Indian exchequer in terms of income tax!

The CIT(A) -- Commissioner of Income Tax (Appeals) -- handling international taxation cases in Delhi has recently held that the Gracemac Corporation, a 100% subsidiary of Microsoft which had in 1999 granted proprietary and ownership right in license and in intellectual property (IPR) of Microsoft software and hardware products, is liable to pay income tax on its gross royalty income earned out of licensing of software to Indian customers.

The total gross royalty income for the six assessment years -- from 1999 to 2005 -- is computed to be about Rs 2,240 crore (Rs 22.40 billion). Going by 15% tax on royalty u/s 9(1)(vi) of the Income Tax Act read with Article 12 of the DTAA (Double Taxation Avoidance Treaty) with the United States, the total tax liability on the Microsoft subsidiary which has been named after Bill Gates' wife -- Melinda -- is calculated to be about Rs 350 crore (Rs 3.50 billion). Given that interest has also been confirmed, the total liability is likely to exceed Rs 700 crore (Rs 7 million).
No doubt, this case has all the makings of a big revenue newsmaker which would travel up to the Apex Court in due course of time, but a studious perusal of the facts, the legal positions -- both domestic as well as international -- and the lucidity with which every point of the counsels of the assessee has been torn apart, reveals that the Revenue department has indeed made a solid case which would serve as a model decision for others in the department and also a quality training material for the young revenue officers who are keen to dabble into the complex architecture of international finances and their tax liabilities.

Sunday, March 30, 2008

PreCYdent Creates New Search Technology for Lawyers and Public [International]

PreCYdent, a start-up based in San Diego and Milan, Italy announced today that it has created a new legal research technology that is many times more effective at finding relevant case law than the decades-old Westlaw and LexisNexis. The search engine's alpha version is available at and is free to users. (Logo:

"Our technology mines the information in legal citations," said co-founder and CEO Tom Smith, who is a professor at the University of San Diego Law School. "It makes searching for law as easy as searching the Web, which means anyone can do it."The search algorithm was created by the PreCYdent team, led by Antonio Tomarchio, a mathematician from the Politecnico di Milano, Italy's most prestigious technical university. Politecnico professors Piero Fraternali and Stefano Ceri are the company's scientific advisors. "By adapting web-style mathematical measures to the legal citation network, we can identify the most authoritative legal cases in any area," Tomarchio said. "According to our tests, our search engine is four to five times more effective than both Westlaw and LexisNexis natural language engines in identifying relevant cases." Smith said the PreCYdent algorithm has been tested against Westlaw and LexisNexis by examining each engine's predictions of what citations would occur in over 200 articles, notes and comments written by legal experts. "One patent law expert said our search quality was so good it was 'astounding,'" Smith said.

The PreCYdent website has a number of Web 2.0 features. Users may comment on cases and rank their importance. Lawyers can upload documents to help potential clients find them and identify their expertise.PreCYdent is free. "We have all U.S. Supreme Court cases, U.S. Court of Appeals cases to 1950, and recent Supreme Court cases of large states such as New York, Florida, Illinois and California. We will have all 50 states soon," said Smith. "Our technology can be extended to other legal systems. We plan to cover the UK, Canada, Australia, India and other common law countries," Smith said."PreCYdent technology can be extended to other verticals," Tomarchio said, "such as bio-medical databases, e-discovery, e-commerce and online advertising. The algorithm is very fast and scalable."

Indian companies face biggest fraud risks from IT, IPR: KPMG Survey

Theft of intellectual property rights (IPR) and deceptions related to e-commerce and IT pose the greatest risk of frauds for Indian corporations in the next three years, according to a survey by consulting firm KPMG India.
These frauds are seen replacing supplier kickbacks and bribery as the biggest risks that organisations currently face, KPMG said in its India Fraud Survey report.

Almost 60 percent of respondents, compared with about 39 percent in the last survey in 2006, have experienced fraud in their organisation in the last two years, the survey found. The financial sector was perceived to be the most vulnerable to frauds, followed by real estate/infrastructure and IT/ITeS sectors.

"The cost of fraud to businesses is difficult to estimate because not all fraud and abuse is discovered, not all uncovered fraud is reported, and civil or criminal action is not always pursued," it said.

About 70 percent of the respondents said it was important to conduct integrity due diligence on senior management and strategic alliance partners to help control the risks. More than 60 percent of the respondents in the survey said their organisations did not have a complete understanding of the various risks of frauds faced by them and lacked effective internal control mechanisms to mitigate these risks.

It found almost a third of all frauds were detected by accident or through anonymous letters and not by the company's internal controls framework. However, about 72 percent of the respondents said their companies carried out background checks on new recruits.

Friday, March 28, 2008

Firm sues over the right to use sunglass[es] design: Fantastic Four - the Rise of the Silver Surfer [United Kingdom]

RDP Limited is a London-based company which sources promotional film merchandise. It lists items connected to Star Wars, Batman and Spider-Man in its list of past products. Sports clothing and equipment firm Oakley is suing all three companies over a pair of sunglasses included in a gift pack produced to promote the Fantastic Four film. It claims that the sunglasses violate rights it holds in the design through a US design patent.

Actor James Marsden wore a specially-made pair of Oakley sunglasses when he played Cyclops in the film X-Men. A design patent exists in the US but not in the UK, where a design for sunglasses could be protected through registration with the UK Designs Registry, part of the UK Intellectual Property Office.

Oakley wants the court to award it an injunction stopping the three companies from making any sunglasses that infringe on its design patent in the future. It also wants the companies to transfer to it any profits it made on the sale of the sunglasses as well as damages in compensation for its lost profits due to the activity and royalty on sales already made.

Cosmetic firms among top trademark filers: WIPO

Henkel, L'Oreal and Beiersdorf were all among the top twenty trademark filers in 2007 as applications increased significantly reflecting higher trade with booming Asian economies, according to a UN agency.

The personal care market in countries like India and China is growing fast providing opportunities for cosmetic companies to boost their top line as sales growth in Europe and North America slows.Overall the number of international trademark applications received in 2007 by the World Intellectual Property Organization (WIPO), a United Nations agency, increased 9.5 percent to 39,945 compared to the previous year.Chinese leadChina remained the most designated country in international trademark applications reflecting increasing levels of trading activity by foreign companies in the country.The number of cosmetics companies among the top twenty filers is indicative of the opportunities in the Chinese personal care market.Germany-based Henkel is the holder of the most international trademarks while the company featured alongside L'Oreal and Beiersdorf in the list of the twenty firms to make the most applications in 2007.
Applicants from Germany led the list of top filers followed by users in France and then the US. Trademark systemThe applications were made via the Madrid system which enables individuals and companies to acquire and maintain trademark protection in export markets. Increased designations in a country usually reflect the commercial activity by foreign companies although the figures are only indicative.The overall growth in the number of trademark applications received by the WIPO reflects the development of the Madrid system as well as international trade.WIPO director general Dr. Kamil Idris said: "The Madrid system has earned the trust and confidence of the business community as a reliable option for brands seeking export markets."WIPO will continue to enhance its services to the private sector to enable companies to obtain and maintain trademark protection in a timely and cost-effective way."

Indian Government notifies Intellectual Property Enforcement Rules [India]

Vide Circular 41/2007 –Customs, The Government of India has notified and published the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 and the instructions for its implementation.

The Government of India in compliance with its TRIPS obligations to implement border control issues [Articles 51 – 60] and curb infringement of intellectual property rights has issues the aforesaid circular that prohibits import of goods that infringe national IPR laws as well as IPR laws prevailing in the EU and other countries.
The Rules, among other aspects, also provide for modalities pertaining to registration by the Customs, issuance of notice by the IPR holder, provisions for protection to the rightful importer etc.

The Association of Intellectual Property Education Starts the World's First, Globalized ''Intellectual Property Management Skills Test''

The Association of Intellectual Property Education (President: Yuji Tanahashi, Minato-Ku, Tokyo) has been nominated by the Minister of Health, Labour and Welfare as the test agency to develop examination content for the new national "Intellectual Property Management Skills Test" to commence from July 2008. The announcement was made on 18 March.

International Intellectual Property Management and Practical Strategic Skill in the Global Age
At present, in the intellectual property field, national examinations such as the "Patent Attorney Examination" are mainly concerned with the practice, knowledge and skills of dealing with filing applications required to operate as an agent in the home country's patent office. In the Japanese domestic economy - mainly manufacturing, such as consumer-electronics and automobile manufacture - the domestic market has already become saturated whereas the sales rate in foreign countries has increased. Accordingly, the global economy becomes more significant, and the practical skills for global intellectual management and strategy are required more than ever to improve the relative international position of Japanese companies in the future. However, any suitable national examinations were not available on a global basis.

Against this background, the newly initiated "Intellectual Property Management Skills Test" provides a world's first national examination for typical Japanese in a highly technical, competitive field, to support the establishment of global intellectual property rights and business expansion for enterprises. Therefore, the core purpose of this examination relates not only to the procedures and intellectual property rights of the Japanese Patent Office, but also to the United States, Europe, China, Korea India, etc. and is to evaluate intellectual property management, practical knowledge for strategy and know-how for associated enforcement in crucial markets.

Toward the "Intellectual Property-Based Nation", the Examination Committee Consists of Relevant Ministries and Associations in a Cross-Sectional Manner
Since the declaration of the "Intellectual Property-Based Nation" by the Koizumi Administration in 2002, Japan has operated various approaches to turn its aspirations for the development of intellectual property expertise into reality. This includes human resource development through the setting up of an Intellectual Property Strategy Headquarters, the new enforcement of the "Intellectual Property Basic Act", and the amendment of related laws and regulations such as Patent Law, Copyright Law, and the Unfair Competition Prevention Act.

Recognizing the complication of assignments across ministries and agencies that have existed in the past in the field of intellectual property, the new examination builds a coalition of cross-sectional cooperative structures to this area. The examination board participates in the crossover traditional government agencies, such as the Japan Patent Office, the Ministry of the Economy, Trade and Industry (Office of Intellectual Property Policy), the Agency for Cultural Affairs (Copyright Section) and the Ministry of Agriculture, Forestry and Fisheries (Seeds and Seedlings Division). In addition, the board plays an active role in the traditional national qualification bodies, notably the Japan Federation of Bar Associations and the Japan Patent Attorneys Association.

The Examination Progresses from "Grade 1" Required Advanced Practical Ability to "Grade 3" to Expand the Human Resource Capacity within Intellectual Property
It divides into "Exam in Academic Subjects" and "Practical Exam", which cover required basic knowledge and practical knowledge respectively. Grade 1 evaluates advanced international intellectual property management and practical strategic ability, in particular. There is an oral examination for the practical element. It is prohibited to take away exam papers, exceptionally.

This purpose of the examination is to refine and evaluate practical skills. However, Grade 3 targets full members of the society and students. The leaking of classified business information and know-how, the sale of fake brand-name products and the sale of pirated software in daily life are social issues. Therefore, this association attaches importance to the development of intellectual property through the Grade 3 examination to raise awareness of intellectual property to address these issues.

Human Resource Development in Intellectual Property to Promote Japan to the World Stage - Compliance with Intellectual Property Education Program in the United Nations Agency for Grade 3
Additionally, the content and level of Grade 3 is compliant with the Universal Intellectual Property Education Program developed by the UNs’ World Intellectual Property Organization (WIPO). From the aspect of international contributions to develop the real global economy through the improvement of intellectual property mind internationally, we have appealed to WIPO to offer all Grade 3 copyrights as a voluntary conveyance for human resource development in foreign countries.

We have been concerned to promote the understanding of the intellectual property field through the "Intellectual Property Test" (a total of more than 40,000 have taken part in exams from March 2004). Through the new "Intellectual Property Management Skills Test", we increase our efforts, by way of precise exam management and PR activity, as the nominated institution to contribute to the national promotion of human resource development for intellectual property.

1) What is the Intellectual Property Management Skills Test?
The "Intellectual Property Management Skills Test" (hereinafter "IPMST") is a test related to the profession of "Intellectual Property Management", which is one of the skills test systems for the national examination institution. The profession of "Intellectual Property Management" is based on operational work within companies and associations. Its aims are the creation, protection and utilization of intellectual property of inventions, utility models, designs, trademarks, trade secrets, and copyrighted work. In particular, this profession is of value in creative business, patent mapping and strategic planning for applications, and procedural management in its protection sections; license strategic planning in its utilization sections; and trade secret management in the management of intellectual property. IPMST is an examination to assess the degree of these skills and the related knowledge. The coverage and the level of IPMST is compliant with "Intellectual Property Skill Standard" of the Ministry of Economy, Trade and Industry.
("Intellectual Property Skill Standard" URL:

The Skills Test is a national examination system to determine and officially recognize a working person's skill according to certain standards. It is operated by promoting the occupational knowledge, skills and professionalism of workers. Furthermore, it contributes to the development of industry based on the Human Resources Development Promotion Law (governed by the Ministry for Health, Labour and Welfare). The Skills Test has a significant role in increasing skills and learning motivation, promoting employment stability and smoothing reemployment, and improving the wider recognition afforded to people working in the intellectual property field.

About the Association of Intellectual Property Education -
The aim of the Association of Intellectual Property Education is to spread knowledge and education within the intellectual property field through the skills test system, and simultaneously to promote the qualities and abilities of the human resources working in this field. It also makes a significant contribution to the goals of an Intellectual Property-Based Nation in our country. As specific achievements, we became the nominated provider of the private examination "The Examination of Proficiency in Intellectual Property" (2004-March, 2008) which has had 40,000 examinees to date. The Minister of Health, Labour and Welfare appointed us as the test agency for the new national examination "Intellectual Property Management Skills Test" on February 29, 2008.

The Association of Intellectual Property Education

Tomoyuki Kanai, +81-3-3438-2147
(Japanese correspondence only)
Fax: +81-3-3438-2148

The Pirates of the Arabian? In a first, Bollywood and Hollywood versus the Pirates [India]

According to the first Bollywood-Hollywood collaborative study conducted by the US-India Business Council (USIBC) and the US Chamber's Global Intellectual Property Centre, piracy and counterfeiting is depriving the Indian entertainment industry of approximately Rs 16,240 crore every year. This is almost 40 per cent of potential annual revenue, and, according to some analysts, is only a conservative estimate of the actual losses faced by the industry.

While India's entertainment and media industry is the fastest growing among BRIC nations, it is also the smallest. Many believe that stricter control on piracy could give the industry the impetus it needs to become truly global. Aside from the loss of revenue, the report also estimates that over eight lakh people lose their jobs due to piracy each year.
Though India is badly affected by piracy, it is certainly not the only country facing this problem. The US entertainment industry, it is estimated, loses about $6 billion a year in movie revenues alone. The Motion Picture Association of America's efforts notwithstanding, attempts to regulate piracy in the US have not achieved much.
In India's case, the music industry seems to have suffered the worst, with piracy resulting in a 64 per cent loss in total potential revenues, while the movie industry loses about 31 per cent. Industry officials in both countries hope to be able to use the study to pressure the government into adopting stringent anti-piracy measures and protecting intellectual property through strict legislation.
Piracy is, of course, not a new phenomenon. Every new medium is accompanied by intellectual property theft, which is almost impossible to regulate. Copyright was violated routinely in the US in the 18th and 19th centuries. The VCR was viewed with panic in its initial years of release. And so it is with the internet. However, digital media complicates the matter because no physical medium is required to transfer and distribute content. The ease and reach of distribution is also unprecedented. Perhaps the best way to fight piracy is via the same channels through which it has prospered — new technology. A host of innovations, from region-encoded DVD players and coding preventing the copying of digital data, to one-time view DVDs, can be utilised to combat piracy. Another way to fight piracy could be to reduce the prices at which content is sold. Because of the low cost of the medium, high quality content can be sold on disks that cost almost as little as the pirated versions. Such innovative solutions could be the answer to piracy and counterfeiting that the Indian industry is searching for.

Thursday, March 27, 2008

Mounting support [and pressure] for the TRIPs Amendment to protect Biodiversity [Developing Countries]

Longstanding differences on whether WTO rules should be altered to require patent applicants to disclose the use of any biological resources or associated traditional knowledge - on pain of patent revocation - featured prominently at a 13 March meeting of the WTO Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Brazil, India, Cuba, Peru, Ecuador, Pakistan, Thailand, and Venezuela said there was significant and growing support among the WTO Membership for an amendment of the sort they had proposed in order to protect biodiversity (IP/C/W/474, available at Uganda expressed a similar view, on behalf of the group of least-developed countries.

Their proposed amendment would include a mandatory requirement to disclose the origin of biological resources and/or associated traditional knowledge in patent applications. It would also require evidence of compliance with prior informed consent and fair and equitable benefit sharing arising from the commercial or other utilisation of such resources and knowledge. They argue that such an amendment - with the threat of revocation if disclosure requirements are not adequately met - is necessary to prevent 'biopiracy'.

The Dominican Republic and the group of African, Caribbean, and Pacific (ACP) countries recently announced their backing for the proposal, prompting their co-sponsors to note that nearly 80 of the WTO's 151 members now support a TRIPS amendment.

Following the typical pattern established for discussions on the issue, the US, Japan, Australia, New Zealand, Canada and Korea said that while they were opposed to bio-piracy, they did not consider a disclosure requirement to be the most efficient way of addressing such concerns.

They added that they were still not convinced about the existence of a conflict between the TRIPS Agreement and the Convention on Biological Diversity (CBD), and thus there was no need for amending the WTO rules. They argued for considering alternative methods for preventing misappropriation of traditional knowledge and genetic material, such as the database system proposed by Japan (IP/C/W/504 and IP/C/W/472). More facts-based discussions on concrete cases of misappropriation are needed, they said.

The EU reiterated that it was prepared to negotiate a disclosure of origin requirement, but it would not support requirements for either prior informed consent or proof of equitable benefit sharing. However, it contended that the World Intellectual Property Organisation (WIPO), rather than the WTO, was the appropriate forum for discussions on disclosure. The EU also argued that failing to accurately provide information on the origin of biodiversity or traditional knowledge used in an invention should not result in patent revocation, in order to avoid endangering the viability of the patent system. Sanctions, it claimed, should instead be sought outside patent law.

The US, for its part, argued that a disclosure requirement would not address resources exported from countries through normal commercial channels that eventually may be used as starting materials for research and or innovation. It added that due to the tenuous relationship between origin and inventorship, it is not likely that the disclosure proposal would prove effective at achieving its stated purpose.

The TRIPS Agreement itself provides for a review of Article 27.3(b), which deals with the patentability of plants and "essentially biological" processes for producing them. The Doha mandate asked WTO Members to broaden this review to look at the relationship between the TRIPS Agreement, the Convention on Biological Diversity, and the protection of traditional knowledge and folklore.

German court tightens up ISP, phone data retention rules

Germany's highest court apparently had memories of Nazi and Stasi abuses in mind when it ruled on a series of surveillance and data privacy cases this year. In the most recent ruling, made in Karlsruhe, the Constitutional Court found that Germany's recent data retention directive targeting ISPs and telephone companies was problematic; going forward, the data retention will still be mandatory, but the information can only be accessed with a warrant and only for serious crimes.

Germany's law went into effect last December, and it ordered telecommunications companies to keep various kinds of data (e-mail addresses, numbers dialed, etc.) for at least six months and to turn this information over to investigators who requested it.

30,000 Germans promptly filed a class-action suit over the law, concerned about the implications of data retention. Could the data be used in any investigation, for instance, such as copyright infringement cases or file-sharing? Would it make personal information too easy for law enforcement to obtain?

The court found that parts of the law were unconstitutional. In its ruling, it upheld the retention requirement but instituted much stricter safeguards around who might get access to the information.

The ruling follows other, similar rulings this year. Last week, the court also struck down indiscriminate license plate monitoring in the states of Schleswig-Holstein and Hesse, saying that authorities needed to have a reason for running people's plates. The court hoped to prevent the creation of automated systems that track movement around the country.

In late February, the court also ruled on the matter of police spyware. German authorities and intelligence agencies had developed spyware (much like the FBI in the US has done) that can monitor suspects' computers and remotely glean information from their hard drives. The court said that judicial oversight of this process was required, and it also carved out areas that cannot be examined. Police are not allowed to include unrelated personal information in their investigations of suspects. This is similar to restrictions faced by traditional surveillance, where authorities have to cut a phone tap if suspected terrorists start talking religion.

Keeping up appearances?
While the decisions have all favored privacy rights, the court did not altogether eliminate remote computer snooping or data retention. They can continue under certain conditions, but the fact that the court does keep whacking away bits of legislation on these issues leads some German observers to wonder why such boundary-pushing legislation continues to get passed. One might ask the same question about video game violence laws in the US, which have been repeatedly struck down by courts but continue to pass legislatures around the country.

The answer in both cases seems to be that it's politically more expedient to look "tough" on crime, violence, and terrorism and then leave the courts to sort out what's actually constitutional. Such votes rarely have negative political consequences; though can end up costing governments plenty of money when the rules end up in court.

European Commission Approves Google-DoubleClick Deal [International]

The European Commission cleared Google Inc.'s planned $3.1 billion takeover of DoubleClick Inc. after regulators determined that the deal would pose no competition problems.
Wrapping up an in-depth investigation launched in November, the Commission concluded that the deal would be unlikely to harm consumers and that the two companies could not be viewed as rivals, at least for now.

"Even if DoubleClick could become an effective competitor in online intermediation services, it is likely that other competitors would continue to exert sufficient competitive pressure after the merger," the 27-member EC said in a press release following its weekly meeting in Strasbourg, France.

The decision came weeks before the EC's April 2 deadline and follows approval by the Federal Trade Commission. The Brussels decision was widely expected after the EC let a deadline slip for sending a statement of objections, or official list of charges, to the notifying companies.

The ruling vindicates the strategy of Cleary Gottlieb Steen & Hamilton, Google's lead antitrust counsel before the European Union and FTC. Cleary's EU antitrust team was led by Brussels-based partners Francisco-Enrique González Díaz and Maurits Dolmans, assisted by associates Neil Rigby in London and Paul-John Loewenthal in Brussels.

The Patenting Paradox [New Book]

"The Patenting Paradox, A game-based approach to improve patent management" by Arnaud Gasnier describes the tendency of many companies, research organizations and universities to patent more and more; but with little value is extracted from patents.

According to the book's publisher,
This behavior is called the “Patenting Paradox”. Why does it exist? What are its effects? How can this paradox be solved? This book addresses these issues. It provides both: models to better understand the complexity of patent management; and tools to help the firm navigate in the competitive environment. Current practices are illustrated with pertinent patent information.

This book also presents the results from a survey among 1,100 patent users, which explains the roots of the paradox in the firm. The book explores new ways to intervene in the firm based on gaming techniques. Games offer a simplified reality to understand complex systems, as well as a risk-free environment to explore new practices.This book describes a new game on patents and three settings to use it to remedy the paradox and resolve three current concerns: raise awareness, improve collaboration and refine strategy. Experiments have been set up throughout Europe (Holland, France and Austria) among 160 graduates and professionals to show the effectiveness of such interventions. This book advises how firms could use these models, tools and interventions in-house.

Arnaud Gasnier is a patent practitioner with academic affiliation, and European patent attorney with 10 years of international experience in the industry and the research sector. He is also Assistant Professor in the faculty of Technology, Policy and Management at the Delft University, Netherlands, with 10 years of teaching on patents at universities and more recently at the European Patent Academy.

DIIP to track Counterfeiting and Piracy [India]

With counterfeiting and piracy costing about US $250 million annually, protection of Intellectual Property Rights (IPR) has become tremendously essential for all corporations as it directly affects economic stability of the growing economies.

The DIIP [Database on International Intellectual Property], DIIIP is an initiative taken by Interpol and the US Chamber of Commerce, which gives access to law enforcement, government and industry to work together to more effectively detect and investigate the criminal networks engaged in IPR related crimes. The objectives of DIIP are to identify links between criminal groups, use the information in investigations and production of global strategic reports. With huge demographic advantage, India has the challenge to train people and provide opportunities to benchmark against global innovative practices.

Wednesday, March 26, 2008

India grants 10,000 patents between April 2007 and Jan 2008 [India]

India's Department of Industry Policy and Promotion (DIPP) granted 10,000 patents between April 2007 and January 2008, significantly higher than the 7,000 patents granted between April 2006 and March 2007 said TC James, director, on the sidelines of the second annual global forum on innovation, creativity and intellectual property.

However, he added that though several Indian companies are investing in research and development, more than 60 pct of the patents registered in India are by companies from developed countries like the US, Japan and Europe. About 24,000 patent applications were filed in fiscal 2006-07, but 29,000 were filed between April 2007 and Jan 2008, he said.

Tuesday, March 25, 2008

"No Confusion": Judge rejects Wal-Mart claims in trademark parody case [US]

A Conyers, Ga., man has won a two-year legal battle with Wal-Mart, which has demanded he stop making and selling T-shirts, beer steins and other items that sport slogans such as "Wal-ocaust" and "Wal-Qaeda." U.S. District Judge Timothy C. Batten Sr. rejected Wal-Mart's claims that Charles Smith, a 50-year-old computer store owner who thinks the retailing giant is "taking over the world," violated the company's trademark.

Judge Batten also noted that the yellow smiley face that adorns Wal-Mart signs is not entitled to common-law trademark protection, a decision that one of Smith's lawyers said could hurt Wal-Mart in an unrelated, pending trademark action over the right to the sunny symbol of happiness.
Smith said he came up with the Wal-ocaust slogan while reading a book about the history of the Nazi party. "I read that some of the first groups that were persecuted by the Nazis were unions and liberals," he said. "I thought, 'Wow. Taking over the world, persecuting unions and liberals. Sounds like Wal-Mart.'"

He started producing his Wal-ocaust-themed products and offering them for sale at the Web site, which allows sellers to create their own home pages to market their items.
One design shows a bird resembling a Nazi eagle grasping the yellow smiley face in its talons, similar to depictions of the Nazi eagle clutching a swastika. Another reads, I ♥ WALHOCAUST. They have FAMILY VALUES, and their ALCOHOL, TOBACCO and FIREARMS are 20% OFF. A third proclaims, WALHOCAUST: Come in for the LOW prices, stay for the KNIFE fights.

The first letter from Wal-Mart, received Dec. 28, 2005, demanded that he cease selling the Wal-ocaust products.
On New Year's Day 2006, Smith said, he posted the Wal-Mart missive on a Yahoo! message board and got a response from activist filmmaker Robert Greenwald, who has made "Wal-Mart: The High Cost of Low Price."
Greenwald, Smith said, connected him to Stanford law professor Lawrence Lessig, a constitutional and Internet law expert and a proponent of reduced restrictions on copyright, trademark and other forms of intellectual property.
In February 2006, Wal-Mart's outside counsel, Robert L. Raskopf of Quinn Emanuel, wrote a letter to Lessig, again demanding that Smith stop producing and selling his Wal-ocaust merchandise.
Smith said Lessig helped him find a legal team -- lead counsel Paul E. Levy at Public Citizen in Washington and Gerald R. "Gerry" Weber Jr., then of the local chapter of the American Civil Liberties Union. In March 2006 they brought a declaratory judgment action against Wal-Mart, asking that a judge find that Smith was entitled to sell his anti-Wal-Mart products and maintain his related domain names.

Wal-Mart filed counterclaims, alleging trademark infringement and dilution by tarnishment, unfair competition and cybersquatting, a reference to Smith's ownership of
Batten's order, issued March 20, gave Smith a complete victory.

Wal-Mart claimed that as a merchandiser, Smith was diluting its marks and tarnishing them via negative connotations with the Nazi regime and later with al-Qaida. But Batten wrote that tarnishment caused by a parody which satirizes a product or image is not actionable under anti-dilution statutes because of the free speech protections of the First Amendment.

"A claim of dilution applies only to purely commercial speech," Batten wrote. Even if speech benefits the speaker economically, it is noncommercial so long as it consists primarily of noncommercial elements -- such as religious or political commentary, he continued.

Batten wrote that a reasonable juror could find only that Smith's primary intent was to express himself and that commercial success was a secondary motive at best.

Although Smith sold his items on CafePress for a 30 percent markup, Batten added, Smith never advertised or marketed his goods beyond notifying family, friends and a few Internet discussion groups. He did not claim an exclusive right to his designs and offered free, downloadable copies so people could print their own bumper stickers with his slogans.

Levy, Smith's attorney from Public Citizen, said "This is one of the first cases since the new Trademark Dilution Revision Act was handed down where a judge has looked at the noncommercial use defense."

To prove its claim that Smith's products were causing consumer confusion, Wal-Mart hired New York survey expert Dr. Jacob Jacoby to conduct two studies on the issue. Data for the studies was collected by intercepting shoppers at malls around the country and showing them, among other things, a Wal-ocaust T-shirt or a simulation of Smith's Wal-Qaeda CafePress homepage.
According to the order, the Jacoby studies interviewed about 650 consumers and ended up using the responses of roughly 500 of them. His conclusions: 48 percent of respondents suffered point-of-sale confusion; nearly 41 percent indicated Web site confusion; and almost 12 percent were less likely to shop at Wal-Mart after seeing Smith's designs.

Both sides in the case moved to exclude the other's experts only to be denied by Batten. But in an analysis of Jacoby and his methodology that accounts for more than 30 pages of the order, Batten gave Jacoby's reports virtually no evidentiary weight.

Batten found that Jacoby's survey was of "dubious value as proof of consumer confusion," and that it contained "numerous substantial flaws."

In addressing the issue of the yellow smiley face, Batten said that trademark protection is available only to distinctive marks, and to establish a common-law right in the smiley face, Wal-Mart must show it has imbued the mark with secondary meaning.

Simley said he did not know how the current ruling would affect his company's other trademark action.

The case, decided by Batten in the Northern District of Georgia, is Smith v. Wal-Mart, No. 1:06-cv-526.

Monday, March 24, 2008

Piracy in India – industry losses at $4 bn [Innovations in IT help counterfeiters cross geographical limits]

Piracy and counterfeiting are growing and deprived the Indian entertainment industry of some $4 billion (Rs16,240 crore), or almost 40% of potential annual revenues, as well as around 820,000 jobs, according to the first Bollywood-Hollywood collaborative study. Industry officials in both the US and India hope to use the study’s findings to call for stricter legislation and tougher policing of the grey market, part of a joint attack on piracy.

Losses to the industry from the trade in illegal CDs, DVDs, music downloads and cable television account for 38% of total potential sales, or $4 billion, an increase from the 25-30% leakage estimated in the prior year period, according to a joint report by the US-India Business Council (USIBC) and the US Chamber’s Global Intellectual Property Centre.

Titled "The Effects of Piracy and Counterfeiting on India’s Entertainment Industry", the report argues that efforts to curb piracy in India’s $11 billion entertainment industry have been hampered by the lack of a cohesive strategy.

Wednesday, March 19, 2008

Biotechnology and the future of the Patent System [International]

Biotechnology discoveries -- like the method for creating synthetic life forms -- are at risk of being unduly hindered or taken hostage by private corporations unless patent systems are brought into the 21st century

Patent systems around the world were developed during the industrial revolution, which means they're ill equipped to deal with more complex range of inventions arising out of life sciences -- things like man-made micro-organisms, GM plants, the human genome and stem cells.

Patent systems provide protections around inventions provided they satisfy criteria to do with novelty, an inventive step and utility. But he argues that such legal tools are not nuanced enough for biotechnical innovation, where inventions can be at once more intellectually subtle and morally ambiguous. When it comes to biotechnology, our antiquated patent systems can have detrimental consequences -- either hampering the freedom of researchers to take full advantage of experimental use and the possibilities for innovation, or giving a lot of control over living things to a very small group of people.

In order to provide more incentives and protections for scientific innovation, there needs to be greater scope for challenges to patent applications. There is a need for a broader legal defence of experimentation. Thresholds need to be raised to make it harder to get a patent, which would be a blow to 'patent trolls'.

Apple Patents Touchscreen Sensor Design -- A Sign of iTimes to Come? [International]

An Apple touchscreen patent from 2006 has recently come to light and it illustrates the path that the iPhone could take in the next few years.

The patent, submitted for approval to the US. Patent Office in late 2006, details a capacitive touchscreen sensor on a clamshell design. There's a transparent touch panel that covers the top of the shell, and when it's opened, the inside of the panel is touch as well. Basically, it appears that Apple is enabling as many parts of the physically exposed material to be touch sensitive. This would then allow the company to expand its UI and OS capabilities to come up with interesting features we didn't know we needed.
As long as the clamshell, double-paneled displays aren’t much smaller than the current model’s screens, people will likely see the second screen as a big plus. It also shouldn't be any thicker than the current model when the clamshell is closed.

Among the patent's main features is the ability to write-in numbers or letters with your finger. (We already saw part of this technology in a private demo many months ago, and Apple’s application to the tech could be impressive.) Something else we could see is a digital representation of the old rotary phone, by dragging a number down, as if spinning the old dialer.

By having touch displays on both sides of a panel, there's also the possibility of ‘enabling 3-D gestures’ through touch and of watching two different videos at the same time. So why do we care about little drawings of gadgets that may be completely different when released? Because most patents are both specific and oddly open-ended, allowing a small glimpse at true innovation while leaving you scratching your head a little bit.

Patented intellectual property rights provide the inventor, be it a multinational company or a single desperate man, with the opportunity to plant a flag in a space of innovation that is unique. But they also allow for a hell of a lot of mind-bending interpretation. This is especially true when the end product keeps a good amount of the patented technology but looks completely different.

Creative Britain: New Plan for the Creative Industries [United Kingdom]

The first ever comprehensive plan for Government support for the creative industries has been published in the United Kingdom, marking their shift from the margins to the mainstream of economic and policy thinking.

The strategy, 'Creative Britain: New Talents for the New Economy' makes 26 key commitments for Government and industry across every stage of the creative process. It is designed to turn talent into jobs and help creative businesses thrive in the international market. It recognises the growing success story that is Britain's creative economy and seeks to provide the industries with an unrivalled pool of talent to draw on, and the same formal, structured support associated with other industries.

''Creative Britain: New Talents for the New Economy' is published today by the Departments for Culture, Media and Sport (DCMS), Business, Enterprise and Regulatory Reform (BERR) and Innovation, Universities and Skills (DIUS) and is available from

Innovation, non-competes and the value of intellectual property [Practice Notes]

Outlawing non-competes in any jurisdiction is highly controversial because the state is also trying to attract larger employers who, as a rule, use non-competes in their hiring practices. Those that are against outlawing non-competes make the points that these agreements are necessary to protect property and investment, and that courts in general don’t want to enforce them anyway.

The impact of non-compete agreements on business is mostly hidden but nevertheless very real and harmful. Non-competes are not about enforcement but about intimidation. And they provide a blunt, destructive weapon for keeping intellectual property out of the hands of others.

There are more honest and positive ways for companies to protect their interests without adding to the unemployment figures or killing innovation in American business. They are not necessarily expensive, can drive improvement in overall management, and work equally well for large and small companies.
Companies can start by writing employment contracts that agree to pay commissions to employees who find licensees for work-for-hire products and ideas.

The licensees receive the license grant from the employer as the employer’s intellectual property. In essence, the arrangement is a referral sales program with employees acting as the channel sales agents for their employer. This arrangement reduces the incentive to change jobs to secret away proprietary or confidential info, and it acknowledges the collaboration that goes on within technology communities, whether geographic or virtual, that is necessary to fuel economic growth.

Companies can also restructure employee compensation from a strict salary basis to a project completion basis. Employees receive a portion of their compensation at the end of the project, after the employer has had the opportunity to initiate procedures for establishing intellectual property protections and is in a position to go to market and exploit the work product. Non-competes become an issue mostly when an employer feels exposed because an employee is leaving before the product has been commercialized. Most employees depend on a regular pay cheque, so restructuring pay is best limited to higher compensation, key employees.

Intellectual Property in Second Life [Use, Licensing and Protection]

Virtual intellectual property owners are facing increasing licensing and infringement issues – the same issues, in fact, that are faced by intellectual property owners in the real world. The virtual world has recently become a popular place for business transactions. But before companies prepare to reap the benefits of participating in this world, they must first understand the differences – and similarities – regarding licensing and infringement issues in the virtual world versus the physical world.

Originators of these virtual worlds have provided a platform on which users can create characters and objects for interaction with other users. Linden Lab is the creator of Second Life which, like most of the others, is free to join. It claims nearly 10 million “residents” with as many as 35,000 online at any given time. It also includes active businesses that are both reality-based and virtual-only.

In these virtual worlds, residents create and sell images (objects) for “virtual currency” which can be converted into real-life currency. Millions of dollars are spent on a daily basis in these worlds. The currency used in Second Life is called “Linden dollars.” The ability to convert Linden dollars into real money is the linchpin to this economy for residents.

Linden Lab requires that all copyrights and trademarks in the images created by its users remain with the users. Linden Lab permits transfer and copying of those objects only with permission of the creator.
This becomes one of the important drivers to the Second Life economy. The residents can create objects and be certain they are not copied while they are transferred. Buying and selling become commonplace.
In Second Life, there are many real world companies sell or promote goods and services. These range from several official apparel stores, (Nike, American Apparel, etc.) to promotional television and movies clips that are available from the studios. It includes law firms as well, which have virtual offices providing real life advice.

Toyota made headlines when it launched its Scion model in Second Life first. Live online meetings also take place. The anonymity of Second Life allows prospects to ask questions without concern of identity. Chat, instant messaging, and voice are all available. Teleporting from office to office (or store to store) takes seconds, and finding someone to answer a question is relatively easy.

Even though Second Life has been around for a few years and has seen tremendous growth and recognition recently, usage of real-life trademarks by residents who are not the real-life owners is becoming a problem. There is a “black market” in Second Life where graphics are sold with little or no advertising, but rather through word-of-mouth among the residents. While this may seem like the early days of virtual worlds, establishing boundaries is critical to avoid a future problem trying to rein in infringers.

For some companies not yet ready to build their own stores and devote the resources to this other media, licensing intellectual property has real benefits. Not only could there be some revenue generation, but if the right organization is licensed, their intellectual property can be protected in-world and preserved for when they are ready to enter the field.
Companies should start with the standard license arrangement since the intellectual property rights and concepts overlap whether it is real world or virtual world. However, some of the agreement will need to be modified or considered more carefully due to the medium.

Licenses [and licensees]
As more companies create an online presence, control of the brand and image becomes more important. Getting to know your licensee (as you would any other licensee of your intellectual property) is critical.

You need to trust that person or organization and be sure he/she is committed to the brand. Remember they are delivering product information to potential customers, and their interaction could be the first impression made on that customer.

Graphics [and logos]
Be sure to provide the quality and type of graphics you want the licensee to have. This will allow you to spot infringements more readily, but you can also ensure a quality image is being used. Moreover, if your real-world products are subject to other licenses, such as from third-party graphic artists, controlling what is used by the licensee protects the rights of these other parties.

The question of exclusivity is always dependent on the negotiations. While you may have a desire to license the whole project out, there are many ways to divide up Second Life. Do not assume that a resident/licensee is all things for your whole line. There are different channels of trade even within a virtual world

Pick a favourable and reasonable jurisdiction. It is important, particularly for U.S. property owners, that your licensee has some ties to the U.S. so it is an effective method to enforce rights.

Tarnishment [and dilution]
Consider the environment in which the products are sold. There are large tracts of areas within Second Life, so it is important the licensee not sell your product in a location with unsuitable material. You may not want your product sold in a store where the store next door (in easy viewing) is selling objectionable material. Certain areas are also hot spots for counterfeit images. That must be balanced with the potential goal of being in a high traffic neighbourhood.

The licensee should have a responsibility to the property owner to make the licensor aware of any infringement. An additional obligation of periodic, proactive searching should also be considered as a requirement. Active residents are far better than real-life property owners periodically searching for infringements.

Marking products [appropriately]
While the product for sale probably has the brand already on it, additional marking of the object’s Second Life profile may be worthwhile. Since names are unique in Second Life, it is possible to label something as “Genuine” or “Real” in combination with the name of the authorized dealer.
Similarly, the reporting of the licensee may be checked to confirm that all sales are being reported. In addition to marking, the images sold should not be available for resale.

Royalty rates
Unauthorized residents often argue that use of the graphics is merely advertising for the company and royalty rates should not be charged. Whether this is true depends on strategy, as well as money earned by the retailer using your brands.

There is no question that many companies consider virtual worlds as great alternative advertising media, but that does not mean someone else should get a revenue stream. It’s critical to an intellectual property owner to get a termination clause enabling it to start requiring a royalty payment if circumstances and attitude change. A detailed conversation with your future licensee can establish an appropriate royalty rate.

Minimum pricing should also be a consideration, as well as the number of units the licensee may create and/or sell. Particularly if the license is non-exclusive, setting pricing is important to avoid complaints from other licensees.

Payment reports
If payment is part of the license arrangement, detailed reports should be provided and include information about any purchase, the name of the purchasing resident, the date and time of the purchase, and pricing. This will enable review of surreptitious purchases as a check on the licensee.
While all transactions are in Linden dollars, there is consideration of the conversion rates, conversion process, and transfer of money in Second Life. On top of these logistics and economic issues, the question of real-life tax implications is also present. If the licensor is paid in Linden dollars and Linden dollars have a value, taxes become relevant. As a practical matter, all royalty payments must be in a real life currency and conversion should be the full responsibility of the licensee.

Keeping up with the number of issues in virtual worlds is mind-boggling. Resources are available. There are law libraries, lawyers, bar associations, and business groups online all the time. There are blogs and sites discussing these issues. Among the particular sites of interest are and In the end, addressing these virtual world issues is best done sooner rather than later. As these worlds continue to grow, infringements and other intellectual property matters are also moving at a rapid pace. Getting protection under control at the earlier stages will help prevent cleaning up problems later on.

Tuesday, March 18, 2008

India to enact Bayh-Dole type legislation [India]

India is on the way to getting its very own version of the Bayh-Dole Act, the US legislation passed at the beginning of the 1980s which introduced IP certainty to the R&D work done at American universities and helped to kick-start the high-tech explosion that cemented the US as the world’s innovation powerhouse. According to an article in the Business Standard, the issue is currently being discussed by the Indian Cabinet and could soon be put before the country’s parliament.

Business Line, meanwhile, is reporting that the proposed legislation is suggesting inventors get 30% of the revenue from any commercial project based on the patents in question, while the institution involved would get 10%. Of course, Bayh-Dole does not set out how revenues should be allocated and instead leaves it to individual institutions to develop their own schemes.

India would not be the first country to try to imitate the success fo Bayh-Dole. At the end of 2007, for instance, the Chinese passed a law that allows scientists, institutions and universities to own the patents that are created by publicly-funded research which they carry out. However, experience also shows that legislation is not enough if the scientists and institutions at which it is aimed are not willing or able to exploit it. Many academics, for example, are just not suited to building businesses, or regard the idea of doing so anathema; while setting up a technology transfer operation requires significant upfront investment from the institution that is doing it, with no guarantees that anything created will be of interest to anyone.

In India there are also other worries. For example, the Indian Patent Office is chronically understaffed, so there have to be real questions as to whether it could cope with a surge in applications from a new source. In any case, the level of patenting among Indians remains very low – around 80% of patents granted in the country go to foreign concerns. Away from IP, the wide investment hinterland that has allowed start-ups and spin-outs to thrive in places such as the US and the UK just does not exist in India at the moment – something that raises real doubts about how many patents granted can be successfully commercialised. For any Bayh-Dole style legislation to have an impact, therefore, the Indian government will surely have to deal with a whole host of other issues as well. That said, there is no doubting the skill base that exists in India. The problem is that many of the country’s most gifted scientists feel they have to leave in order to make the most of the talents they have.

iPod, iTunes Infringe, says ZapMedia [International]

ZapMedia Services is suing Apple, claiming the company's iTunes online store and iPod portable media player infringe on ZapMedia patents. ZapMedia filed the suit Wednesday in U.S. District Court in Marshall, Texas. "The complaint alleges that ZapMedia Services' property is being exploited in a manner which is unlawful, and by law ZapMedia Services is therefore entitled to a reasonable royalty on Apple's revenues related to the infringement," ZapMedia lawyer Steven G. Hill of the law firm Hill, Kertscher & Wharton LLP said in a statement.

ZapMedia said it filed the suit after multiple attempts to negotiate with Apple starting in June 2006 through the fall of 2007. During the attempts, the company said it made Apple aware of the patents and said the intellectual property was available for licensing. "When someone takes our vision and our intellectual property without a license after several attempts, we have no option but to protect it through every means available to us," said Robert J. Frohwein, general counsel of ZapMedia.

An Apple spokeswoman said Thursday the company doesn't comment on pending litigation.
Beginning in the late 1990s, ZapMedia Inc., the predecessor of ZapMedia Services, developed a system and method for distributing media assets to devices via a portal synchronized with the devices, the plaintiff said. ZapMedia later obtained two U.S. patents, No. 7,020,704 and No. 7,343,414. The original company met with major technology and media companies, including Apple, and described its ideas. Apple launched the iPod MP3 player with an integrated iTunes application in October 2001 and the iTunes online store in April 2003.

Monday, March 17, 2008

The Patent Reform Act [2007] and the Small Inventor [International]

A federal bill expected to receive a vote from the Senate this year would trigger the most radical changes to the U.S. patent system in more than 50 years. Supporters of the Patent Reform Act of 2007 want to switch to a “first-to-file” system that would grant patent rights to the first person to file an application. The United States is the lone country still using a “first-to-invent” system that rewards an inventor who first conceives the innovation, even if another person submits an earlier application.

The results can be costly, complex and time-consuming. When at least two people file an application on the same invention, the Patent Trademark Office conducts a trial, known as an interference proceeding, to determine the first inventor. Eliminating interferences and aligning the United States with the rest of the world are the main arguments for switching to a first-to-file system. But opponents argue the change would harm solo inventors and small companies, which account for about 45 percent of patent applications.

Here’s why: The new system would create a race to the Patent Trademark Office, and the entity most likely to win is the one with the most resources—corporations with deep pockets. They’re less concerned about filing fees and are more likely to file an application even though the commercial benefit of the technology may be risky. Small businesses, on the other hand, will wait to file until they’re certain a market exists for the product before committing funds for filing fees.
Filing fees range from $500 to $1,000. But navigating the lengthy process, which typically takes two to three years, often requires legal assistance. Attorney fees can push the costs for a simple invention to $20,000 and to $40,000 for a complex filing.

With 1.6 million active patents in the United States, the possibility of infringement has led to more litigation, particularly within the technology sector. Microsoft Corp. is among larger software developers that support a first-to-file system because the company is often forced to fend off infringement suits brought later by smaller competitors. Unlike the auto industry, for instance, in which large sums of money are necessary to produce an innovation, an independent inventor sitting at his kitchen table can develop software.

Some of the litigation stems from what is known as “patent trolling,” a term used to describe an individual or company that holds a patent with no intention of marketing an idea or making a product.
The patent holder instead waits for another company to develop a similar product and then threatens it with expensive patent-infringement lawsuits to extract large monetary settlements. Under the reform act, a new venue would provide a less expensive and more streamlined way to hash out disagreements. It would allow anyone to seek cancellation of an existing patent within a year of its approval. The proceeding, however, would be available only for patents issued after the date of the bill’s enactment.
The bill also would change how patent damages are calculated, including limitations on their availability for willful infringement. Proponents of changing the damage provisions argue that large patent awards are excessive compared to the actual value of the patent.
Further, budget limitations of not-for-profit universities often constrain the resources they can devote to rapidly filing patent applications, making it more difficult for them under a first-to-file system. Not everyone is convinced reform is needed. Pharmaceutical firms such as locally based Eli Lilly and Co. are satisfied with the current system and depend upon court injunctions to stop generic drugmakers from infringing upon their patents.

Indeed, from 1996 to 2006, the number of patent applications more than doubled from about 200,000 to 450,000, according to the PTO. Nearly 1.1 million applications are currently pending, and 760,000 of those still await first action. The average time it takes to get approval is 32 months.

To shave the backlog, the PTO hired 1,200 patent examiners in 2007 and has plans to employ 1,200 more examiners this year. Compounding the problem of delays is that the tedious work leads one of every two examiners to leave the job within the first year.

Is virtual life a lawless jungle: Role-playing, competition and trademark rights [International]

In video games, as in professional sports, the idea "for the love of the game" has lost much of its allure. Indeed, the industry is ripe for multimillion-dollar litigation. Witness, for example, the landmark $82-million U.S. jury award in 2005 against Sony Computer Entertainment America Inc. for infringing Immersion Corp.'s video-game patents.

Even arbitration awards, known for their conservatism, have been in the millions. In February, Ubisoft Entertainment won a $13.2-million award against MGA Entertainment for breach of a video-game licence agreement involving the popular Bratz dolls. MGM is involved in a high-stakes battle with Mattel over whether the toymaker actually created the dolls. The case is set for trial in the spring.

Most intriguing, however, are the unscripted games, called real-world games or virtual worlds. Examples include Active Worlds, Everquest, There, The Sims Online and Red Light Center. The most popular however, is Second Life, created and operated by Linden Research Inc., also known as Linden Lab.

The twist, from an intellectual property (IP) point of view, is that users, known as "residents," create most of the content. A three-dimensional modelling tool allows them to build virtual landscapes, buildings, vehicles, machines and other objects to use, trade and sell. Because residents own their creations, a thriving market economy using a synthetic currency -- "Linden dollars" -- freely convertible to real-world currency has emerged. It includes both a currency exchange and a stock exchange.

No surprise, then, that many household brands and other companies, including financial institutions, law firms, universities and professional organizations like the American Bar Association have a presence on Second Life. Countries such as Sweden, Estonia and the Maldives have even opened embassies there.

Companies go to Second Life to do business, test new products, advertise real-world goods and services, build brand awareness and showcase innovation. All of this means, however, that virtual worlds are ripe for intellectual-property disputes. The freedom that users have to create virtual assets makes it as easy for them to create and sell infringing items as it is to create original non-infringing items. It's equally simple for users to create digital replicas of real-world content branded with real-world trademarks.

But IP enforcement is elusive, because the law has yet to confront the divide -- or lack of it -- between real and virtual.

For example, it's unclear whether someone who commercializes a virtual copy of a patented real-world object commits patent infringement and if so, in which jurisdiction. It's also unclear whether someone who develops a trademark used only to identify virtual goods and services generates enforceable trademark rights in the real world. And it's not known whether making virtual use of a trademark, which can be confused with a real-world trademark, amounts to trademark infringement. But rights holders can't really stand around waiting for the courts to decide the law.

Eros, a company that created virtual beds that it sold to online users so they could have virtual sex, faced this problem when an unknown person created unauthorized replicas of the beds that it sold for a lower price. Eros identified the infringer, however, by obtaining court-ordered subpoenas directing Linden Lab and Internet service providers to release information about the anonymous defendant, who has since been identified.

Friday, March 14, 2008

AOL pays $850m for Bebo in cash deal [International]

AOL has bought social networking site Bebo for $850 million in cash. The Time Warner-owned web services company said that the Bebo network would be a valuable place for it to sell advertising.

AOL began in the internet access business, but has expanded to offer instant messaging software AIM and ICQ. Social networking sites have been a phenomenon, with tens of millions of internet users keeping in touch and posting information about their lives on sites such as Bebo, Facebook and MySpace. Traditional business has been keen to buy into the phenomenon and instead of launching their own platforms, business giants have tended to buy into existing sites.

Bebo rival Facebook received $240 million in funding from Microsoft last October in a deal that valued the company at $15 billion. MySpace was bought by Rupert Murdoch's News Coproration in 2005 for $580 million.

Indo-US trade expanding, challenges remain: Report

The private sector companies in the US and India are aggressively pursuing "significant opportunities" for bilateral trade, but there are challenges that American investors continue to face as India opens its markets, the Bush Administration has said. "Commensurate with India's dynamic and growing economy, the bilateral agenda continued to expand with respect to the significant opportunities for bilateral trade that the US and Indian companies are aggressively pursuing, as well as the challenges US investors continue to face as India gradually opens its markets," the Office of the US Trade Representative (USTR) said in its annual report.
The two countries completed another year of active dialogue on trade policy in 2007, it said adding, USTR's efforts included the identification of new areas for cooperation, including with regard to India's tariff and tax regime, intellectual property rights, investment climate and "regulatory hurdles". "India continues to limit market access in various sectors, including through high taxes and tariffs, non-transparent procedures, discriminatory treatment of imports, and non-tariff barriers," the USTR maintained. The administration also made the point that India is working to improve its protection and enforcement of intellectual property rights. "We continue to work with the government of India to address issues related to India's copyright law and patent law, protection of undisclosed pharmaceutical test or other data, as well as high levels of piracy, including book piracy, and counterfeiting," the USTR said.

India, Brazil 'impeding' patent harmonisation: experts

Countries like India and Brazil are "impeding the process" of patent harmonisation by mixing up issues of traditional knowledge and genetic resources with IPR, a group of international experts on Intellectual Property Rights (IPR) said today. "India and Brazil are the only two countries to rake up such issues. They are trying to kill patents and destroy efforts of patent harmonisation," Martin J Adelman of the George Washington University Law School told reporters here.

To prove his point, he cited the recent Novartis case in which the Swiss firm's petition challenging section 3(d) of Patents Amendment Act, was dismissed by the Madras High Court. The court last year dismissed two writ petitions challenging constitutional validity of section 3d of the Patent (amendments) Act 2005.

India's wealth was not dependent on traditional knowledge but the strides it makes technologically and scientifically. "Everybody will be richer if India and Brazil recognise that traditional knowledge is not a patent issue," he said.
Heniz Bardehle, partner of German firm 'Bardehle, Pagenberg, Dost, Altenburg and Geissler,' said the patent system was only for novelty and new inventions and not for the traditional knowledge. The patent was a worldwide mechanism to create wealth, he added. Herbert C Wamsley, Executive Director of US-Intellectual Property Owners Association, said patent system in India was about to expand in enormous way with patent applications trebling in the last five years. Over 28,000 applications had been filed in the country, he said.

India to host international conference on competition law

The International Bar Association (IBA) and the Bar Association of India (BAI), with active support from the American Bar Association (ABA) and the Confederation of Indian Industries (CII), have organized a two-day, international conference on "India's New Merger Notification Regime" on March 15, 16 at the Hyatt Regency, New Delhi.

Due to the global ramifications of the new competition law, senior officials from counterparts of the Competition Commission of India (CCI) from the US, the UK, European Union, Australia, Canada and other countries will also participate in the conference. Special Working Groups had been set up by IBA, ABA, FICCI and CII to study and examine certain provisions of the Competition Act, 2002 (as amended in 2007) and the draft Regulations (2008) as formulated by the CCI. Reports of these Working Groups have been submitted to the Ministry of Corporate Affairs and to the CCI.The brief summary of the reports of the Special Working Groups is as under: (i) The Act in its present form, in some potential applications may be so burdensome as to discourage competitive conduct and investment.(ii) The Regulations to be framed under the Act - pertaining to merger notifications can ameliorate some of these counter productive aspects of the Act such as:(a) Transactions which have no or de minimis (minimum) connection with India. The Act would require notification of many transactions that have little likelihood of affecting competition in India in any material way.(b) The 210-day waiting period, especially for transactions having no or little local nexus and/or no or insignificant competitive impact in India. Such a long waiting period may deter many transactions that would otherwise be beneficial to India's economy. (c) The timing of notifications - the Act is both ambiguous and overly restrictive as to when notifications must be filed, in the latter case, potentially depriving parties of the opportunity to coordinate multiple notifications across different jurisdictions. These problems introduce administrative inefficiencies without providing any compensating benefit to the review process. (d) The burden of notification, especially for non-problematic transactions - a required initial "short form" notification, that includes only the data needed for the CCI to make a determination as to the need for further information and investigation, would greatly lessen the burden on both the CCI and the parties, facilitate expeditious clearance of non-problematic transactions, and further India's development of a state-of-the-art merger control regime. The reports recognize that the CCI has, since the original enactment of the Act in 2002, been active in ensuring its optimal implementation, including conducting nearly 50 advocacy and awareness-building programs and many market studies and research projects, drafting regulations and interpretation bulletins on competition and intellectual property issues, holding consultations with state governments, providing input and opinions on policy and regulatory proposals, and co-developing a curriculum for competition courses in law and economic programs.
The CCI has been vigorously advocating competition and drafting with other government departments and advisory groups a "National Competition Policy" for India. The reports support the Competition Commission's efforts to increase the effectiveness of India's competition law regime and to draft regulations that address the issues that will be discussed in the two-day conference.Confirmed participants at the conference include Vinod Dhall, Acting Chairman, CCI, Amitabh Kumar, Director General, CCI, and other experts from CCI, Lieutenant General S.S. Mehta, Director General of CII, eminent economists Thomas Hoehn from PricewaterhouseCoopers Europe and Tapan Bhaumik from Reliance Industries Ltd, and legal experts from overseas and from India. Hon'ble Justice Dr. A.S. Anand, former Chief Justice of India and Chairman, National Human Rights Commission, will give the inaugural address. The Conference is being Co-chaired by Lalit Bhasin, President, Society of Indian Law Firms and Honorary General Secretary, The Bar Association of India.

Thursday, March 13, 2008

UW and GIIP in Indian alliance to further IP [India]

With India’s emergence as a major economic player comes the need to grapple with obstacles that often confront developing nations, including intellectual property rights. Intellectual property law deals with the legalities of patents, copyrights, trademarks and all other information that can be the “exclusive right” of a person or group. The market demand of intellectual property (IP) professionals is expected to rise to 15,000 within the next three years, according to The Times of India.

As of right now, India has less than 1,000 practicing patent professionals. To meet this demand, the UW’s Center for Advanced Study and Research on Intellectual Property (CASRIP), along with the UW’s Intellectual Property Law and Policy Masters of Law (LL.M.) program has agreed to join forces with the Global Institute of Intellectual Property (GIIP) to provide qualified Indian graduate students with an advance level certificate program on patent and intellectual property.

The program, Brunstad said, would use the American model “to contribute to the understanding and advancement of India’s IP system.” Chief among the reasons for IP law’s prevalence in today’s economy is the mandate issued by the World Trade Organization (WTO) that all of its members must adhere to the Trade Related Intellectual Property Rights laws (TRIPS).
“Certainly India’s obligation under the TRIPS has caused greater respect for IP laws,” said UW law professor Dan Laster, who specializes in intellectual property.

Aside from meeting the demands of the WTO, the patent certificate program would serve to fulfill the goals presented on the CASRIP Web site — to facilitate a dialogue between various countries about their different approaches to IP law and to analyze the effects of these differences on technological invention and international trade.
GIIP has headquarters both in San Jose, Calif., and New Delhi, India. The organization’s chief goal is to train a team of Indian professionals who can accommodate the needs of global IP customers.

India on growth wave into new age of tech globalization

No longer simply an epicenter of outsourcing, India is riding a new wave of globalization as the economics of the technology business turn it into a regional design and development hub. The subcontinent is seeing an explosion of business and forging IT partnerships with neighbors as diverse and disparate as China, Egypt, Pakistan, Australia and Dubai, as these and other would-be technology players strive to usher in a new phase of tech-driven development to the region, which includes North Africa, the Middle East and the Gulf states.

This new geotechnology axis is destined to have a profound impact on the global IT and technology sectors, and its arrival marks a turning point in the shift of the industry's balance of power from West to East. "We are seeing a whole new age of globalization today," according to analysts at Bengaluru-based Prayag Consulting. "Three countries that are taking full advantage of this paradigm shift are Israel, China and India."
As India extends its connections throughout Asia, Australia, the Middle East and Africa, it will emerge not just as the region's business and technology leader, but as a more powerful player in the global IT sector. That will have a ripple effect on the entire market as next-generation semiconductor and system development--including embedded-systems design--follows trends that arise from the burgeoning domestic and regional economies.
This factor was topmost in the minds of the India Semiconductor Association as ISA convened its 2008 Vision Summit in Bengaluru recently. The organization expects that India will evolve from a design-oriented industry into a major electronics manufacturing hub before the end of the decade.
It was also the underlying theme at another recent event in Mumbai, as would-be regional tech players like Egypt, Australia and China vied for notice from India-based IT service and technology development companies at the India Leadership Forum.
Among the most revealing sessions at the Mumbai event were the "focused country sessions." These informational and networking meetings underscored the spillover effect of India's IT success, pointing to bright prospects for smaller regional players eager to ride India's coattails and become part of the new regional development axis.
Pakistan is already enjoying the knock-on effect of India's steady rise as a regional and global IT superstar. With a population of 160 million, Pakistan will be the first in the world to complete a nationwide deployment of WiMax wireless communications technology. This boost in infrastructure will help make its technical talent pool more competitive and will serve as another catalyst for regional economic development.
"It's a case of petrodollars at work," noted Shahid Azim, the Harvard-educated CEO of Braintree Group (Islamabad, Pakistan).
Like India, Pakistan has a large pool of well-educated engineering and IT professionals eager to participate in the global IT sector. With the Pakistan economy enjoying robust growth, Western companies are looking to India's neighbor as another source of technical IT talent.
"The idea is to set up R&D centers. It's just beginning," Azim said, projecting optimism that Pakistan will follow India's well-worn path to global significance.
With the aim of unlocking the technology potential of the Middle East, the Gulf and Africa, Egypt's General Authority for Investment (GAFI) also came to Mumbai in search of potential partnerships. Marshaling a 55-person delegation of Egyptian corporate executives and government officials, GAFI mounted an aggressive diplomatic and commercial initiative at the Leadership Forum designed to foster long-term relationships with its historic trading partner, India, and to position Egypt as a player in the evolving regional development hub.
With a GDP growing at 7.2 percent per year and a mobile-phone growth rate of 50 percent per year, Egypt also boasts one of the region's lowest IT outsourcing cost structures--lower than Eastern Europe's--including the world's lowest telecom costs. The nation is undergoing tax, customs and financial-sector reform, and has a talent pool consisting of 300,000 graduates with strong commercial, engineering and science backgrounds. Its unique multilingual heritage with English, French, German, Italian and Spanish language skills also works in Egypt's favor. Multinational investors active there include Mentor Graphics, Oracle, Vodaphone, IBM, Microsoft and Sun Microsystems.

Wednesday, March 12, 2008

MIMOS launches two centres of excellence [Malaysia]

Malaysia's applied research agency MIMOS has launched two Centres of Excellence, following a tie up with multinational technology companies, Cisco Malaysia and Agilent Technologies.The two centres -- Cisco's Asian Centre of Excellence in Networking (ACENT) and Agilent Technologies' Centre of Excellence in Measurement Technologies in Asia (CEMTA) – are in MIMOS at Technology Park Malaysia (TPM) and provide networking technologies and test and measurement technologies.
MIMOS president and chief executive officer Dato' Abdul Wahab said, "The Centres of Excellence will be the platform to showcase MIMOS as the National Technology Innovation Centre. It will be the catalyst in capability building particularly in developing domain experts. "This is in line with our mission to promote and license MIMOS technologies or Intellectual Property (IP) and to work with multinational companies to draw FDI and DDI into Malaysia. The two centres are demo and training centres for the Asian region." Cisco Malaysia public sector sales director Abdul Aziz Ali agreed: “We, at Cisco, believe that ACENT will open up the opportunity for the country to continuously identify current and future network technology needs and contribute to the country’s agenda of increasing the pool of technology and research-based human capital capable of competing on the global stage."The second centre, CEMTA provides training in test and measurement equipment and proof-of-concepts for small and medium enterprises (SMEs) in Malaysia and the Asian region.