Monday, November 24, 2008
L'Oreal takes MyDollarStore to High Court over illegal imports [India]
Thursday, February 14, 2008
Bush Administration’s Annual IP Report: Intellectual Property Related Prosecutions Up, Focus on Health and Safety Redoubled
“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.”
* 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.
Monday, February 11, 2008
Trademark breach: US software co plans action in India
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.
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.
Wednesday, February 06, 2008
Docstoc IP Document Sharing Service
Check out the IP section here, with subsections on
Copyright
International
License
Other
Patent
Sole Proprietorship
Trade Secrets
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.
You can also use this search engine to find documents in this, and other, following "Document Sharing Communities"
http://www.docstoc.com/
http://www.scribd.com/
http://www.edocr.com/
http://www.thinkfreedocs.com/
http://www.insightory.com/
Patent Audits And Internal Invention Surveys: 7 Strategies, 33 Tactical Steps, And 2 Benchmarks
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."
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.
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.
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.
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.
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.)
A rule of thumb in some manufacturing industries is to develop one patent for each $1 million of research and development funds expended.
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.
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.
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.
Friday, January 04, 2008
E-Business Patent Infringement Cases: Complex Issues to Unravel
Certainly, Google has already earned its place in history as the most-sued Internet Company. Every novel intellectual property ("IP") cause of action has been filed against the search engine giant. First, we witnessed the copyright infringement round. Google has been sued for every type of copyright infringement on thumbnails, meta-tags, keywords, etc. Concomitant with these copyright infringement lawsuits, Google was also accused of trademark violations in keywords, sponsor links, etc. Now, it is the time for the e-business patent round. Google was sued for business patent infringement and, like in most of the other IP lawsuits, it was triumphant (well, partially) this time.
A United States Court of Appeals recently held that Google is not liable for patent infringement when it uses two methods that link online records and provide users with relevant web pages. The plaintiff, Hyperphrase Technologies, LLC, and Hyperphrase, Inc. ("Hyperphrase"), held two business patents related to some systems and methods that linked online records. The technical process used by these systems and methods is similar to the one used by Google through its "AdSense" and "AutoLink" methods. "AdSense" is an advertising method used by Google that combines the advertiser's content with contextually related websites. AutoLink is an online application incorporated into people's computer browser that that helps Google identify relevant web addresses and information according to some ‘string of characters' that they call tokens. Hyperphrase claimed that Google violated its online linking and patented methods through the use of "Autolink" and "AdSense."
"We're very pleased that the Federal Circuit agreed that AdSense does not infringe any of Hyperphrase's patents. We continue to believe the remaining claims in the lawsuit are without merit, and will vigorously defend against those claims," Michael Kwun, Google's managing counsel for litigation, recently said after the US Court of Appeals held (on December 26, 2007) that Google's ‘AdSense' did not infringe on Hyperphrase's patent. Yet, the case was remanded as to Google's business patent infringement with respect to the use of "Autolink" system.
This intriguing case so far has two significant juridical teachings. First, we learned that business patents and its electronic use are slowly but steadily becoming the object of intellectual property litigation. For the time being, this litigation is centered at a domestic level; but, the legal community must be vigilant of how transnational litigation and jurisprudence on e-business patents evolves. Second, we also learned that business patents, especially e-business patents, create extremely complex litigation cases. E-business patent infringement cases involve highly technical computer methods and systems (some related to mathematical equations) and sharp legal and semantic analysis. In other words, computer/business science and sophisticated legal reasoning merge when dealing with a business patent case.
Wednesday, May 16, 2007
Linus Torvalds On Microsoft"s Patent Infringement Allegations: "They Are Bluffing!"
According to Torvalds' mail to InformationWeek, Microsoft is unlikely to hold too many winning card, because:
"Basic operating system theory was pretty much done by the end of the 1960s. IBM probably owned thousands of really 'fundamental' patents. The fundamental stuff was done about half a century ago and has long, long since lost any patent protection."
Furthermore, Torvalds doubts that Microsoft is really certain of a victory in court. Instead, he believes that the Redmond company is just bluffing in hope that it would reach quick financial settlements with other parties rather than going to court:
"They'd have to name the patents then, and they're probably happier with the FUD [fear, uncertainty, doubt] than with any lawsuit. [...]So the whole, 'We have a list and we're not telling you,' itself should tell you something. Don't you think that if Microsoft actually had some really foolproof patent, they'd just tell us and go, 'nyaah, nyaah, nyaah!'"
Last but not least, Torvalds wonders if Microsoft isn't the one violating more patents and hints that a thorough review of the source code for Windows might reveal that the software giant is the one that has to pay up to other patent holders.
Tuesday, March 20, 2007
IP Hall of Fame [Intellectual Asset Management]
Devised and developed by leading IP publication Intellectual Asset Management (IAM) magazine, in association with IP management specialist Computer Patent Annuities Limited Partnership (CPA), the IP Hall of Fame is designed to identify those who have helped establish intellectual property as one of the key business assets of the 21st century. A team of 18 internationally acknowledged IP experts recruited from industry, the law and academia was assembled to make the selections.
Don Banner: Recently deceased partner of law firm Banner & Witcoff LLP and a former Commissioner of the USPTO. Played a key role in the development of the modern international IP system.
Heinz Bardehle: Partner of German law firm Bardehle Pagenberg with a long involvement in international patent harmonisation issues, as well as being an adviser to the German government on IP.
Senator Birch Bayh: Former US Senator, now with Venable LLP. A co-sponsor of the pivotal Bayh-Dole Act 1980 that gave US universities much greater freedom to exploit the IP they created.
Friedrich Karl Beier: A founder of Germany's Max Planck Institute and a strong influence on the development of IP law and practice in Germany and Europe.
Johann van Benthem: One of the founding fathers of the European Patent Office, as well as its first President.
Arpad Bogsch: Director General of the World Intellectual Property Organisation from 1963 to 1997.
Sir Edward Coke: Author of the English Statute of Monopolies of 1624, the basis for the distinction between patents of invention and patents given at the caprice of the sovereign.
Thomas Edison: One of the greatest inventors and industrial leaders in history. He obtained 1,093 United States patents, the most issued to any individual.
Kurt Härtel: One of the prime movers behind the establishment of the European Patent Convention and a former president of the German Patent Office.
Victor Hugo: Author, and the Honorary President and founder of the Association Litteraire et Artistique Internationale. He was a prime mover behind the creation of the Berne Convention on Copyright.
Lord Justice Robin Jacob: The senior patent judge in the UK. His judgments are highly influential in the European arena.
Thomas Jefferson: Third President of the United States, author of the first US patent law and first head of the US Patent Office.
Klaus-Dieter Langfinger: Head of Patents, Trademarks and Licences at BASF and a prime advocate for IP rights in Europe.
Bruce Lehman: Former Commissioner of the USPTO, an architect of the Digital Millennium Copyright Act, helped negotiate the TRIPS agreement. Founded the International Intellectual Property Institute in 1999.
James Madison: Fourth US President and credited with including Article III, Section 8 - the Patent and Copyright Clause - in the US Constitution, providing the basis for IP in the basic US constitutional system.
Howard T Markey: A driving force for the creation of the Federal Circuit Court of Appeal in the United States and its first chief justice.
Alexander von Mühlendahl: Served three terms as Vice President of the Office for Harmonisation in the Internal Market (Trade Marks & Designs) in Alicante. A pivotal figure in the creation of the Community trademark system.
Melville Nimmer: Author of a four-volume treatise on copyright written in 1963, and continuously updated since then, which remains the "gold standard" scholarly resource on copyright in the US and around the world.
Marshall Phelps: The man who took IBM from generating a few million dollars in IP-related annual revenues in 1985 to over one billion dollars in a little over a decade. Now in charge of IP at Microsoft.
Judge Giles Rich: An author of the US Patent Act of 1952. Then a highly influential judge at the US Court of Customs and Patent Appeals and subsequently the Court of Appeals for the Federal Circuit.
Frank Isaac Schechter: His 1927 article "The Rational Basis of Trademark Protection" was the birth of trademark dilution as a recognised theory.
Dudley Smith: The prime mover behind the formation of the Licensing Executives Society.
Korekiyo Takahashi: The first commissioner of the Japanese Patent Office and later Prime Minister of Japan. In 1885 he introduced Japan's first patent system by promulgating the Patent Monopoly Act.
Nominating Panel:
Ciaran McGinley - Head of the President's Office, European Patent Office, Munich
Bruce Berman - An author and IP consultant based in New York
Jerome Chauvin - Director of the Legal Affairs Department at UNICE (Union des Industries de la Communauté européenne (Union of European Business Federations)), Brussels
David Tatham - Trade mark Attorney, consultant and former Head of Trademarks for Imperial Chemical Industries plc (ICI)
Chris Mercer - President of the European Patent Institute and a partner of Carpmaels & Ransford, London
Karen Hersey - retired Senior Counsel for Intellectual Property at the Massachusetts Institute of Technology, Adjunct Professor of Law, Franklin Pierce Law Center, and former president of the Association of University Technology Managers (AUTM)
Bo Heiden - Deputy Director, Center for Intellectual Property Studies (CIP), Chalmers University of Technology, Gothenburg
Allen Baum - President Elect of LES USA and Canada and a partner of Hutchinson & Mason in Raleigh, NC
Ian Harvey - Chairman, Intellectual Property Institute, London
Ron Myrick - a partner with Finnegan Henderson, vice-president of the AIPPI and a former president of the AIPLA
Anne Gundelfinger - President of the INTA and Vice President & Associate General Counsel, Intel Corporation
Melvin Garner - President of the AIPLA and a partner of Darby & Darby in New York
James Sobieraj - Past president of LES USA and Canada and a partner with Brinks Hofer in Chicago
Peter Chrocziel - President of LES International and a partner with Freshfields in Germany.
Malte Koellner - a partner in German VC firm Triangle Ventures and an adviser on IP to the European Venture Capital Association.
Todd Dickinson - former Commissioner of the USPTO and now VP of IP at General Electric
Steven James - President of the Institute of Trade Mark Attorneys and a partner of RGC Jenkins & Co, London
John Tarpey - World Intellectual Property Organisation
