46th Annual Corporate Patent Seminar

Registration is now open for the 46th Annual Corporate Patent Seminar in Austin, Texas on November 14-16th. Past participants have included representatives from Procter & Gamble, Caterpillar, SC Johnson, Pfizer, Eli Lilly and others.

Limited to senior-level corporate counsel, the CPS is an informal group of patent professionals who exist only for the purpose of putting this seminar together. The cost is $800 per person and additional information including registration information can be found at www.corporatepatent.com

37 patents filed for Nano by Tata Motors [India]

In its bid to protect from imitations world-over, Tata Motors has apparently applied for 37 patents for its Nano, as per a report carried in The Economic Times. Furthermore, it is in the process of filing Intellectual Property Rights (IPRs) claims for Nano in overseas markets, as quoted by a company official, adding that most of the patent applications filed before 2007 have already been granted.

It may be recalled that Nano has been developed to cater to the demands from developing as well as developed markets equivocally and there have been numerous innovations and inventions incorporated in the car that make the car unique.According to The Economic Times, the company has used a number of new concepts and ideas to develop this vehicle and patents will help in protecting some of its innovative ideas, as claimed by well-informed sources.. The move is also expected to help Tata Motors to sell the car in markets such as Africa, Southeast Asia, Eastern Europe and Latin America.

Patent officers should coordinate to bring uniformity in standards [India]

Many of India’s pharma companies, including even the big and transnational ones who themselves have some stake in innovation and R&D, are alleging that patent authorities in India have become very liberal when it comes to grant of patents. Many frivolous patents have been granted and even bogus applications are being entertained, they say. The Indian Pharmaceutical Alliance, a group of big India-born drug companies, is mulling a thorough study of the patents granted since 2005 to find out how many of these are in fact ‘bad patents.’ At the other end of the scale, the foreign pharma companies not only brush aside the allegation of granting patents for ‘trivial inventions’ but also aver that “a lot of important applications” have in fact been turned down by India’s patent authorities. The question that underlies this row is what’s a ‘patentable invention’. At a very general and non-codified level, the newness or rather the surprise element of an invention should be the deciding factor.

The World Trade Organisation’s Trade-Related Intellectual Property Rights (TRIPS) agreement defines the term ‘patentable subject matter’ with due considerations to present-day commercial realities—it says an invention should be “new, involve an inventive step and capable of industrial application” to be deserving of a patent. National governments have drawn a lot of freedom from the TRIPS agreement itself and even autonomously to elaborate on the TRIPS definition. However, national laws of many countries, including the US, are framed in such a way that even “incremental, adaptive or cumulative” inventions could qualify for patents if such invention has a definitive industrial use and thereby considerable commercial value. Indian government has been chary about unfair patenting—thanks to lobbying by domestic industry and the unrelenting stand of leftist outfits. It introduced an additional provision—Section 3(d)—in Patents Act to make patenting criteria more stringent in the pharmaceutical space. This provision was introduced through the third amendment to the Act, which also introduced product patenting for pharma and agrochem inventions.

While the Big Pharma—the large pharmaceutical companies based in the US and EU who hold most of the patents—have been a strident critic of Section 3(d), international organisations like the World Intellectual Property Organisation endorsed it and termed it TRIPS-compliant. According to this provision, incremental inventions (like salts, isomers etc of known molecules) can be patented only if they have contributed to improve the efficacy of the (known) substance. And the patent authorities—read the examiners—would decide if efficacy has really been improved. The current strife over the allegation of the patent authorities practically becoming very liberal in grant of patents would need to be viewed in this context. The fact is India’s Patent Act, even with the fairly elaborate rules notified under it including those to support the Section 3(d), bestows substantial discretionary authority with the patent authorities. Patent examiners in India are still grappling with the complexity of the world of pharmaceutical inventions—the area is abstruse and dynamic enough to baffle even the seasoned examiners. Leaving a lot of things to the discretion of a group of patent examiners is therefore bound to generate conflicts. Here, what the government can do is to create many layers of examiners so that the probability of genuine error can be minimised. But the patent examination, search and grant system in India is currently highly unorganised. The four patent offices—Delhi, Mumbai, Kolkata and Chennai—are yet to achieve a fair degree of cohesiveness among them. These offices, manned by patent controllers and scores of patent examiners who assist them, are allegedly employing separate yardsticks and this is what caused the current allegations and counter-allegations. Clearly, there is a case for a very high degree of coordination between the four patent offices. Patents are anyway prone to contestation. Some disputes would inevitably reach the courts. Such disputes can however be minimised by bringing as much uniformity as possible in standards of patent grant. The Patent Act already provides for pre and post grant opposition and making a review plea before the controller who granted/denied the patent. And there’s the intellectual property appellate board, which is the body for the aggrieved to appeal to. What is lacking is proper coordination among the patent controllers and examiners. The government would do well to address the issue immediately.

Free Japanese Patent Machine Translation Service

You can obtain English machine-translations for Japanese patent and utility model documents from 1993 onwards on the Japan Patent Office's free-of-charge "IPDL" (Industrial Property Digital Library) internet service at http://www.ipdl.inpit.go.jp/homepg_e.ipdl.

From the IPDL homepage, choose the "Patent & Utility Model Gazette DB" link. A simple number search will - as a first search result – return the PAJ English abstract, where available. Clicking the "Detail" button on the top of the result screen will start the machine-translation of the original Japanese unexamined application. Alternatively, clicking the "Japanese" button will display the original Japanese document. In cases where no PAJ English abstracts exist you will immediately get the machine-translation from the Japanese.

See the screenshots at http://www.jpo.go.jp/torikumi_e/hiroba_e/paj_15.htm

You can also try Yahoo! Babel Fish - Text Translation and Web Page Translation

LexisNexis offers a fee-based English machine translation service of Japanese patent documents "in minutes" at $39 per translated document (regardless of length).

Free Chinese Patent Machine Translation (CPMT) Service

The CPMT service is integrated with an English search interface and can be used for obtaining the English full text (including claims and specification) from a searched result (by previous human translation).

See the screenshots at http://www.cnpat.com.cn/430homepage/guidehome.html and then start by choosing “Patent Search and Machine Translation” from the homepage of China Patent Information Center (CPIC) at http://www.cnpat.com.cn/.

Foreign Outsourcing of Application Preparation May Require Export Administration Review [US}

According to the USPTO on July 23, 2008, applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent andTrademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.

If an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the Export Administration Regulations (governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774) or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Information regarding the EAR may be obtained from the BIS Web site at http://www.bis.doc.gov. Questions regarding the EAR should be directed to the BIS’s Outreach and Educational Services Division at (202) 482–4811.

Angiotech win boosts firms looking for patent protection in UK [Patent Law]

A decision by the House of Lords backing Angiotech Pharmaceuticals in a dispute with Conor MedSystems is being hailed as a groundbreaking decision that will make it easier for pharmaceutical firms to get patent protection in the UK.

According to Canada-based Angiotech, the Lords confirmed, “in a precedent-setting decision”, the validity of one of the firm’s patents related to its paclitaxel coated stents. The patent in question was granted in June 1997 and opposed by Conor and four other companies but after more than “nine years of legal battles, their challenge proved unsuccessful and the validity of the patent was maintained,” Angiotech notes. Then, in February 2005, Angiotech brought a lawsuit against Conor in the Netherlands and the latter responded by commencing proceedings in the UK to revoke the patent. Conor argued that the claims in the patent lacked “inventive step” (ie, were obvious) under UK law. Both the UK trial court and the UK Court of Appeal decided that the patent was indeed invalid so Angiotech appealed to the House of Lords which has upheld the validity of its patent and agreed with the Dutch court’s earlier decision that clarifies the obviousness standard in relation to innovations. Commenting on the case, Sue Streatfield, an intellectual property specialist at law firm Eversheds, said it could lead to “a lowering of the current threshold for achieving inventive step”. She noted that Lord Hoffman found that the test for the latter is to be determined by whether the product is obvious not whether it has the claimed effect. Therefore, “so long as a patent is sufficient, the test should not be affected by the amount of evidence the specification contains as to whether the invention will work,” Ms Streatfield added. The House of Lords decision, which was unanimous, reflects “an important development in bringing uniformity to the interpretation” across Europe, Angiotech added.

Tech Giants Band Together to Buy and Sell Patents [International]

About eight years ago, Nathan Myhrvold, a former Microsoft exec started Intellectual Ventures, a company that amasses patents that it can then license. Several tech giants, including Nokia, Intel, Apple and Sony, invest money in the holding company’s war chest.

Now, several big tech companies are banding together in a slightly different patent-related venture. Verizon, Google and Cisco are among a group of companies joining up to defend themselves against patent-infringement suits by buying up patents before the so-called patent trolls get their hands on them.

Here’s how it works: The venture, called Allied Security Trust, buys patents that others might use to bring infringement claims against its members. Member companies will pay roughly $250,000 to join the group and will each put about $5 million into escrow with the organization, to go toward future patent purchases. Allied Security Trust will sell the patents they acquire after they’ve granted themselves a nonexclusive license to the underlying technology.

Intellectual Ventures: On the Prowl?

It might be the single company with the most patents that you’ve never heard of: Intellectual Ventures.

The six-year-old enterprise — the subject of a lengthy profile by Intellectual Property Law & Business — is the brainchild of Nathan Myhrvold, the former chief technologist at Microsoft. And its goal is singular: to amass dozens upon dozens of patents that it can license. (Intellectual Ventures claims to have no desire to manufacture or commercialize any products.) In March 2006, Myhrvold penned an opinion piece in the WSJ, “Inventors Have Rights Too.”

How does the company get its patents? Well, it buys a lot of them, with a $400 million war chest provided by a who’s who of tech companies: Nokia, Intel, Apple, Sony, and Microsoft. And according to the story, the secretive venture dreams them up, hiring fleets of consultants to brainstorming sessions on ideas in a variety of industries. Some in the IP asset management field estimate that Intellectual Ventures has amassed 3,000-5,000 patents.

But not everyone’s supportive of the company:
As the patent stockpile grows, so does the speculation–and the fear. IP lawyers and tech executives worry that Intellectual Ventures is less interested in changing the world with big ideas, and more focused on becoming an uber-troll, wreaking litigation havoc across industries with its patents.

The privately held company won’t discuss its finances. But if it doesn’t work out, Myhrvold probably won’t have trouble finding work. According to the story, the 47-year-old gajillionaire holds advanced degrees in theoretical and mathematical physics, mathematical economics, geophysics, and space physics. He studied quantum physics at Cambridge with Stephen Hawking, is a published nature photographer and “has had his state-of-the-art kitchen–and his recipes–featured in New York Times magazine.”

Infosys expands patent portfolio in the United States

Infosys Technologies has announced that it has been granted two patents by the United States Patent and Trademark Office (USPTO). These patents are in the area of holography and mobile communications. This is the first time that Infosys has bagged patents from the US Patent and Trademark Office work done by its Software Engineering and Technology Labs (SETLabs), a 500-people center comprising researchers, engineers and consultants.

The Lab, set up in 2000 with the aim of bolstering research practices, has filed over 100 patent applications in the last 18 months. The two patents have come at a time when the company is looking at non-linear growth model, breaking the link between revenue and employee growth.

Subu Goparaju, head of Software Engineering & Technology Labs (SETLabs), the research arm of Infosys said, "the patent titled 'displaying holographic three dimensional (3-D) images' describes the realization of actual 3-D communication using computer-generated holography to send/receive information and the associated optical elements required to make a lightweight handset.

Existing technologies use high resolution LCD to give the illusion of 3-D while actually displaying a 2-D image. Actual 3 dimensional imaging which includes a representation of depth information along with amplitude information is not being used in these cases. This patent addresses the issue of 3-D in mobile communication.

The patent titled "method and system for providing reliable and fast communications with mobile entities" proposes a mobile Internet Protocol-based solution to support generic mobility over heterogeneous networks.

There are a number of problems to be overcome to support generic mobility over heterogeneous networks today. This solution leverages a split-TCP type approach where the TCP connection between the communication entities is split at a suitable gateway.

The solution does not require any extension at the mobile host and provides improved performance even for mobility across heterogeneous networks due to an inherent ability to adapt to changing network characteristics. It supports communication between two mobile hosts or between a fixed and a mobile host, where mobile host(s) can roam over heterogeneous networks and also supports a layer 3 handoff.

Across Indian IT services companies, the $5.7-billion TCS has filed over 200 patent applications in the last five years. Says Avinash Vashishta, CEO, Tholons (an advisory firm), "India IT majors have been running a software factory and R&D is one area where they have to do a lot. The focus being services, barring a few small exceptions they have not been able to create a business around R&D — that is, develop IP products and market them." Now, to get to the higher billing tasks and delink revenue growth from manpower growth, a focus on R&D is a must. The top IT majors could show the way.

E-filing in India, a long way to go [IP in India]

The government’s ambitious project to encourage electronic filing of patent and trademark applications has received an embarrassingly poor response in its first year. Of the 35,000 patent applications filed last year, only 410 (1.17%) were filed online. Worse, only 0.24% or 242 of the one lakh trademark applications during 2007-08 were filed online.

The facility for filing of patent and trademark applications from anywhere in the world at any time through the Internet, was launched in July 2007 to help the Indian Patent and Trade Mark Offices function as paperless offices. Government officials termed the poor show as “teething troubles” and blamed it on ignorance and reluctance on the part of Companies and individuals to use the new system.

To correct the situation, the government had asked patent officers and the National Informatics Centre (NIC) to provide training to patent attorneys, through a programme conducted in the four metros. Consequently, in the two months of the current financial year, online applications for patents and trademarks have improved marginally. Online applications constituted 4.9% of the 6,000 patent applications filed so far in this financial year while it also constituted 1.34% of the 20,000 trademark applications.

Currently, there are only about a dozen countries that have e-filing facilities, with India recently becoming a member of this elite group which consists of countries like USA , Japan , South Korea, China and the European Patent Office. With patent applications from China outstripping those from India by leaps and bounds, the Centre has launched a national awareness, sensitisation and consultancy programme by roping in universities, laboratories, state level chambers of commerce and industry, patent attorneys and the scientific community.

The proactive campaign which involves an outlay of Rs 20 crore, would establish a correlation between intellectual property, innovation, productivity and competitiveness. The objective of the programme was to take the intellectual property regime to the bottom of the industrial pyramid and invigorate the proprietary rights culture in the country. An effective online filing system can prove to be the lynchpin for this strategy’s success.

The benefits of e-filing of patent and trademark applications include getting an application number immediately, on-line verification assuring error-free filing and obtaining the filing date, a speedy registration process, being able to save the date locally in the applicant’s personal computer, printing the completed application data and recalling the contact details for subsequent applications. This would have meant savings on paper, valuable time and money.

Payments can be made through the Payment Gateway of authorised bankers, which would save time and money and also put an end to the hassles involved in visiting and filing the applications in the offices. NIC has developed modules for e-filing and on-line processing with State Bank of India providing the payment gateway.

But patent lawyers said though the e-filing system is a major improvement over the previous one, it also hasits own limitations.

Incidentally, the government is working towards sending more officials to be trained by the World Intellectual Property Organisation, UNIDO, as well as Japanese and US patent offices. Several vacant posts of patent examinees also need to be filled up.

To enhance the prestige of the Indian Patent Office (IPO) and to attract work from abroad, the government is also in the process of transforming IPO into an International Search Authority and an International Preliminary Examining Authority under the Patent Cooperation Treaty. Currently, there are only 12 such authorities.

Besides, India would soon join the Madrid Protocol on Trade Marks. Madrid Protocol is a simple and cost-effective system for registration of International Trademarks. India’s membership of the Madrid Protocol will aid Indian Companies in registering their trademarks in other member countries of the Protocol through a single application.

A sound achievement: Bose inducted into Inventors Hall of Fame

Driving uphill to the 500,000-square-foot glass and steel headquarters of the Bose Corporation, accurately dubbed “The Mountain,” one can see that Amar Gopal Bose has accomplished quite a lot in his 78 years.

Originally from Philadelphia, Bose, who was recently inducted into the 2008 National Inventors Hall of Fame, first discovered his love of audio electronics while fixing radios in his basement as a teenager during World War II. Later, in high school, he would take off Fridays to work at a radio repair shop, an arrangement that his classmates often teased him about and that lasted until he attended the Massachusetts Institute of Technology in 1947.

He has since grown his audio empire —known as the Bose Corporation — into one of the top sound research and development facilities in the world. The company builds all types of high-end audio equipment, from commercially available music players and home theaters to auditorium sound systems and equipment for military aircraft and submarines and even NASA. The Bose Corporation has also branched out into automotive work, developing a new type of vehicle suspension system not yet on the market.

But the start of the Bose Corporation –which employs 9,000 people worldwide and has annual sales of $2.5 billion — was a modest one. Bose and fellow MIT electrical engineering student Sherwin Greenblatt, now the company president, founded the corporation in 1964 with funding from military contracts.

Bose began the company just years after earning his doctoral degree in electrical engineering from MIT and attending New Delhi’s National Physical Laboratory as a Fulbright Scholar. He has since maintained a 50-year partnership with MIT in which he has been both professor and collaborator. As with the university, Bose has created a reputation for innovation. His corporation is home to over 100 patents and trade secrets, with at least ten new patents up for approval each year. In 1987, the Intellectual Property Owners Association co-named him and fellow scientist Dr. William Short “Inventor of the Year” for their acoustic waveguide speaker technology. His induction into the Inventors Hall of Fame came earlier this month. But such honors, he said, are only as good as the next invention.

And it is the future that Bose is most eager about. India, he says, is one of the leaders in the software and IT business, and he sees the nation leading the world in years to come. Technological advancements in South Asia are increasing, said Bose, noting that the United States must ensure it keeps pace. To keep up, he said, the United States must invest in education, one of the things that Bose considers most important for a nation’s survival. Countries like China and India treat education with utmost importance, he added.
Bose’s parents had a strong influence over his life. His father, an immigrant from what is now Bangladesh, was in the business of importing cocoa fiber products. He was also a lecturer and activist for freedom for India during British rule. His mother was born in the United States, but steeped in Indian culture.
“[Being Indian] definitely had an influence,” he said.
When he was a professor at MIT, he always tried to meet the parents of doctoral students, so he could tell more about the students. “You can see the correlation; usually the relationship is pretty tight. You can know a lot about someone’s character by meeting their parents,” he said.
Despite his age and achievements, Bose, who has two children in their 40s, remains a dedicated scientist and researcher who still works six days a week. He likes to conduct most of his research at his home in Wayland, Mass., since he says the work is more mathematical and he doesn’t want to be disturbed. When he’s not at the job, he plays badminton and swims (three times a week) and enjoys listening to classical music.
And he shows no signs of slowing down. When asked if he was planning on retiring anytime soon, he quipped: “What’s that?”
“Research is play for me,” he said as he sat in his office high atop the Bose Mountain, with a postcard-picture perfect view of the Massachusetts countryside. “You’re playing games with the universe,” he said.
He has a wall-sized dry erase board next to his desk so he can write down complicated mathematical formulas and equations that pop into his head throughout the day. “To do research you have to believe something is possible,” he said.
As for inventions the corporation may pursue in the future, Bose remains open minded. “Whatever people come up with that’s interesting and challenging. … If it’s just for sales, we’re not interested. We only want the best product, and we’ll continue on the same path trying to make excellence in whatever we do.”

AIPLA: Model Patent Jury Instructions [International]

AIPLA [American Intellectual Property Law Association] has released an updated version of the Model Patent Jury Instructions. Please click on the links below to download the Instructions. The Instructions are currently available in the PDF, MS Word, and WordPerfect (to be provided soon) formats.

The Model Jury Instructions are provided as general assistance for the litigation of patent issues. While efforts have been and will be made to ensure that the Model Jury Instructions accurately reflect existing law, this work is not intended to replace the independent research necessary for formulating jury instructions that are best suited to particular facts and legal issues. AIPLA does not represent or warrant that the information contained in the Model Jury Instructions is accurate, complete or current. The work could contain typographical errors or technical inaccuracies, and AIPLA reserves the right to add, change or delete its contents or any part thereof without notice.

The Model Patent Jury Instructions are available for download here:

MS Word Version, Model Patent Jury Instructions (Word Document)

PDF Version, Model Patent Jury Instructions (PDF File)

WIPO Member States Adopt 2008/09 Program and Budget

A one-day meeting of an extraordinary session of the World Intellectual Property Organization’s (WIPO) Assemblies on March 31, 2008 ended with agreement to adopt the Organization’s program and budget for 2008/09, as well as a 5% decrease in fees paid for international patent applications.

The proposed level of expenditure for the 2008/09 biennium is 626.3 million Swiss Francs (SFr). The full proposed program and budget for the 2008/09 biennium is available at http://www.wipo.int/edocs/mdocs/govbody/en/a_44/a_44_2.pdf. The program and budget 2008/09 was adopted with no prejudice to any adjustments that may be required during the biennium.

The Chairman of the General Assembly, Ambassador Martin I. Uhomoibhi, who is also the Permanent Representative of Nigeria to the United Nations in Geneva, said the agreement is the result “of active consultations and negotiations aimed at resolving all pending issues” since the last WIPO Assemblies session in September-October 2007. Ambassador Uhomoibhi said “The outcome achieved was the collective agreement that this Extraordinary Session be convoked principally to adopt the budget. The fact that we are meeting here today, 31 March 2008, is a result of the agreement reached during these negotiations.” Ambassador Uhomoibhi said this session of the General Assembly will go down in history as one of the briefest, characterized by candor and clarity of all concerned. “I am personally touched by this cooperative spirit,” he added.

The agreement included a decision to reduce the international filing fee under the PCT by 5% (this means that the international filing fee will fall from 1,400 SFr to 1,330 SFr) and to increase the reduction from 75% to 90% for countries whose per capita national income is below US$3,000, as well as to Antigua and Barbuda, Bahrain, Barbados, Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad and Tobago and the United Arab Emirates. This fee reduction will be effective from 1 July 2008.

Speaking after the meeting, the Director General of WIPO, Dr. Kamil Idris, welcomed today’s decision on the program and budget for the 2008/09 biennium. He said “The adoption of the budget today is a sign of goodwill by all member states…It reflects mutual understanding that the Organization should move on.”

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.

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.

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.

Summary
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: http://www.meti.go.jp/policy/ipss/index.html)

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.


Contacts:
The Association of Intellectual Property Education
Tomoyuki Kanai, +81-3-3438-2147
(Japanese correspondence only)
Fax: +81-3-3438-2148
support@ip-edu.orghttp://www.kentei-info-ip-edu.org/

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.

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.

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'.