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General Global Week in Review 6 July 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Mon, 06 Jul 2009 10:48:00 -0500

Here is IP Think Tank’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

EPO sets deadline for presidential applications; Jesper Kongstad, Benoît Battistelli enter the fray in battle to be next EPO President (Managing Intellectual Property) (IAM) (IAM)

ECJ: Dutch brewer allowed to use Italian BAVARIA trade marks despite ‘Bayerisches Bier’ (Bavarian Beer) PGI: Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV (IPKat) (Class 46)

Global

Global - General

Doers and communicators first, CIPOs after that (IP Think Tank)

Brazil, ECJ, data exclusivity, communicating IP value and Tweet and retreat IP Think Tank podcast 2 July 2009 (IP Think Tank)

China, USA and Europe news and comparisons IP Think Tank podcast 22 June 2009 (IP Think Tank)

Judge companies on what they do about their IP rights, not what they say (IAM)

IP Business Congress 2009 video interviews (Interview with Todd Dickinson - IAM)

Interviews with Phelps of Microsoft, Peters of Philips and other top CIPOs available (IAM)

Global - Trade Marks / Brands

Standing Committee on Trademarks examines trademark and design law and practice (WIPO)

Trademarks and the company organisational chart (IP finance)

Cheap food, terroir and the blind spot of geographical indications (IP Osgoode)

Global - Patents

Insolvency and patent sales (IP finance)

Start-up entrepreneurs & CEOs: If your goal is investment or acquisition, you are probably patenting the wrong things (IP Asset Maximizer Blog)

Technology transfer by universities (Securing Innovation)

Global - Copyright

The setting up of new copyright societies (WIPO)

Creative commons licensing: Types, enforceability and potential problems (IP Osgoode)

Australia

FCFCA upholds test for innovative step: Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Mallesons Stephen Jaques)

FCA: Mars claims of trade mark infringement, passing off, and misleading and deceptive conduct all fail in its attack on competitors ‘Malt Balls’ confectionary product: Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (Australian Trade Marks Law Blog)

Benelux

Court of the Benelux: Brussels bypass for BOIP: Jtekt Corporation v Jacobs Trading and BOIE (IPKat)

Brazil

The new Customs Regulation and the current practice of Customs Authorities (IP tango)

Vale dos Sinos recognised as a protected geographical indication for finished leather (IP tango)

Canada

ACTA update: new meetings, new partners, new issues (Michael Geist)

Copyright Board’s decision in K-12 reprography matter bad news for Canadian educators, librarians, students and taxpayers (Excess Copyright) (Excess Copyright)

Canada’s intervention at WIPO SCCR meeting (Excess Copyright)

Censoring copyright policy criticism in Canada? (Excess Copyright) (Michael Geist)

Hill Times features op-ed by Michael Geist concerning copyright lobby recycling (Michael Geist)

Owner of Glo Salon and Spa sues former employees now working at competitor for $6.4 million in damages over alleged misappropriation of trade secrets in the form of client lists and client colour cards (IP Osgoode)

Federal court issues practice direction aimed at streamlining complex litigation (International Law Office)

China

Get involved in Chinese IP policy making if you want to make a difference (IAM)

Reducing the risk of IP right leakage (International Law Office)

Growing awareness of trademark rights in China’s Zhejiang province (Hansung)

Europe

ECJ: Dutch brewer allowed to use Italian BAVARIA trade marks despite ‘Bayerisches Bier’ (Bavarian Beer) PGI: Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV (IPKat) (Class 46)

ECJ rules on design rights in works created at the direction of an employer: Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL, Acierta Product & Position SA (IPKat)

ECJ: The assimilation of marks from Madrid: Zino Davidoff SA v Bundesfinanzdirektion Südost (IPKat)

ECJ dilution ruling in L’Oreal v Bellure splits well-informed blog readership (IPKat)

CFI: CENTER SHOCK confusingly similar with CENTER for chocolate and confectionary: Perfetti Van Melle SpA v OHIM and intervener Cloetta Fazer AB (Class 46)

CFI says no to DR NO due to insufficient evidence that film ‘Dr. No’ had been broadcast in Member States that affords special protection to film titles: Danjaq v OHIM, Mission Products (Class 46)

Jesper Kongstad, Benoît Battistelli enter the fray in battle to be next EPO President (IAM)

EPO sets deadline for presidential applications (Managing Intellectual Property) (IAM)

The IP ecosystem (Innovationpartners)

More work on draft council regulation on the EU community patent (BLOG@IP::JUR)

Mr Bruno van Pottelsberghe calling for European patent revolution with report ‘Lost Property – The European Patent System and Why it Doesn’t Work’ (BLOG@IP::JUR) (PatLit)

File inspection: EU Council still not disclosing ECJ referral for unified patent litigation system (continued) (BLOG@IP::JUR)

CIPA Journal article ‘Not for the Faint Hearted – The New Rules Relating to Filing a Divisional Application at the European Patent Office’ raises interesting issues (IPKat)

Finland

Committee established to prepare proposal for centralisation of IPR litigation (Class 46)

Germany

Coty ‘perfume tester’ reference to Oberlandesgericht Nürnberg published on Curia site: Coty Prestige Lancaster Group GmbH v Simex Trading AG (Class 46)

Ghana

Ghana local film industry receives boost – IP laws will be tested (Afro-IP)

India

Design v copyright – need for a clear and rational distinction – III (Spicy IP)

Korea

Recent developments in Korean patent law (Hansung)

Korean recognised as one of PCTs official languages (Hansung)

Patent attorneys may soon handle infringement litigation alongside lawyers – bill pending in the National Assembly (Hansung)

IP Australia now using KIPO for international patent examinations (Hansung)

Malaysia

High Court finds copyright infringement in anti-theft system case: Megnaway Enterprise Sdn Bhd v Soon Lian Hock (Performance Audio & Car Accessories Enterprise) (International Law Office)

New Zealand

Illicit use or fair trading? A lesson for brand owners – Dispute over ILLICIT mark (International Law Office)

Nigeria

How not to create a new name: Lessons from NiGaz (Afro-IP)

Poland

Trade mark issues on a geographical name of gmina (Class 46)

South Africa

Independent Communications Authority of SA publishes position paper on whether there is a need to reform laws relating to copyright ownership in commissioned works (Afro-IP)

South African authors seek first public lending right in a developing country (Intellectual Property Watch)

Controversy over FIFA World Cup 2010 trade marks (International Law Office)

Spain

Supreme Court says ‘no’ to international exhaustion of trade mark rights (again): cassational appeal 1247/2004 (Class 46)

High Court recognises distinctiveness of Freixenet bottle: Freixenet v Codorniu (International Law Office)

Switzerland

Since 1 July 2008 import of fake trademarked goods into Switzerland is prohibited even if not imported for resale (class 46)

United Kingdom

EWHC Patent Court: Streamlined or not, two days is all that’s needed: Mobiqa Ltd v Trinity Mobile Ltd (PatLit)

IPO again refuses Blacklight’s applications relying on controversial scientific hypothesis of ‘grand unified theory of classical physics’ (IPKat)

Rumours Clifford Chance may downgrade its IP operations (IAM)

UK Mechanical Copyright Protection Society discusses the effect of drop in interest rates on their business (1709 Copyright Blog)

Birmingham considers whether to seek protected geographical status for Balti curry (IPKat)

United States

US General

Federal Research Public Access Act re-introduced in the Senate (Public Knowledge)

Is your settlement agreement durable? Leaving terms open for future agreement: Nutraceuticals v Mucos Pharma (The IP ADR Blog)

US Patents

USPTO launches patent prosecution highway to Finland (Managing Intellectual Property)

Did you know... that all counterclaims asserted in section 337 cases are automatically removed to US District Court (ITC 337 Law Blog)

Recent developments under section 337 of the Tariff Act (International Law Office)

United Inventors Association patent to market mini-series: episode 1 ‘How inventors can avoid scams, traps and raw deals’ (IP Watchdog)

EFF patent bust a slow train coming (The Prior Art)

Cake and eat it too: patents do not prevent research – Bayh-Dole Act (IP Watchdog)

Thomson Reuters publishes ‘Innovation Hot Spots’ (Peter Zura's 271 Patent Blog)

Prelim: The association between grant rate and pre-filing searches (Patently-O)

Understanding the role of the Board of Patent Appeals: Ex parte rejection rates on appeal (Patently-O)

Dropping claim counts (Patently-O)

Assistant examiners and patent term adjustment (Patently-O)

The flawed nature of the false marking statute (Patently-O)

US Patents – Decisions

Supreme Court denies certiorari in Quanta v Ricoh concerning ‘international patent exhaustion’ (Washington State Patent Law Blog)

District Court N D Illinois: Claim constructions result in invalidity summary judgment: Microthin.com v SiliconeZone USA (Chicago Intellectual Property Law Blog)

District Court E D Texas: Novatek wins summary judgment of noninfringement in patent infringement suit brought by Honeywell Intellectual Property International over LCD flicker reduction technology (The Prior Art)

District Court E D Texas: Attorney does not have to ‘do the PTO’s job for them’ to negate inequitable conduct: Tyco Healthcare Group LP v Applied Medical Resources Corp (Peter Zura's 271 Patent Blog)

ITC: Initial determination of no violation of s 337 by Phicom, Phiam, Micronics Japan and MJC Electronics in investigation concerning probe card assemblies and DRAM and NAND flash memory devices (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Bilski – USPTO posts selected material on Bilski (Peter Zura's 271 Patent Blog)

Cognex – Cognex can’t seek early summary judgment in barcode reader dispute with Microscan (Washington State Patent Law Blog)

Crocs – Federal Circuit to hear oral argument in Croc’s appeal July 10: Crocs, Inc v ITC (ITC 337 Law Blog)

US Copyright – Decisions

District Court: Judge permanently bans publication of unauthorised sequel to J D Salinger’s novel ‘Catcher in the Rye’ (The IP Factor)

Copyrighting the ‘aggressively vapid’: appeals court overturns finding of non-infringement of Situation Management Systems’ training materials (IP Directions)

US Copyright – Lawsuits and strategic steps

Timbaland – Finnish demoscener Janne Suni claims Timbaland and Nelly Furtado’s song ‘Do it’ infringes copyright in her earlier song ‘Acidjazzed Evening’ (1709 Copyright Blog)

US Trade Marks – Decisions

Supreme Court grants certiorari in American Needle Inc v National Football League concerning allegations that NFL’s trade mark licence agreement contains Sherman Act violations (IPKat)

CAFC affirms TTAB’s Shinnecock Smoke Shop section 2(a) ruling: In re Shinnecock Smoke Shop (precedential) (TTABlog)

Court of Appeals for the 2^nd Circuit: Removal of UPC code on grey goods is actionable: Davidoff v CVS (The Trademark Blog)

District Court W D Washington enjoins beauty school from using competitor’s marks in signs and ads: MBL/Toni&Guy Products LP v Kennard (Seattle Trademark Lawyer)

District Court Nevada clarifies Nevada limitations period for laches presumption: Aristocrat Technologies et al v High Impact Design & Entertainment (Las Vegas Trademark Attorney)

TTAB precedential no 26: TTAB affirms descriptiveness refusal of BATTLECAM for computer game software: In re Petroglyph Games, Inc (TTABlog)

TTAB precedential no 25: VINTAGE TITAN and TITAN confusingly similar for related medical devices: In re Toshiba Medical Systems Corporation (TTABlog)

TTAB denies motion to amend cancellation petition to add new classes because fee did not accompany motion: Fred Beverages v Fred’s Capital Management Company (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Joseph Abboud – Is a name necessarily a mark? - Appeals court instructs District Court to admit extrinsic evidence to interpret trade mark assignment contract: JA Apparel Corp v Abboud (Property, intangible)

Brazil, ECJ, Data Exclusivity, Communicating IP Value and Tweet and Retreat IP Think Tank Podcast 2 July 2009

duncan@duncanbucknell.com (Duncan Bucknell) — Fri, 03 Jul 2009 08:31:00 -0500

Welcome to the IP Think Tank podcast for Thursday 2nd July 2009. In this week's call, regular panellists Jeremy Phillips and Duncan Bucknell are joined by Jose Carlos Vaz e Dias to discuss:

Pharmaceutical and biological data exclusivity in the United States and Brazil;
Geographical Indications in Europe and Brazil;
European Court of Justice decisions on the Madrid protocol, ownership of Community Designs and Geographical Indications;
Communicating IP Value; and
Using social networking for good - Jeremy's Tweet and Retreat principle.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu; http://ipkitten.blogspot.com/

Jose Carlos Vaz e Dias - http://www.diblasi.com.br/?mod=profissionais&sec=escritorio&prof=Jose-Carlos-Vaz-e-Dias

Online Global Week in Review 3 July 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Fri, 03 Jul 2009 07:57:00 -0500

Here is IP Think Tank’s weekly selection of top Online intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

Pirate Bay sold to software company Global Gaming Factory X (TorrentFreak) (TorrentFreak) (TorrentFreak) (TorrentFreak) (TorrentFreak) (Ars Technica) (IPKat)

Judge Posner suggests expanding US copyright law to make linking to and summarising news content infringement (Becker-Posner Blog) (Chicago Intellectual Property Law Blog) (Chicago Intellectual Property Law Blog) (Excess Copyright) (Copyfight)

US Supreme Court declines to hear Cablevision – remote storage DVR remains legal for now (Public Knowledge) (Public Knowledge) (Ars Technica) (1709 Copyright Blog)

Global

Global - Copyright

Nexicon’s automated legal threats turn piracy into profit (TorrentFreak)

Knowledge Exchange study focusing on groups in Denmark, Netherlands and UK finds open access saves millions of dollars (Michael Geist)

How much is really lost through downloading? A question of credibility (IP finance)

Global - Trade Marks

Rod Beckstrom appointed new CEO and president of ICANN (Managing Intellectual Property)

Brazil

President shows warmth to Pirate Bay spokesman (TorrentFreak)

Canada

Copyright reform back on course? – Ministers Clement and Moore’s speeches at Digital Economy conference (Excess Copyright)

Michael Geist’s appearance at Industry Committee discussing Bill C-27 (Michael Geist)

Maybe the jury didn’t like the songs - Legality of file-sharing in Canada and comparison with US position (Slaw)

Liberal Party recommends ratification of WIPO internet treaties (Michael Geist) (Michael Geist)

Canadian Press on attempts to establish a Canadian Pirate Party (Michael Geist)

China

China trade mark problems for iPhone? (China Hearsay)

Czech Republic

Pirate Parties parade through Prague, Paris (Ars Technica)

France

L'Oréal and eBay will meet again, for mediation and before the Court of Appeal in case concerning auction site’s liability for counterfeit sales (Class 46)

Pirate Parties parade through Prague, Paris (Ars Technica)

Germany

File-sharing site, Rapidshare fined 24m euros; Rapidshare announces intent to appeal (IPKat) (IPKat)

Netherlands

Mininova demands rectification from Dutch Parliament concerning false accusations included in report on dealing with online piracy (TorrentFreak)

BREIN demands $70,000 per day penalty for Usenet community FTD (TorrentFreak)

Sweden

Pirate Bay sold to software company Global Gaming Factory X for SEK 60 million, goes legal; will decentralise operations; suspicions of insider trading surrounding Pirate Bay buyers (TorrentFreak) (TorrentFreak) (TorrentFreak) (TorrentFreak) (TorrentFreak) (Ars Technica) (IPKat)

Pirate Bay retrial denied, judge declared unbiased; Pirate Bay to sue Sweden for human rights violations (Ars Technica) (TorrentFreak) (TorrentFreak)

Pirate Bay’s YouTube competitor ‘The Video Bay’ is ‘coming soon’ (TorrentFreak) (Ars Technica)

United Kingdom

Government publishes information about implementation of ‘Digital Britain’ report (1709 Copyright Blog)

‘Digital Britain’: blueprint for the future? (Laurence Kaye on Digital Media Law)

ACS:Law and Logistep currently seeking settlement from around 6000 alleged file-sharers but ISPs doubt accuracy of evidence (TorrentFreak)

We should have embraced Napster says BPI boss Geoff Taylor in op-ed piece for BBC (Ars Technica)

United States

US General – Decisions

9^th Circuit: Anti-spyware company protected by 47 USC 230(c)(2): Zango v Kaspersky Lab (Technology & Marketing Law Blog)

US Patents

How to patent software in a post Bilski era (IP Watchdog)

Robert Plotkin guest post: Why wishes should be patentable (IP Watchdog)

Software is the new engine and must be patentable (IP Watchdog)

US Patents – Lawsuits and strategic steps

Rambus – ITC issues claim construction order in investigation concerning semiconductor chips having synchronous DRAM controllers with respondents including NVIDIA, Asustek Computer, ASUS Computer, BFG Technologies and others (ITC 337 Law Blog)

US Copyright

Judge Posner suggests expanding copyright law to make linking to and summarising news content infringement (Becker-Posner Blog) (Chicago Intellectual Property Law Blog) (Chicago Intellectual Property Law Blog) (Excess Copyright) (Copyfight)

First public university, University of Kansas adopts open access policy (Intellectual Property Watch)

Recent court decisions good news for US content owners: Jammie Thomas case and Usenet.com case (1709 Copyright Blog)

US Circuit Court of Appeals rules that Turnitin’s fight against plagiarism does not violate student IP rights: a dissenting opinion (IP Osgoode)

US Copyright – Decisions

Supreme Court declines to hear Cablevision – remote storage DVR remains legal for now (Public Knowledge) (Public Knowledge) (Ars Technica) (1709 Copyright Blog)

Federal judge finds Usenet.com liable for direct infringement, inducement, contributory infringement and vicarious infringement in RIAA lawsuit (Ars Technica) (IP Watchdog)

US Copyright – Lawsuits and strategic steps

ASCAP – EFF, AT&T argue phones ringing in public do not violate copyright law in ringtone royalty battle brought by ASCAP (EFF) (Ars Technica)

RIAA – Tenebaum team tries to toss MediaSentry evidence on basis of violations of wiretap law and private detective licensing law (Ars Technica)

US Trade Marks – Decisions

TTAB precedential no 26: TTAB affirms descriptiveness refusal of BATTLECAM for computer game software: In re Petroglyph Games, Inc (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Google – Ascentive LLC files the sixth lawsuit against Google’s AdWords program and alleges variety of legal violations in relation to being omitted from Google’s organic search results index (Technology & Marketing Law Blog)

RE/MAX International – RE/MAX files cybersquatting and trade mark infringement lawsuit against Las Vegas real estate agent Cristine Rosa Lefkowitz and her corporation C Rosa Inc (Las Vegas Trademark Attorney)

Doers and communicators first, CIPOs after that

duncan@duncanbucknell.com (Duncan Bucknell) — Thu, 02 Jul 2009 07:00:00 -0500

Today’s corporate leaders don’t understand and don’t care about intellectual property – and so say all of us, went the tune at the recent IP Business Congress in Chicago.

Wow.

If that’s right (and it is only anecdotal so far) then let’s put off trying to make CEOs anoint a Chief Intellectual Property Officer (CIPO), ok?

Let’s work on the basics first.

Don’t get me wrong, the debate around CIPOs, their preferred attributes and metrics to measure them is incredibly important. Many companies would ideally have a CIPO and if nothing else, the debate has become a touch point for what is clearly the bigger issue – raising the profile of intellectual property as a source of strategic advantage.

Ok, so give me something practical, I hear you say. How do I make the intellectual property story more compelling?

This is not rocket surgery, it is being done all the time in countless ways in every corporation. You have to build your own credibility within your organisation as someone who reliably gets the job done. As you build trust with those senior to you, then your (ongoing?) commitment to communicating the value that can be added using intellectual property will become more prominent.

Make some (achievable) promises and then deliver. The more that you do this, the more credibility will be given to the IP function, and the greater awareness those senior to you will have. Some would call such a person an ‘IP Evangelist’ – I would say that they are just doing their job. People executing on difficult tasks bit by bit has always been what success is about.

Forget about what you’re called. Focus on delivering value using the tools of IP, and the rest will follow. Perhaps we will one day get to a position where all smart companies have a designated CIPO. But then again, perhaps not. Either way there should be someone in the organisation championing the use of intellectual property to deliver value.

Call them what you want, just as long as they get the job done.

(Photo credit: gopal1035)

Pharma & Biotech Global Week in Review 1 July 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Wed, 01 Jul 2009 09:14:00 -0500

Here is IP Think Tank’s weekly selection of top Pharma & Biotech intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

US: White House recommends 7-year data exclusivity period for follow-on biologics – HR 1427, S726, HR 1548 (Patent Docs) (Patent Baristas) (IP Watchdog) (Holman's Biotech IP Blog) (Holman's Biotech IP Blog) (Patent Docs) (GenericsWeb)

US: Sen Nelson introduces S 1315 bill to amend ANDA ‘first applicant’ definition that would effectively gut 180-day exclusivity (FDA Law Blog) (Patent Baristas)

General

WHO or who should guarantee the right to health? - International experts debate how human rights could be infused into global health strategies (Intellectual Property Watch)

Reverse payments: (how) do they affect SPCs? (The SPC Blog)

EU: Germany refers question to ECJ concerning SPCs for plant protection products (The SPC Blog)

EU: Nutritional supplements: is Class 5 their natural home? OHIM decision in Laboratorios Andrómaco, S.A. v OTC Pharma International B V (Class 46)

India: Valgancyclovir hearings and the need for more transparency: Roche v Cipla (Spicy IP)

Japan approves first follow-on biologic (Patent Docs)

UK: Journal of Intellectual Property Law & Practice note on ‘Paediatric extensions: the requirement of a compliance statement’ on UK IPO decision in Merck and Co, Inc (The SPC Blog)

US: Sen Nelson introduces s 1315 bill to amend ANDA ‘first applicant’ definition that would effectively gut 180-day exclusivity (FDA Law Blog) (Patent Baristas)

US: Federal Trade Commission reports: authorised generics, during the 180-day exclusivity period, benefit consumers and the American healthcare system (GenericsWeb)

US: FTC Chairman Jon Leibowitz says ‘stopping collusive ‘pay-for-delay’ settlements between brand and generic pharmaceutical firms would save consumers $3.5 billion a year’ (FDA Law Blog)

US: IPO continues to support 14-year exclusivity period for biologics (Patent Docs)

US: Kappos nomination supported by industry and patent groups (Patent Docs)

US: ITC: Nantong Foreign Medicines & Health Co’s motion for summary judgment of invalidity denied in investigation concerning non-shellfish derived glucosamine (ITC 337 Law Blog)

US: CAFC affirms judgment granting defendant/appellee’s motion to dismiss for lack of personal jurisdiction: Autogenonomics v Oxford Gene Technology (Patent Docs) (Global IP Watch)

Venezuela: Is Venezuela the new Thailand? (Patent Docs)

Products

Avapro (Irbesartan) – Spain: Fourth Commercial Court of Barcelona rejects preliminary injunction petition by Sanofi-Aventis and Bristol-Myers Squibb for alleged patent infringement (International Law Office)

Cozaar/Hyzaar (Losartan/Hydrochlorothiazide and Losartan) –US: Teva sues FDA over generic Cozaar and Hyzaar 180-day exclusivity forfeiture and patent delisting rule (The FDA Law Blog)

Eloxatin (Oxaliplatin) – US: District Court of New Jersey finds Teva, Sandoz and Mayne do not infringe Eloxatin patents (The IP Factor)

Humira (Adalimumab) – US: University of Iowa accuses Abbott’s Humira of infringing its patents covering ‘transfering vectors and microorganisms containing human cytomegalovirus immediate-early promoter-regulatory DNA sequence’ (Patent Docs)

Lexapro (Escitalopram) – Australia: FCAFC – clarification of novelty test for enantiomers: H Lundbeck A/S v Alphapharm Pty Ltd (Patent Baristas)

Perforomist (Formoterol fumarate) – US: Dey files patent infringement suit against Teva following Para IV certification as part of ANDA to produce generic Perforomist (Patent Docs)

Vanos (Fluocinonide) – US: Medicis files patent infringement suit against Glenmark following Para IV challenge concerning Vanos (Patent Docs)

Viagra (Sildenafil) – Canada: Federal Judge dismisses Novopharm’s challenge to validity of Viagra patent but raises uncomfortable questions (The IP Factor)

Xyzal (Levocetririzine) – US: Perrigo confirms that its partner Synthon has filed for generic version of Xyzal solution and announcement of lawsuit by Sepracor/UCB (GenericsWeb)

20 client engagements 35 countries June 2009 insights from Duncan Bucknell Company

duncan@duncanbucknell.com (Duncan Bucknell) — Tue, 30 Jun 2009 07:00:00 -0500

Firstly, thanks to our clients who involved us in 20 exciting engagements across over 35 countries in June 2009. Clients we worked with this month were based across North America, Europe, India and the Asia Pacific and we worked with them on corporate, product and contentious intellectual property strategy.

Here are some of our insights from the month that was:
The key message this month came out of IP Business Congress 2009 in Chicago – forget patents and focus on communicating value.

In our opinion, the biggest news in the IP world this month was the Swedish Pirate Party winning a seat in the EU parliament.

There were also some big IP wins for some of our clients in the news, but we can’t mention them here, except to say congratulations again.

The best podcast moment was the US, Europe and China discussion with Hal Wegner, Weijiang Si and Jeremy Philips.

In other news we’re delighted to be adding a second outstanding Indian team member to our firm. We’re looking forward to when she can start. We’re currently in discussions with potential team members from China and the USA.

Finally, we’ve decided to open up the IP Think Tank’s virtual doors to allow others to publish high quality articles in our articles area. We have a number of research projects ongoing and will be keen to collaborate when appropriate as well. Please do let us know if you would like more information about this initiative.

(Photo credit: marcelgermain)

General Global Week in Review 29 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Mon, 29 Jun 2009 03:00:00 -0500

Here is IP Think Tank’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

USPTO bailout bill introduced (Peter Zura's 271 Patent Blog) (The Invent Blog) (IP Watchdog) (Inventive Step)

Unravelling the Canadian copyright policy laundering strategy (Michael Geist) (Excess Copyright) (Ars Technica)

Global

Global - General

Reports from IP Business Congress 2009 (IP Think Tank) (Peter Zura's 271 Patent Blog) (IAM) (NPEs - Peter Zura's 271 Patent Blog)

Let’s be practical about communicating IP value (IP Think Tank)

Make patents, not war – Branding intellectual property: the next step (IP Think Tank) (IP Think Tank) (The IP ADR Blog)

Transatlantic coalition calls for ‘halt’ to ACTA talks until US and EU publish full text of negotiation documents (Ars Technica) (Intellectual Property Watch)

IP securisation and UNCITRAL: it’s not too late to comment! (IP finance)

International conference to probe interface between IP and public policy (WIPO)

So is it joint ownership or a licence? (IP finance)

Everything’s negotiable: How corporations can drastically reduce their IP legal costs with sacrificing IP quality (IP Asset Maximizer Blog)

Global - Trade Marks / Brands

Geographical indications: the WIPO symposium (Class 46)

Trade marks, social responsibility and fair trade (Class 46)

Signs and sensibility: Accommodating non conventional trade marks (IP Osgoode)

Global - Patents

Feeding the sharks or fuelling the economy? (IP Think Tank)

OECD roundtable on competition, patents and innovation – British delegation paper on woolly patents, global warming and the coming flood (PatLit)

NZ wind turbine patent including international rights to PCT application auctioned on eBay (Green Patent Blog)

Patent attorneys can create value-added services for their clients by assisting with open innovation efforts (IP Asset Maximizer Blog)

News items: IAM 250, IP metrics benchmarking study and new innovation blog for innovation entrepreneurs (IP Asset Maximizer Blog)

Global - Copyright

Meeting the needs of the visually impaired persons: What challenges for IP? – Meeting, Geneva, 13 July (WIPO)

Australia

APO: No inventive step: Electrowatt Technology Innovation Corp v ABB Inc (IPRoo)

American pop star Katy Perry sends cease and desist letter to Katie Perry clothing label (The IP Factor)

IP Australia: Changes to the administrative instructions under the PCT – filing and processing sequence listings effective 1 July (IPRoo)

PCT rule changes and other patents regulation changes (IPRoo)

Amendments to Trade Marks Regulations 1995 (IPRoo)

Amendments to Designs Regulations 2004 (IPRoo)

Brazil

Acts of God and Brazilian national phase PCT (IP tango)

Canada

Copyright Board of Canada releases decision on photocopying in primary and secondary schools (Michael Geist)

CIPO adopts revisions to examination practices concerning ‘doubtful case’ letters and Examiner objection response timeframe (Canadian Trademark Blog)

Unravelling the Canadian copyright policy laundering strategy (Michael Geist) (Excess Copyright) (Ars Technica)

Quebec group working to protect local specialities with IP (Intellectual Property Watch)

China

Registering your trademark in the US and China on the cheap (China Law Blog)

Lehman, Lee & Xu to host delegation of experts from African Intellectual Property Organisation and SIPO to discuss IP development and future cooperation (China Blawg)

Supreme People’s Court comments on patent law (Washington State Patent Law Blog)

Egypt

Possible to file PCT national phase from 2 June; calculation of PCT application annuity due date changes from 6 June (Afro-IP)

Europe

Greek court refers PDO questions to ECJ: Κ. Frangopoulos kai Sia OE v Nomarkhiaki Avtodiikisi Korinthias (Class 46)

L’Oréal wins decision against Bellure to prevent comparative advertising: L’Oréal v Bellure (The IP Factor)

Who speaks for the European majority?: L’Oréal v Bellure (IPKat)

Is the ruling in L’Oréal v Bellure against the law? (IPKat)

ECJ: Distinctive character must be acquired through use of trade mark before date of application: Imagination Technologies Ltd v OHIM (IPKat) (Class 46)

EPO appeal ‘invalid for insufficiency’: Pipe for filling bottles/Gallardo Gonzales (PatLit)

Prevent patents inhibiting knowledge diffusion for green technology, EU told (Intellectual Property Watch)

IPREG to regulate IP professionals (IPKat)

Tricky European patent question: what happens when international application is objected to by EPO acting as ISA on grounds of lack of unity? (IPKat)

Citing prior art in European patent applications (IPKat)

Swiss IP chief Roland Grossenbacher emerges as candidate to be new EPO President (IAM)

Cross-border litigation consultation: little time to act (PatLit)

It pays to be a (trade mark) bully according to study by economist Georg von Graevenitz on success of opponents before the OHIM (Class 46)

Latest European GI news: amendments to Sabina PDO for Italian oil and Pera dell’Emilia Romagna GI for Italian pears; PDO application for Italian Provolone del Monaco cheese; GI application for Permento do Couto Spanish peppers; registration of Pagnotta del Dittaino for Italian bread (Class 46)

France

French IPO publishes annual report for 2008 (Class 46)

Germany

Louis Vuitton drops claim against German Red Cross Society over sale of fake handbag (Class 46)

Hungary

Trade mark fee reduction for Hungary (Class 46)

Israel

Deputy Commissioner of Patents rules that successfully opposing independent claims is sufficient to invalidate entire patent (The IP Factor)

Arbitrator of IP: ‘Sabon shel Safta’ (Granny soap) distinctive and non-diluting (The IP Factor)

Ireland

Details of Ireland’s new IP tax reliefs now available (IP Frontline)

Japan

Japan limits private use exception (1709 Copyright Blog)

Poland

District Administrative Court: Differences between business reputation and trade mark: BOSS LIGHTS case (Class 46)

Supreme Administrative Court rejects cassation complaint in case concerning non-use of ‘Lech-Pol’ figurative trade mark (Class 46)

South Africa

The IPR Act attracting more comment (Afro-IP)

Sudan

New regulations regarding power of attorney effective from 1 July 2009 (Afro-IP)

Switzerland

Top ten trade mark representatives in Switzerland (Class 46)

Swiss IPO to increase filing fee by 57% beginning 2010 (Class 46)

Cantonal Court of Vaud awards Ferrari preliminary injunction in dispute over Swiss company’s use of trade mark ‘Auto Avio Costruzioni’ with flying horse for cars (Class 46)

United Kingdom

UK Customs procedures and the burden of proof (IPKat)

Proposals to reform the Patents County Court (IP Osgoode)

2008/09 IP Crime Report released (Managing Intellectual Property)

United States

US General

USPTO bailout bill introduced (Peter Zura's 271 Patent Blog) (The Invent Blog) (IP Watchdog) (Inventive Step)

David J Kappos - background of the Under Secretary Designate (IP Frontline)

Kappos nomination supported by industry and patent groups (Patent Docs) (Managing Intellectual Property)

US Patent Reform

Obama’s USPTO choice, Kappos, supports patent reform (Ars Technica) (Patently-O)

More problems with patent reform legislation (IAM)

US Patents

Understanding the role of the Board of Patent Appeals: Ex parte rejection rates on appeal (Patently-O)

Timeline of the BPAI backlog (Patently-O)

Evidence based prosecution: The status of applications filed 4½ years ago (Patently-O)

Committee assembled by Michel CJ publishes national model patent jury instructions (Patent Docs) (IP Spotlight)

How long does it take for the Patent Office to look at national entry papers? A long time (Patent Baristas)

PPAC meeting summary (Inventive Step)

Overtime ban at the USPTO (IAM)

Is it time to make law firms pay for representing patent trolls? (IAM)

Is there an emerging business model for IP lawyers’ owning so-called ‘patent trolls’? Only until their corporate clients find out (IP Asset Maximizer Blog)

Discussion of The Hill op-ed by Sen Hatch ‘1952 law belies out progress in sciences’ (IP Watchdog)

Ocean Tomo does rating deal with France’s state bank (IAM)

Did you know... importation is a separate requirement in section 337 cases? (ITC 337 Law Blog)

US Patents – Decisions

CAFC: Effect of a stipulated dismissal: Garber v Chicago Mercantile Exchange and the Chicago Board of Trade (Patently-O)

BPAI speaks on ‘transformation’ prong: Ex Parte Hardwick (12:01 Tuesday)

ITC issues final determination of s 337 violation in investigation based on complaint lodged by Samsung against Sharp concerning LCD devices (ITC 337 Law Blog)

ITC decides not to review enforcement initial determination that respondents Ninestar Technology, Town Sky, Mipo, Ribbon Tree and Apex violated Commission orders issued in investigation concerning ink cartridges (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

GBS Development – Motion to dismiss or transfer for improper or inconvenient venue denied: GBS Development, Inc v West (EDTexweblog.com)

Isuzu – Kruse sues again; accuses Isuzu of infringing diesel engine patents (Green Patent Blog)

Lutron Electronics – Lutron files 337 complaint against Neptun Light regarding light control devices and dimmer switches (ITC 337 Law Blog)

Worldpak International – Motion to transfer venue from Sherman to California denied: Worldpak International, LLC v Diablo Valley Packaging, Inc (EDTexweblog.com)

US Copyright

Judge Posner suggests tighter copyright rules to protect news reporting (Chicago Intellectual Property Law Blog)

US Trade Marks – Decisions

District Court W D Washington: Allegation of wilful infringement enough for attorney’s fees award: Chevron USA, Inc v In N Out Minimart on Broadway, Inc (Seattle Trademark Lawyer)

Federal jury in Missouri return verdict in favour of Just Enterprises in trade mark infringement lawsuit to enforce its 1-800-JUSTICE mark used in connection with legal service referrals (IP Frontline)

8^th Circuit overturns laches decision in CRISTAL trade mark infringement lawsuit: Champagne Louis Roederer v J Garcia Carrion SA et al (Las Vegas Trademark Attorney)

TTAB reverses two refusals of CARPET TO CARPET for reclamation services: In re Columbia Insurance Company (not precedential) (TTABlog)

TTAB: Transfer of common law trade marks under state law: Terra Sul Corp aka Churrascaria Boi Na Brasa v Boi Na Braza, Inc (not precedential) (Property, intangible) (TTABlog)

TTAB: Motorola ‘chirp’ sound unregistrable: Nextel v Motorola (precedential) (Property, intangible)

Would you have appealed from this TTAB trifusal?: In re Peter S Herrick PA (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Mantra Films – GIRLS GONE WILD sues wireless companies over GIRLS GONE MOBILE: Mantra Films, Inc v et al v Oasys Mobile, Inc (Las Vegas Trademark Attorney)

Superdawg – Chicago’s SUPERDAWG restaurant files trade mark infringement suit against NYC’s SUPERDOG: Superdawg Drive-In v Danny Omari dba Superdog (Las Vegas Trademark Attorney)

Venezuela

Venezuelan President threatens to counterfeit Tetra Pak packaging goods to reduce spending and reliance on foreign companies (Afro-IP)

Registrar of Patents and Trade Marks posts comments on IP Day – complains about multinational companies, supports pirates (IP tango)

China, USA and Europe news and comparisons IP Think Tank Podcast 22 June 2009

duncan@duncanbucknell.com (Duncan Bucknell) — Sat, 27 Jun 2009 11:28:00 -0500

Welcome to the IP Think Tank podcast for Monday 22nd June 2009. In this week's call, regular panellists Jeremy Phillips and Duncan Bucknell are joined by Weijiang Si and Hal Wegner to discuss:

The draft patent enforcement and validity principles released for comment in China;
David Kappos's nomination to head the USPTO and the likely impact;
The impact of civil servant appointments in China;
Comparative advertising in Europe and China; and
Potential fallout from the digital Britain.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Stay tuned for an upcoming panel on Bio-similar molecules in the pharmaceutical industry.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu; http://ipkitten.blogspot.com/

Hal Wegner - http://www.foley.com/people/bio.aspx?employeeid=16338

Weijiang Si - http://en.debund.com/website/team-1.html

Moving from 'patents kill' to sensible debate - new article at IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Fri, 26 Jun 2009 11:35:00 -0500

The brand value of IP is currently somewhere between 'patents kill' and a general lack of awareness of what IP actually is. So says Dr. Roya Ghafele in the most recent article to be published at IP Think Tank - 'Make patents not war'. Dr Ghafele is of course a lecturer at the University of Oxford.

And, yes, we're opening our virtual doors to publish (or republish) high quality, research based articles from others. We will collaborate on some of these articles, when appropriate.)

Here are a few interesting excerpts from the article:

'What can be done to calm the situation and to stop the international “IP war”? The crucial element in this exercise is to understand the concept of “incentives”. Both, business and civil society have an “incentive” to move from a stage of war to a constructive, solution driven approach.'

'So far, IP has been largely looked upon from a legal perspective, which comes as no surprise since current educational systems worldwide only train lawyers in IP.'

'A different perspective on IP, one that looks at it as a strategic asset more than a legal framework gives way to new managerial perspectives on intellectual property.'

'It needs political will, business initiative and the concerted effort of both business and the public sector to foster inclusion and knowledge equity rather than further marginalization and discrimination.'

Please do come and add your thoughts to the debate.

(Photo credit: ~jjjohn~)

Make Patents, not War

duncan@duncanbucknell.com (Duncan Bucknell) — Fri, 26 Jun 2009 11:17:00 -0500

By Dr. Roya Ghafele, Lecturer, University of Oxford, Email: roya.ghafele[at]qeh.ox.ac.uk

(Disclaimer: The views expressed in this article are solely those of the author and can not be attributed to the University of Oxford, its colleges, students, faculty or various departments (nor of Duncan Bucknell Company, for that matter)).

Perceptions of Intellectual Property are, to say the least, controversial, as I sought to illustrate in depth in the online draft discussion paper on “Perceptions of Intellectual Property. A Literature Review.1”

The TRIPS Agreement marks the cornerstone in the public view on intellectual property. While prior to TRIPS, IP passed more or less as a technical non-issue primarily of interest to a few experts, the creation of an international treaty on Intellectual Property under the umbrella of the World Trade Organization caused the most heterogeneous group of people to contest the concept of intellectual property rights. The sharp contrast of “pre-WTO” speak on intellectual property, compared to “post-WTO” IP talk can be best illustrated at the difference in international perceptions of the “WIPO” – the World Intellectual Property Organization and the “WTO” – the World Trade Organization. The WTO is a very recent international body that, which at the time of WIPO’s Director General Dr. Arpad Bogsch, was not even international organization, but nothing than a forum (the “GATT”). Clearly, Dr. Bogsch underestimated the impact of the TRIPS agreement at the time when he said, no doubt with a feeling of superiority that certain countries are proposing to accommodate Intellectual Property Rights in a forum that does not even have the status of an international organization.2

Why eventually intellectual property found its space in international trade3, is not yet researched. While some say that intellectual property has intrinsic features that link it to trade , others contest this view and argue that the mere reason why the concept of “strong” intellectual property rights was established on the agenda of trade ministers was that it was probably easier to establish a new international perspective on IP within a forum that was created from scratch, proving in this sense Schumpeter’s ideas of creative destruction as a crucial element of innovation.4 Be it as it is, when the U.S. trade representative suggested in the Uruguay round negotiations to establish intellectual property on the trade agenda most negotiators had no idea what they were actually committing themselves to. Dr. Bogsch and WIPO were more or less bypassed and even though the TRIPS agreement at many instances refers to treaties administered by the international bureau of the WIPO, it still constitutes a piece of work on its own. The TRIPS agreement not only reflects the full architecture of the WTO system, but also allows signatories to the treaty to actually go into litigation.

From the perspective of international business the TRIPS agreement had strongly contributed to resolve major business challenges, yet from a mere legal perspective. The physical infrastructure of doing international business was more or less established through excellent means of transportation and the internet, which gave space and time a new meaning. Engaging with business partners in the most remote corners of the world became affordable at low cost, in an easy and uncomplicated manner. Opportunities to move from a traditional Fordist production chain to a network economy were established through means of new technology and transportation. No physical obstacles were in the way to leverage low labour and cheap production costs at the international level. Arbitrage or the leverage of different income levels turned out to be a rewarding business model. Operating as networks and abandoning linear value chains offered knowledge intensive companies previously unknown business opportunities. Yet, the legal infrastructure was and probably still is not at the same height as the technological infrastructure provided for international business.

What TRIPS did, was to resolve at least some of these short comings by providing a minimal legal international context for intellectual property. However and here lies the dilemma of any exercise of branding IP, what was perceived to provide enabling opportunities for international business, was equally perceived as strongly harming human development. Civil society’s outrage against the TRIPS agreement was unheard of before. Human rights advocates, feminists, peace activists, representatives of various churches, health advocates, in a word, the most various interest groups protested against intellectual property. While heterogeneous by background, the Globalization movement not only had the liberalization of international trade as its target, but also intellectual property rights. Best summarized in the slogan “IP kills”, the concept of proprietary knowledge got interwoven with issues such as “gender discrimination”, “famine”, “health gaps” and the further increase of gaps prevailing at the international level. To put it shortly and summarize the comprehensive report on “Perceptions of IP”, intellectual property rights were very much seen as yet another weapon and powerful tool protecting the wealth of those who “have” from those who don’t.5 The debate reached a level of polarization and aggression that it justified Clausewitz view that “war is just politics by other means. ”6 It may however also justify, but no scientific prove of the argument is possible, that the debate was and still is strongly gendered and male dominated.

It is crucial to understand this historical context when seeking to “brand” intellectual property. Currently, the brand value of IP is somewhere between “patent kills” and a general lack of awareness what IP actually is, a left over from the Pre-TRIPS time.

With that in mind, one question arises: What can be done to calm the situation and to stop the international “IP war”? The crucial element in this exercise is to understand the concept of “incentives”. Both, business and civil society have an “incentive” to move from a stage of war to a constructive, solution driven approach. For business the increasingly negative publicity that IP is giving it, may actually translate into serious bottom line profit losses due to loss of reputation and image. For civil society again, the stage of continuous critique can not be maintained either. At some point in time donors do want to see solutions and constructive output. Thus, there are good chances to move from a “win” to a “win-win” situation.7

So far, IP has been largely looked upon from a legal perspective, which comes as no surprise since current educational systems worldwide only train lawyers in IP. Economists, political scientists, sociologists, historians or even engineers know most of the times very little about intellectual property.8 A pity, since it is exactly this multidisciplinary perspective that is needed to turn IP into a tool for economic, social and cultural prosperity and leverage it as a means for wealth and welfare creation. A different perspective on IP, one that looks at it as a strategic asset more than a legal framework gives way to new managerial perspectives on intellectual property. While so far, the readjustment of the IP system has primarily been looked upon through the perspective of compulsory licensing (again a very legal approach to IP management), few have taken a more pragmatic approach and asked what types of management choices may work towards obtaining inclusion and an equitable distribution of research and development findings within the existing intellectual property framework.

Public interest IP management seeks to offer strategic choices on how to reconcile the existing contradiction between the exercise of exclusive rights and the universal right to equitable access. Innovation functions as a public private partnership; according to current research by Ashley Stevens at Boston University the vast majority of FDA (Food and Drug Administration) approved pharmaceuticals were developed with public sector support. While the public sector is asked to thoroughly negotiate agreements in the public interest, business can explore opportunities to leverage IP for the wider public interest. Public interest IP management comprises different approaches to ownership and access of IP and makes use of market and non-market incentives. It includes defensive publication, the pre-emptive creation of a public domain (including waiving of IP rights) and a deliberate deployment of legal exclusions. The application of the right to exclude can further be used to safeguard the open quality of a shared innovative domain.9 A good example is “humanitarian licensing” where IP is being licensed to market participants on the condition of several tied in arrangements. In this case the licensor tends to reserve the right to license the technology also out to developing country producers or allow for parallel trading. It is further common practice to assure in licensing agreements “public interest” clauses that aim not only to assure commercial, but also public welfare gains. In practice, “humanitarian licensing” works if regulatory frameworks are in place clarifying ownership over IP developed in the public domain as well as sufficient practice in managing IP. A comprehensive, strategic IP approach furthermore represents the public interest as early as the selection phase of a research topic and plays a decisive role in the interaction between the public and the private sector. An ex-ante IP strategy is different from an ex-post intervention. The latter are only public interest remedies treating IP as a commodity, where negotiation is only possible over price.10

Yet, public interest intellectual property management faces several limitations:
It can not refer to successful private sector IP management approaches, which are hampered by inadequate accounting and financial standards, as well as by a general lack of awareness of the pro-active IP management, as compared to the defensive focus on IP protection. In addition, it is limited by the wider constraints associated with public sector management, such as difficulties with the impact assessment of public policies or the provision of incentives within a public sector context.

While Sun Tzu says that one needs to understand who one is fighting, the greatest strategist in time, also says that the best war is the war that can be avoided.11 In this sense, the management of intellectual property in the public interest, the illustration of the enabling opportunities that can be provided by intellectual property constitutes a clear way to move from the battle field to constructive solutions. Intellectual Property does have the potential to provide enabling opportunities for all the Peoples of the world. Yet, this will not happen by itself. It needs political will, business initiative and the concerted effort of both business and the public sector to foster inclusion and knowledge equity rather than further marginalization and discrimination.

References
1 Roya Ghafele: Perceptions of Intellectual Property: A Literature Review, free for download at http://www.ip-institute.org.uk/pdfs/Perceptions of IP.pdf
2 Michael P. Ryan: Knowledge Diplomacy: Global Competition and the Politics of Intellectual Property. Brookings Institution Press, New York 1998
3 Keith E. Maskus: Intellectual Property rights in the Global Economy. Institute for International Economics, Washington D.C. 2000
4 Joseph Stiglitz: How to fix the IP imbalance: Too much IP Protection is Bad for the Economy.” Managing Intellectual Property October 28 2004, p. 35-39
5 Roya Ghafele: Perceptions of Intellectual Property: A Literature Review. ibid
6 Carl von Clausewitz: On War. Wordsworth. Hertfordshire 1997
7 Caroline Kamerbeek. Director of Communication. Philips IP. Intervention at the IPI meeting on IP Branding, 2.12.2008
8 Roya Ghafele and Alexander Wurzer: The Clash of Mindsets. Intellectual Asset Management Nr1/2006
9 Antony Taubman: Public–Private Management of Intellectual Property for Public Health Outcomes in the Developing World: The Lessons of Access Conditions in Research and Development Agreements. Initiative on Public Private Partherships for Health. Global Forum Health. Geneva 2004
10 Antony Taubman: Public–Private Management of Intellectual Property for Public Health Outcomes in the Developing World: The Lessons of Access Conditions in Research and Development Agreements. Initiative on Public Private Partherships for Health. Global Forum Health. Geneva 2004
11 Sun Tzu: The Art of War/ Die Kunst des Krieges. Knaur. Muenchen 2001

(Photo credits: 'ip' by Paul Mutant and 'Miniature Warriors' by Susan Renee)

Online Global Week in Review 26 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Fri, 26 Jun 2009 02:00:00 -0500

Here is IP Think Tank’s weekly selection of top Online intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

Pirate Party enters German parliament (TorrentFreak) (Ars Technica) (IPKat) (1709 Copyright Blog)

US: Jammie Thomas-Rasset ordered to pay $1.92 million damages for illegally downloading 24 songs; Richard Marx, Moby speak out against RIAA (ISinIP) (Excess Copyright) (1709 Copyright Blog) (Ars Technica) (Ars Technica) (Ars Technica) (Internet Cases) (EFF) (TorrentFreak) (Ars Technica) (Ars Technica) (Ars Technica) (TorrentFreak) (The IP Factor) (Managing Intellectual Property)

Global

Global - General

Europe’s ever changing landscape Pirate Party, Loi Hadopi and generic drug seizures IP Think Tank podcast 15 June 2009 (IP Think Tank)

Software: precautions against supplier insolvency (IP finance)

Global - Copyright

World Copyright Summit – Celebration of 3 strikes and the rights industry (Public Knowledge)

Global - Trade Marks

EU admits ICANN setup has worked well, wants change anyway (Ars Technica)

ICANN and the internet big bang (IP Osgoode)

Hesitant rejection of a domain name complaint by WIPO: D2009-518 France Printemps v Mr Chris Carter (Class 46)

Social media changing the rules of brand engagement (IP Marketing Blog)

Global - Patents

World Wide Web Consortium investigating Apple’s patent covering method for automatically updating software programs (Tangible IP)

Canada

Canadian Press on open source software in the Canadian government (Michael Geist)

More myths about myths about file sharing – Richard Pfohol of CRIA takes on Prof Michael Geist on file sharing myths (Excess Copyright)

Reflections on the Digital Economy conference (Michael Geist) (Excess Copyright)

China

Shanghai High People’s Court upholds sentences for gang members in international software counterfeiting scheme (S&F)

Will the ZTE brand and name find its field of dreams outside China? (IP finance)

Europe

European countries amp up war on piracy (TorrentFreak)

France

Sarkozy says he will ‘go all the way’ with 3 strikes (TorrentFreak)

Germany

Pirate Party enters German parliament (TorrentFreak) (Ars Technica) (IPKat) (1709 Copyright Blog)

Regional Court in Hamburg orders file-hosting service, Rapidshare, to proactively filter content (TorrentFreak) (Ars Technica)

Greece

Public consultation for a new domain name regulation in Greece (Class 46)

India

Google India: We have zero control over blogger content (Ars Technica)

Ireland

Following inconclusive action against Eircom, music industry sues ISPs UPC and BT (1709 Copyright Blog) (TorrentFreak) (Ars Technica)

Japan

Copyright laws amended to allow search engines to store copies, make it easier to use orphan works and crack down on illegal downloaders (Managing Intellectual Property)

Netherlands

Pirate Bay founders summoned to court via Twitter (TorrentFreak)

Norway

ISP Telenor sued by IFPI over refusal to disable customer access to Pirate Bay (TorrentFreak)

Anti-piracy lawyers lose licence to track pirates (TorrentFreak)

Spain

ISPs end anti-piracy talks with entertainment industry (TorrentFreak) (TorrentFreak)

Sweden

Collecting IP addresses illegal in Sweden (TorrentFreak)

Uganda

Microsoft pursues copyright infringers in Uganda (Afro-IP)

United Kingdom

IPO press release ‘Tougher penalties for online copyright infringement proposed as part of Digital Britain package’ (1709 Copyright Blog)

ISPs: How long before the little guys kick sand in their faces? (1709 Copyright Blog)

Open access for University College of London research product (1709 Copyright Blog)

Research by Bournemouth University and FremantleMedia ‘The exploitation of television formats: intellectual property and non-law based strategies (1709 Copyright Blog)

Virgin Media, Universal Music team up to offer UK unlimited music (Intellectual Property Watch) (IP Osgoode)

SCRIPT establishes IP Foresight Forum to discuss IP and media law and policy development (IPKat)

United States

US General

47 USC 230 and consumer protection talk notes (Technology & Marketing Law Blog)

The conundrum of internet filtering (Public Knowledge)

Series on ALI software contract principles: Clarify rules on implied and express warranties in software contracts (Silicon Valley IP Licensing Law Blog)

US General – Decisions

9^th Circuit issues amended opinion in Barnes v Yahoo concerning 47 USC 230 safe harbour (Technology & Marketing Law Blog)

Bankruptcy judge lifts stay in Apple suit against Psystar over Mac clones (Ars Technica)

US General – Lawsuits and strategic steps

Microsoft – Microsoft action against click fraud perpetrators: Microsoft Corp v Lam et al (IP Osgoode)

US Patents – Decisions

USPTO revokes Hoshiko’s patent on internet subdomains, another victory for EFF’s patent busting project (Intellectual Property Watch) (Ars Technica)

US Copyright

Harvard working paper ‘File Sharing and Copyright’ finds weaker copyright protection has benefited society (Michael Geist) (Ars Technica)

Gathering of experts in New York call for freer video culture (Intellectual Property Watch)

US Copyright – Decisions

Jammie Thomas-Rasset ordered to pay $1.92 million damages for illegally downloading 24 songs; Richard Marx, Moby speak out against RIAA (ISinIP) (Excess Copyright) (1709 Copyright Blog) (Ars Technica) (Ars Technica) (Ars Technica) (Internet Cases) (EFF) (TorrentFreak) (Ars Technica) (Ars Technica) (Ars Technica) (TorrentFreak) (The IP Factor) (Managing Intellectual Property)

US Copyright – Lawsuits and strategic steps

Apple – Puzzlemaster sues Apple over allegedly infringing puzzle game on iPhone (The Trademark Blog)

ASCAP – ASCAP copyright double speak in suit against AT&T for ringtone ‘performance’ (EFF) (Ars Technica)

RIAA – Middle-aged New Hampshire woman accused of downloading ‘Jigga My Nigga’ settles with recording industry – case highlights MediaSentry’s issues (Ars Technica)

RIAA – Tenenbaum P2P circus: judge’s ‘indulgence is at an end’ (Ars Technica)

US Trademarks

Google Adwords update – round up of current litigation: FPX v Google; Soaring Helmet v Bill Me; John Beck Amazing Profits v Google; Stratton Faxon v Google; Rescuecom v Google (ipblog.ca)

Let's be practical about communicating IP value

duncan@duncanbucknell.com (Duncan Bucknell) — Thu, 25 Jun 2009 20:52:00 -0500

There's some interesting buzz going around about our recent post 'Forget patents and focus on communicating IP value'.

The discussion in the comments section of the post so far has been particularly interesting and as part of it I asked for suggestions about the next, practical step to take to move things in the right direction.

Bruce Berman wrote in with some great suggestions, here is an excerpt from his email:

"The first steps are for IP holders to acknowledge and answer some basic questions:

Who are your IP stakeholders? (Most companies have at least seven key audiences.)
What do stakeholders already know about IP? Is it accurate?
How can IP holders help them to be better-informed?
What about your IP assets or strategy do audiences need to know? Why?
When and how should the information be conveyed?
How does your business define patent “performance”?
Whom at your company should be point-person(s) for communicating IP strategy, results and value?
How can they be supported?
What can outside advisors bring to the table?
To what extent should c-level and other executives be involved in IP reporting?
If IP holders, especially publicly held ones, do not provide some form of IA disclosure, what is the likelihood they will be forced to by the SEC, FASB or other regulatory body?

Smart IP holders should view increased transparency as an opportunity; not as a burden. It lowers risk factors rather than increases them."

So what do you think. What would you add?

(Photo credit: ucumari)

Feeding the sharks or fuelling the economy?

duncan@duncanbucknell.com (Duncan Bucknell) — Thu, 25 Jun 2009 14:28:00 -0500

There’s been a lot of rubbish written and spoken about the ‘patent troll’ threat to the world. Truth be known, anyone who invents truly patentable subject matter should have the right to obtain the fruits of their labours. What’s so unfair about that?

Most innovation is done in the crowd, not in large companies. This is clear cut. An example of this is the increasing trend towards outsourcing innovation undertaken by large companies – many pharmaceutical companies now outsource 50% or more of their discovery and development work. (Or, more accurately, select from amongst an ever burgeoning pool of in-licensing opportunities.)

The mere fact that an entity does not (cannot?) produce and market a product themselves should not count against them.

And sure, it is incredibly difficult for companies in certain industries to secure freedom to operate for products which could conceivably infringe patents covering hundreds of components. The mere difficulty of this exercise is not enough, in my view. This is clearly an issue that can be substantially addressed by better technology and is indeed being addressed by creative business models such as those of AST and RPX.

We should analyse the factors which have created the underlying causes and seek to address them (actually we already know what they are...), if we want to turn the ‘troll problem’ into the NPE opportunity that it should be. And it really is an opportunity for all – access to innovation for large companies and a chance to monetize inventions for those unable to practice their inventions commercially.

Perhaps we should focus less on trying to bend the system (eg. patent reform) to add yet another ineffective quick fix on an already complex system, and instead look for more elegant and longer term opportunities.

(photo credit: Michael Aston)

Forget patents and focus on communicating value

duncan@duncanbucknell.com (Duncan Bucknell) — Tue, 23 Jun 2009 22:43:00 -0500

Patents and trademarks are pretty useless in the end if you can't get the market, your CEO or senior executives to buy in to the value of intellectual property to the enterprise. This was a major theme from the Intellectual Property Business Congress 2009 (IPBC 2009) which finished up today.

A (the?) pioneer in communication strategy in the intellectual property space is Bruce Berman - the IP ecosystem would do well to listen to him. In fact, they are - you'll see many of the things he has been saying for years being repeated at conferences like IPBC. So hat tip to Bruce, for all of the ground work he has done.

Communicating value sounds easy, doesn't it? It's not.

You first have to figure out what value is (and it may have nothing to do with money). This is tremendously context specific.

Perhaps the intellectual property evangelists would do well to learn from change management and communication specialists to succeed in the quest for wider understanding and therefore, one would assume wider utilization of IP to leverage business strategy.

What do you think?

(Photo credit: katiebate)

Pharma & Biotech Global Week in Review 24 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Tue, 23 Jun 2009 11:46:00 -0500

Here is IP Think Tank’s weekly selection of top Pharma & Biotech intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

Eloxatin (Oxaliplatin) – US: District Court New Jersey grants summary judgment of non-infringement in favour of Hospira, Teva and others concerning patent relating to Sanofi’s Eloxatin: Sanofi-Aventis v Sandoz (SmartBrief) (The IP Factor) (GenericsWeb) (Patents4Life)

General

Europe’s ever changing landscape Pirate Party, Loi Hadopi and generic drug seizures IP Think Tank podcast 15 June 2009 (IP Think Tank)

WCO considers new ‘dialogue mechanism’ on counterfeiting, explicit focus on public health (Intellectual Property Watch)

Talks on traditional knowledge and access, benefit-sharing – Hyderabad, 16-19 June (Intellectual Property Watch)

Canada: Utility under Canadian patent law and the doctrine of sound prediction: Apotex v Wellcome Foundation (Patent Docs)

EU: Adopted codified version of Council Regulation 1768/92 concerning SPCs now published (The SPC Blog)

UN Special Rapporteur: IP in health helping those with most means, less need (Intellectual Property Watch)

US: Gene patenting debate: UCLA v USPTO (IP Watchdog) (Inventive Step) (IP Watchdog)

US: History of gene patents (Part 1 – IP Watchdog)

US: Biotechnology, biologistics and biobusiness in Kentucky (Patent Baristas)

US: Future drug sales predictions highlight importance of follow-on biologics legislation (Patent Docs)

US: BIO to USA Today: Patents promote innovation (PatentlyBIOtech)

US: AEI believes advantages of longer data exclusivity period outweigh disadvantages (Patent Docs)

Products

Cipro (Ciprofloxacin) – US: Supreme Court rejects lawsuit challenging Bayer’s deal with Barr to delay generic Cipro (GenericsWeb)

Fosamax (Alendronate) – Canada: Federal Court of Appeal’s decision interpreting s 8 Patented Medicines (Notice of Compliance) Regulations leads to mixed results: Merck Frosst Canada Ltd and Merck Frosst Canada & Co v Apotex Inc (IP Osgoode)

Lipitor (Atorvastatin) – US: Pfizer files patent suits against Mylan over generic Lipitor ANDA (Patent Docs)

Lyrica (Pregabalin) – US: Pfizer adds second patent to Lyrica infringement suit against Sun Pharma (Patent Docs) (GenericsWeb)

Nuvaring (Etonogestrel, Ethinyloestradiol) – Australia: Patent Office allows patent term extension for a drug delivery system for two or more active substances: N V Organon (The SPC Blog)

OxyContin (Oxycodone) – US: KV, Purdue settle OxyContin litigation (Patent Docs)

Paxil (Paroxetine) – Israel Patent Office voids SmithKline Beecham patent for metastable polymorph (The IP Factor)

Roundup Ready – US: DuPont countersues Monsanto in dispute over Roundup Ready technology (Patent Docs)

Solodyn (Minocyclene) – US: Medicis files infringement suit against Ranbaxy over Solodyn patents (Patent Docs)

Tri-Cylcen Lo (Norestimate, Ethinyl estradiol) – US: Ortho-McNeil-Janssen files patent infringement suit against Sandoz in response to generic Tri-Cyclen Lo ANDA (Patent Docs) (GenericsWeb)

Tylenol (Acetominophen) – US: Public Patent Foundation files suit against McNeil-PPC alleging false marking on Tylenol products (Patent Docs)

Xyzal (Levoctirizine) – US: Sepracor files patent infringement suit against Synthon over generic Xyzal ANDA (Patent Docs)

General Global Week in Review 22 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Mon, 22 Jun 2009 00:00:00 -0500

Here is IP Think Tank’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

David Kappos next USPTO director (Peter Zura's 271 Patent Blog) (Patently-O) (Anticipate This!) (IP Watchdog) (Chicago Intellectual Property Law Blog) (Managing Intellectual Property) (Intellectual Property Watch) (BLOG@IP::JUR) (IAM) (Public Knowledge) (Patent Baristas) (PatentBIOtech) (Patent Docs)

Member states endorse senior WIPO appointments (WIPO) (Afro-IP) (Managing Intellectual Property) (Intellectual Property Watch) (IAM)

Ocean Tomo sells patent deal business for $10 million (Managing Intellectual Property) (IAM) (Intellectual Property Watch)

Global

Global - General

Europe’s ever changing landscape Pirate Party, Loi Hadopi and generic drug seizures IP Think Tank podcast 15 June 2009 (IP Think Tank)

IP informatics resource that will astound (IP Think Tank)

Member states endorse senior WIPO appointments (WIPO) (Afro-IP) (Managing Intellectual Property) (Intellectual Property Watch) (IAM)

WIPO works out plans for staff separations, financial disclosure (Intellectual Property Watch)

OECD report ‘Policy Responses to the Economic Crisis: Investing in Innovation for Long-Term Growth’: ‘creative destruction’, innovation focus needed in economic crisis (Intellectual Property Watch)

Drafting licensing agreements: Will the licensor warrant non-infringement? (IP finance)

International bank of IP: a proposal for knowledge liberalisation (IPKat)

How to fight fakes in a down economy (Managing Intellectual Property)

Global - Patents

Nations work to make IP systems combat climate change (Intellectual Property Watch)

When prioritising IP, look to green tech (Technology Transfer Tactics)

Global - Copyright

What is the (copy)right way to maximise IP rights upon insolvency? (IP finance)

Argentina

Federal Civil and Commercial Court of Appeals of Buenos Aires orders Cueros Del Norte to stop using Puma’s ‘inverted pipe’ design for sports shoes (IP tango)

Australia

Virgin unsuccessful in opposition to ALL DAY, EVERY DAY, LOW registration by Qantas (Australian Trade Marks Law Blog)

Speeding up procedure: IP Australia announces additional reforms (Mallesons Stephen Jaques)

Australia’s innovation patent system provides real value (Patent Baristas) (Patent Baristas)

Canada

Canada confirms ACTA participation (Michael Geist)

Conference Board of Canada issues statement on IP reports (Michael Geist) (Michael Geist) (Excess Copyright)

Jamie Boyle on Obama administration opposition to rights for the blind etc (Excess Copyright)

China

Which comes first, the China trademark or the China OEM contract? (China Law Blog)

Europe

ECJ issues preliminary ruling in L’Oreal/Bellure regarding whether imitation perfumes were protected as permissible comparative advertising (Class 46) (IPKat)

CFI: Proof of trade mark use: Harwin International LLC v OHIM, Cuadrado SA (IPKat)

CFI: Last minute reprieve for passing off: Last Minute Network v OHIM-Last Minute Tour (IPKat)

CFI dismisses Korsch’s appeal against refusal to grant CTM for ‘PharmaResearch’ due to lack of distinctive character and descriptiveness: Korsch AG v OHIM (Class 46)

Board of Appeal of OHIM: JUST SKIN rejected as descriptive and lacking of distinctiveness for cosmetics (Class 46)

EU Council still not disclosing ECJ referral for unified patent litigation system (BLOG@IP::JUR)

Who might be the next EPO president? (BLOG@IP::JUR)

New Madrid fees for applications designating the EU to become effective 12 August (Class 46)

Latest European appellations registered: Polish TSG Olej rydzowy for oils; Italian PGI Abbacchio Romano for meat (Class 46)

India

Patents, public interest and pricing: Madras High Court decision in M C Jayasingh v Mishra Dhatu Nigam Ltd & Ors (Spicy IP)

Ramkumar patent case: New Delhi Customs favours Samsung; Customs order stayed by Madras High Court (Spicy IP) (Spicy IP)

Design v copyright: Need for clear and rational distinction (Spicy IP)

Incentivising the IITs: Firms step up (Spicy IP)

Scrabble and the copyright design interface: a 3D issue? (Spicy IP)

Israel

English version of Israel patent database available (The IP Factor)

Israel Patent Office gears up for filing online (The IP Factor)

Adjudicator of IP rules AMERICAN APPAREL lacks distinguishing features (The IP Factor)

‘Ein Gedi’ not acceptable as a word mark (The IP Factor)

Japan

Japan starts new patent prosecution highways with Austrian Patent Office and IP Office of Singapore (Managing Intellectual Property)

Libya

Libya cuts trade mark filing formalities (Afro-IP)

Nigeria

Piracy threat to Nigerian movie industry (Innovationpartners)

South Africa

SAMRO (South African Music Rights Organisation) image change (Afro-IP)

Television content industry march plays role in SABC resignations however industry still remains unpaid (Afro-IP) (IP finance)

Switzerland

Commercial Court of Aargau finds no likelihood of confusion between trade dress of Knorr’s ‘Grazialle’ soup and Bon Chef’s ‘Grisella’ soup (Class 46)

Thailand

Thailand seeks to toughen IP laws to punish buyers of pirated or fake goods (Intellectual Property Watch)

United Kingdom

EWHC Court of Appeal: Claim construction post-Protocol amendments – no change: Ancon v ACS (PatLit) (IP Frontline) (IPKat)

EWHC Patents Court: When experts change their minds: Edwards Lifesciences AG v Cook Biotech Incorporated (PatLit) (IPKat)

EWHC Patents Court: last remaining claim invalidated as mere discovery: Tate& Lyle Technology Ltd v Roquette Freres (IPKat)

Estate of Adrian Jacobs issues proceedings against Bloomsbury alleging ‘Harry Potter and the Goblet of Fire’ infringes copyright in ‘The Adventures of Willy the Wizard – No 1 Livid Land’ (1709 Copyright Blog)

Working Group of the IP Court Users’ Committee publishes proposals Patent County Court reform (1709 Copyright Blog) (IPKat)

PPL is behind Performance Rights Bill (1709 Copyright Blog)

United States

US General

USPTO news: E-Commerce alert – tips to improve your e-filing effectiveness (Patent Docs)

IP protection in the US fashion industry (IP Osgoode) (IP Osgoode)

US General – Decisions

California Supreme Court reaffirms strong public policy against covenants not to compete: Edwards v Arthur Andersen (Intellectual Property Law Blog)

California Court of Appeals affirms award of $1,641,216 attorneys’ fees and costs to former employees who successfully defended a trade secrets action brought by a former employer: FLIR Systems v Parrish (Intellectual Property Law Blog)

US General – Lawsuits and strategic steps

EFF – EFF and Public Knowledge reluctantly drop lawsuit for information about ACTA (EFF)

US Patent Reform

Patent reform: damages – audio session (Peter Zura's 271 Patent Blog)

US Patents

Patent Office extends comment period regarding deferred examination (Patent Docs)

Analysing joint infringement in patent cases (IP Frontline)

Ocean Tomo sells patent deal business for $10 million (Managing Intellectual Property) (IAM) (Intellectual Property Watch)

House of Representatives back amendment to Foreign Regulations Authorisation Act that establishes US policy opposing any global climate change treaty that would weaken IP rights (Green Patent Blog)

ACT calls on CAFC to rein in big company abuse of patent system (IAM)

Looming crisis at BPAI – appeals backlog increasing dramatically (Inventive Step)

What on earth was the Wall Street Journal thinking? – obvious errors in Crovitz’ article (IAM) (IP Watchdog)

Bilski at the BPAI – What a mess (Part 1 – Peter Zura's 271 Patent Blog)

PPAC meeting sets the stage for patent quality improvements (Peter Zura's 271 Patent Blog)

Did you know... that public interest factors can trump the finding of a violation at the ITC? (ITC 337 Law Blog)

Academic perspectives on issues raised in Bilski case (IP Osgoode)

Star Scientific teaches a valuable lesson to all IP share investors (IAM)

US Patents – Decisions

CAFC: Appealing BPAI rejections to the Federal Circuit: In re Baggett (nonprecedential) (Patently-O)

CAFC: Preliminary injunctions and obviousness in design patent law: Titan Tire Corp v Case New Holland, Inc (Patently-O)

District Court N D Illinois: Post-filing assignment cannot create standing: MacLean-Fogg Co v Edge Composites LLC (Chicago Intellectual Property Law Blog)

ITC issues final determination of s 337 violation by MEMS Technology Berhad in relation to silicon microphone packages in investigation responding to complaint by Knowles Electronics (ITC 337 Law Blog)

ITC: Initial determination of s 337 violation issued in investigation of Samsung concerning LCD modules (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Fluke Products – Fluke files declaratory judgment action against Aines Manufacturing in relation to modular telephone plugs (Washington State Patent Law Blog)

Red Bull – ITC launches investigation into import and distribution of energy drinks by Chicago Import, Lamont, India Imports, Washington Food and Supply, Vending Plus and Baltimore Beverage Co, following complaint from Red Bull (ITC 337 Law Blog)

UNeMed – ITC institutes investigation regarding products containing creatine ethyl ester in response to complaint lodged by UNeMed against Bodyonics, Engineered Sports Technology, Proviant, NRG-X and San Corporation (ITC 337 Law Blog)

Victoria’s Secret – Ms Heather Knox accuses Victoria’s Secret’s ‘Bo Fit Bra’ of infringing her patent for ‘multi-layer uplift bra’ (The IP Factor)

US Copyright – Lawsuits and strategic steps

Omega – Public Knowledge asks Supreme Court to prevent manufacturers from using copyright to restrict consumer choice of products: Costco Wholesale v Omega (Public Knowledge) (Public Knowledge)

Salinger, J D – Publication of unauthorised sequel to ‘Catcher in the Rye’ temporarily blocked while District Judge considers whether the sequel qualifies as ‘fair use’ (IPKat)

US Trademarks

TTAB’s accelerated case resolution procedures probably should be required (Seattle Trademark Lawyer)

How sound is your sound mark knowledge? (TTABlog)

US Trade Marks – Decisions

District Court N D Illinois: Colour trademark infringement is a question of fact: WMH Tool Group Inc v Woodstock International Inc (Chicago Intellectual Property Law Blog)

9^th Circuit amends opinion on tribal court jurisdiction in trademark case: Philip Morris USA v King Mountain Tobacco (Seattle Trademark Lawyer)

TTAB precedential no 23: TTAB refuses to hear belated fraud claim, finding it not tried by consent: Morgan Creek Productions, Inc v Foria International, Inc (TTABlog)

TTAB precedential no 24: TTAB finds another Motorola ‘chirp’ sound unregistrable: Nextel Communications, Inc v Motorola, Inc (precedential) (TTABlog)

TTAB: Fame of Gibson Guitar’s ‘Dove Wing Peg Head’ design brings TTAB 2(d) victory: Gibson Guitar Corp v Concordia Investment Partners (not precedential) (TTABlog)

TTAB affirms rejection of SOU filed by assignor after assignment: In re PMSI, Inc (not precedential) (TTABlog)

TTAB says DUNES on slot machines not a proper specimen for casino services: In re Bellagio, LLC (not precedential) (TTABlog) (Las Vegas Trademark Attorney)

US Trade Marks – Lawsuits and strategic steps

Wham-O – Manley Toys seeks declaratory judgment that ‘Boogie Board’ is generic for body boards (Las Vegas Trademark Attorney)

IP informatics resource that will astound

duncan@duncanbucknell.com (Duncan Bucknell) — Thu, 18 Jun 2009 21:54:00 -0500

Who cares about intellectual property informatics? You should. Forensics are a critical element to any successful IP Strategy.

With that in mind, intellogist.com is definitely a site to spend some time on. I've recently become aware of it and I think it is fantastic. It has separate sections for:

reports on patent an dnon patent search systems;
an interactive map showing geographical coverage of leading patent databases;
a tool to easily compare patent information and search databases;
a section on best practices in prior art searching; and
an enormous prior art resource finder.

Hat Tip to Landon IP for creating this and making it freely available.

Online Global Week in Review 19 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Thu, 18 Jun 2009 20:00:00 -0500

Here is IP Think Tank’s weekly selection of top Online intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

Act quickly to prevent use of your trademarks on Facebook (Canadian Trademark Blog) (Mallesons Stephen Jaques) (The Prior Art) (Chicago Intellectual Property Law Blog) (IP Spotlight) (Intellectual Property Watch) (Intellectual Property Law Blog) (China Blawg) (Australian Trade Marks Law Blog) (IP Osgoode) (Managing Intellectual Property)

Final ‘Digital Britain’ report released (Excess Copyright) (1709 Copyright Blog) (IPKat) (Ars Technica) (TorrentFreak) (1709 Copyright Blog)

Global

Global - Copyright

World Copyright Summit – how do we survive in a digital world? (Ars Technica)

CC case studies: What are the lastest? (Creative Commons)

Global - Trade Marks

Global - Patents

New CDMA2000 patent pool launched (IP finance)

Australia

Federal Court orders ISP iiNet to hand over records of pirate customers to AFACT (TorrentFreak)

Canada

PETA launches new ‘spoof’ website in effort to convince VANOC that it should help in campaign to end Canadian seal hunt (Canadian Trademark Blog)

Update on business method patents in the US and Canada: Bilski; Amazon’s ‘one-click’ patent (ipblog.ca)

In search of a Canadian digital action plan (Michael Geist)

Bell kills video store creating new round of DRM victims (Michael Geist)

China

Race to China’s 3G mobile market, trademark dispute gives iPhone competitors a leg up (China Blawg)

Does China’s Green Dam (censorship software) include pirated code? (IP Dragon)

France

Constitutional Council rules 3-strikes law unconstitutional; French government says it plans to go ahead with 3-strikes law (Ars Technica) (Intellectual Property Watch) (IAM) (Intellectual Property Watch) (IP Osgoode)

Court orders P2P new site Numerama to dishonour convicted pirates (TorrentFreak)

Italy

Tribunale Ordinario di Roma rules IP address alone insufficient to identify pirate (TorrentFreak)

Sweden

Media misreports on biased Pirate Bay judge (TorrentFreak)

Pirate Bay judge judged fair to judge (1709 Copyright Blog)

Clone Pirate Bay site sells anti-Pirate Bay t-shirts (TorrentFreak)

Interview with Pirate Party leader: ‘these are crucial freedoms’ (Datamation)

United Kingdom

New music service for Virgin Media subscribers complete with anti-piracy noise (1709 Copyright Blog) (TorrentFreak)

Final ‘Digital Britain’ report released (Excess Copyright) (1709 Copyright Blog) (IPKat) (Ars Technica) (TorrentFreak) (1709 Copyright Blog)

Interview with UK Music boss Fergal Sharkey – clues on music industries’ hopes for future cooperation with government and ISPs (1709 Copyright Blog)

Metropolitan Police uncover money laundering activity involving buying own sound recordings from iTunes and Amazon (1709 Copyright Blog)

United States

US General – Lawsuits and strategic steps

EFF launches TOSback, tool for tracking terms of service agreements (IP Osgoode)

US Patents

Chuck Connell on software patentability (IP Watchdog)

Patently challenging road for Amazon (Washington State Patent Law Blog)

Update on business method patents in the US and Canada: Bilski; Amazon’s ‘one-click’ patent (ipblog.ca) (IPKat)

US Patents – Decisions

USPTO to revoke Hoshiko’s internet subdomains patent in response to EFF’s Patent Busting Project campaign (EFF)

US Patents – Lawsuits and strategic steps

FotoMedia – Photo-sharing patent suit threatens dream of immigrant founder of Fotki.com (The Prior Art)

US Copyright – Lawsuits and strategic steps

Facebook – Facebook allowed to pursue copyright claims against service which ‘scraped’ Facebook pages in violation of terms of use (IP Law Observer)

Google – Google Book Search settlement: Foster competition, escrow the scans (EFF)

Grazie – Smith family discover their photo which they had uploaded onto a blog is used in advertising by Czech supermarket Grazie (1709 Copyright Blog)

RIAA – Thomas judge bars fair use defense, oks MediaSentry evidence; retrial begins; Sony lawyer thinks $150K damages per song appropriate (Ars Technica) (Ars Technica) (Ars Technica) (Ars Technica) (Ars Technica) (Ars Technica)

RIAA – Judge dismisses ‘abuse of process’ claim in Tenenbaum case (Intellectual Property Directions)

RIAA – The unbearable pointlessness of the fight: Tenenbaum and Thomas cases (ISinIP)

US Domain Names

California Court of Appeals: Domain name not tangible property that could satisfy judgment: Palacio del Mar Homeowners Assn., Inc. v. McMahon (Internet Cases)

US Trade Marks – Lawsuits and strategic steps

Google – Google sued again for trade mark infringement in relation to AdWords program: Soaring Helmet v Leatherup.com (Technology & Marketing Law Blog)

Psystar – Psystar owes Apple $75,000 while Apple moves to lift stay in dispute over unauthorised Mac clones (Ars Technica)

Europe's ever changing landscape Pirate Party, Loi Hadopi and generic drug seizures IP Think Tank Podcast 15 June 2009

duncan@duncanbucknell.com (Duncan Bucknell) — Wed, 17 Jun 2009 19:23:00 -0500

Welcome to the IP Think Tank podcast for Monday 15th June 2009. In this week's call, regular panellists Jeremy Phillips and Duncan Bucknell discuss:

The rise and rise of the Pirate Party in Europe and future implications;
The demise of Loi Hadopi (France's 3 strikes law); and
Seizure of generic drugs transiting through Europe.

We hope you enjoy this week’s show, and as always, we look forward to your comments and feedback.

Stay tuned for popular guests Hal Wegner and Weijang Si on next week’s show.

Links:

People

Jeremy Phillips – http://www.jeremyphillips.eu; http://ipkitten.blogspot.com/

Pharma & Biotech Global Week in Review 17 June 09 from IP Think Tank

duncan@duncanbucknell.com (Duncan Bucknell) — Wed, 17 Jun 2009 05:02:00 -0500

Here is IP Think Tank’s weekly selection of top Pharma & Biotech intellectual property news breaking in the blogosphere and internet.

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Highlights this week included:

US: Gene patenting debate continues: UCLA v USPTO (Patent Docs) (Patent Docs) (PatentlyBIOtech) (Patent Docs) (IP Watchdog)

US: FTC issues highly anticipated report on follow-on biologics; report concludes that special legislative exclusivity incentives are largely unwarranted for innovators and generics (FDA Law Blog) (Patent Docs) (Patent Docs)

Lexapro (Escitalopram) – Australia: Full Federal Court confirms enantiomers patentable for 20 year term: H Lundbeck A/S & Anor v Alphapharm Pty Ltd (Mallesons Stephen Jaques)

Levaquin (Levoflaxacin) – US: CAFC: $1,000,000 in translation costs awarded to prevailing party: Ortho-McNeil Pharmaceutical v Mylan (Patently-O) (Patent Docs) (PatLit) (Patent Baristas)

General

Generic drug delay called ‘systemic’ problem at TRIPS Council (Intellectual Property Watch)

Panel: EU accord threatens India’s status as top supplier of generic medicines; World Customs body scales back IP enforcement (Intellectual Property Watch)

GAVI, Gates deploy industry-favoured incentive for vaccines to poor countries (Intellectual Property Watch)

WIPO takes stock of latest H1N1 developments (WIPO)

How developing nations can cope with swine flu pandemic (Afro-IP)

EU/India: Troubling times for Indian generic companies – seizure of consignment of Amoxicillin on suspicion of infringement of GSK trade mark (Spicy IP)

South Africa: South Africa’s Bayh Dole Regulations (Spicy IP)

US: Gene patenting debate continues: UCLA v USPTO (Patent Docs) (Patent Docs) (PatentlyBIOtech) (Patent Docs) (IP Watchdog)

US: Discussion of Nature/Biotechnology’s summary of Ariad v Lilly (Patents4Life)

US: Biotech/pharma lobbying scoreboard – 1^st Quarter ’09 (Patent Docs)

US: As patent cliff nears, more lawsuits filed (GenericsWeb)

Products

Combigan (Brimonidine/Timolol) – US: Allergan files patent infringement suit against Hi-Tech Pharmacal following ANDA to manufacture generic Combigan (Patent Docs)

Kankea (Ubiquinol) – US: Kaneka files patent infringement suit against Pacific Rainbow (S&F)

Levaquin (Levoflaxacin) – US: CAFC: $1,000,000 in translation costs awarded to prevailing party: Ortho-McNeil Pharmaceutical v Mylan (Patently-O) (Patent Docs) (PatLit) (Patent Baristas)

Lexapro (Escitalopram) – Australia: Full Federal Court confirms enantiomers patentable for 20 year term: H Lundbeck A/S & Anor v Alphapharm Pty Ltd (Mallesons Stephen Jaques)

Mucinex (Guaifenesin) – US: Reckitt Benckiser files patent infringement suit against Watson Lab’s following ANDA to manufacture generic Mucinex (Patent Docs)

Nuvaring (Etonogestrel, Ethinyloestradiol) – Australia: Patent Office decision – patent term extension available if has pharmaceutical characteristics: (Patent Baristas)

Ortho Tri-Cyclen LO (Norgestimate, Ethinyl estradiol) – Sandoz sues Johnson & Johnson over contraceptive pill patent (GenericsWeb)

OxyContin (Oxycodone) – US: KV Pharmaceutical Co, Purdue Pharma settle OxyContin patent dispute (SmartBrief)

Solodyn (Minocycline) – US: Medicis files patent infringement suit against Ranbaxy in response to generic Solodyn ANDA (Patent Docs) (GenericsWeb)