Monday, September 8, 2008 5:00am — STRATEGIC MANAGEMENT OF IP

Employee motivation and IP strategy

Here's a quick example. Say you need to reduce your IP budget but make it more effective. Then, reward team members (even after they have left the organisation) if a patent for which they are an inventor is issued / granted. The long term commitment by the organisation to getting granted patents will help motivate your team to invest the time in more solid patent applications. (On this particular issue, you should obviously also take a serious look at your invention screening process.)

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Friday, September 5, 2008 6:01pm — IP THINKTANK GLOBAL WEEK IN REVIEW

IP Think Tank Global Week in Review - 6 September 2008

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 Thinktank Global week in Review at the Subscribe page: http://duncanbucknell.com/subscribe/

Google Chrome EULA – Controversy over non-exclusive license clause permitting Google to use content submitted through the service: (IP Thinktank), (BriefBlog), (Copyfight), (Copyfight), (The Trademark Blog), (Public Knowledge), (Ars Technica), (IPKat),

US presidential campaigns clash on patent law: (Out-Law), (IAM), (Anything Under the Sun Made by Man), (Law360),

High Court grants IceTV special leave to appeal against the Full Court’s finding that it infringed Nine’s copyright in TV schedule. (IPRoo), (Australian Patent Law), (Managing Intellectual Property),

Intellectual property business models: (IP Thinktank),

Kicking own goal by attempting to restrain (internet) publication: (IP Thinktank),

New Geneva think tank IQsensato features developing nation research on IP: (Intellectual Property Watch),

WIPO releases 2008 World Intellectual Property Report: (IP Menu News),

Bringing the developed world to heel through the use of IP sanctions: (IAM),

Excessive IP protection causes economic gridlock says US law academic Michael Heller: (Out-Law)

CASRIP and RCLIP create Asian-European IP case database: (Spicy IP),

New test developed for detecting faked vintage wines: (Class 46)

Global - Trade Marks / Domain Names / Brands

Trade mark selection and protection basics: (The Counterfeit Blog),

Brand as navigator: Google’s Chrome search engine: (The Trademark Blog),

Discussion of Fairwinds Partners’ article ‘The Power of Internet Gripe Sites: Managing the Destructive Potential of “BrandSucks.com”’: (IPKat)

Appropriate IP system touted for local science-based industry in Islamic nations: (Intellectual Property Watch),

Protection for marketing strategies – is it realistic? (IP finance),

Microsoft and Nikon sign patent cross-licensing agreement covering consumer electronics: (Managing Intellectual Property),

World day against software patents: (Spicy IP), (IPKat),

Patents.com – PatentMonkey redux: (The Patent Librarian’s Notebook),

Women and patents: it is not working at the moment: (IAM)

Experts discuss the role of IP in environmental technology transfer: (Intellectual Propery Watch),

WIPO’s 2008 World Patent Report: (The Patent Librarian’s Notebook)

Software piracy – a strategic business approach: (IP Thinktank),

Google Chrome EULA – Controversy over non-exclusive license clause permitting Google to use content submitted through the service: (IP Thinktank), (BriefBlog), (Copyfight), (Copyfight), (The Trademark Blog), (Public Knowledge), (Ars Technica), (IPKat),

Learning from Microsoft’s hard trade mark lesson: your company needs a multi-faceted IP strategy: (IP Asset Maximizer Blog),

Vivendi games licence income staunches Universal Music Group losses: (IP finance),

‘Comes with music’ and other experiments – Discussion of Irish Independent article on tension underpinning relations between recording industry and DRM based music delivery systems: (IP finance)

Indonesia: Pharma patents and why Indonesia is hoarding bird flu samples: (Techdirt),

India: WHO and Drugs Controller General of India – a sweet-sour relationship: (Spicy IP),

India: India’s section 3(d) conundrum: (Intellectual Property Watch)

Italy: Italian Supplementary Protection Certificates: (The SPC Blog),

Philippines: New legislation to provide greater access to generic medicines: (Rouse & Co International),

US: Monsanto and Pilot Grove Coop reach settlement of patent suit relating to Roundup Ready seed technology: (Philip Brooks), (Patent Docs),

US: BIO discusses legislative accomplishments: (Patent Docs)

Combivir (Lamivudine and Zidovudine) – US: GlaxoSmithKline sues Lupin over ANDA for Combivir: (Law360),

Copaxone (Glatiramer acetate) – US: Teva sues Novartis and Momenta alleging infringement of Copazone patents: (The IP Factor),

Copaxone (Glatiramer acetate) – US: Teva files suit accusing Sandoz and Novartis of using confidential information to prepare generic version of Copaxone: (Law360),

Coreg (Carvedilol) – US: Teva files patent infringement suit against Glenmark over generic Coreg: (Law360),

Detrol (Tolterodine) – US: Pfizer files new suit against Impax following Impa&xrsquo;s amended ANDA: (Law360),

Eloxatin (Oxaliplatin) – US: Sanofi-Aventis sues Apotex over ANDA for Eloxatin: (Law360),

Glivec (Imatinib) – India: Novartis Glivec case: Supreme Court in favour of ‘technical’ Intellectual Property Appellate Board: (Spicy IP),

Lipitor (Atorvastatin) – Denmark: High Court in Copenhagen rules Pfizer’s Lipitor patents valid and would be infringed by Ranbaxy’s planned generic version: (Law360),

Nexium (Esomeprazole) – US: Judge stays two non-infringement lawsuits brought by Dr Reddy’s and Ivax against AstraZeneca pending outcome of AstraZeneca’s earlier Nexium-related infringement cases: (Law360),

Ovcon (Ethinyl Estradiol/ Norethindrone) – US: Meijer, Walgreen and CVS Pharmacy’s antitrust case accusing Barr and Warner Chilcott of making an illegal agreement to delay launch of generic Ovcon to continue: (GenericsWeb),

OxyContin (Oxycodone) – US: Purdue Pharma and Mallinckrodt strike licensing deal for OxyContin: (Law360), (GenericsWeb),

Risperdal (Risperidone) – US: CAFC upholds decision to dismiss Apotex counterclaims of noninfringement in patent fight over Janssen’s Risperidal: (Law360)

Australians, Dr Francis Gurry and Rhonda Steele, make Managing Intellectual Property’s most influential: (IPRoo),

Battle between Rhona Byrne and Drew Heriot over copyright in the film and book ‘The Secret’ continues: (Australia & New Zealand Intellectual Property Law),

Historic agreement between Australia and Korea regarding PCT Internal Search Authority and International Preliminary Examination Authority: (Australian Patent Law), (IP Menu News),

High Court grants IceTV special leave to appeal against the Full Court’s finding that it infringed Nine’s copyright in TV schedule. (Australian Patent Law), (Managing Intellectual Property), (IPRoo),

Australia concludes ASEAN-Australia-New-Zealand Free Trade Agreement (AANZFTA) Negotiations: (Australian Trade Marks Law)

Patents: the need for useful results: Milton Edgar Anderson: (IPRoo)

Bosnia-Herzegovina prepares for closer ties with EU: Interim Agreement on trade and trade-related matters: (Class 46)

Luxury goods sales soar in Brazil, as recession bites old world and US markets: (IP tango)

The battle over internet filtering of allegedly copyright infringing materials: (Michael Geist),

RCMP and Canadian border officials seize millions in luxury goods: (Michael Geist),

The end of Bill C-61: (Michael Geist), (Michael Geist),

Copyright as an election issue?: (Excess Copyright), (Michael Geist),

Opinion and analysis of C-61: (Michael Geist), (Michael Geist), (Michael Geist), (Michael Geist), (Michael Geist), (Michael Geist),

61 reforms to C-61: (Day 50: Education harms – lessons contain limited definition of students – Michael Geist), (Day 51: Education internet exception is unnecessary – Michael Geist), (Day 52: Education internet exception is harmful – Michael Geist), (Day 53: Education internet exception easily avoided – Michael Geist), (Day 54: e-reserve provisions less effective than fair dealing – Michael Geist)

PRC’s Anti-Monopoly Law: well-known trade marks and traditional Chinese brands are part of national security: (IP Dragon),

Wanfang data and the benefits of copyright infringement: (China Hearsay),

Antimonopoly proceedings against Microsoft?: (Chinese Law Prof Blog),

China – The intellectual property rights crisis: (Ezine @rticles)

European Court of Justice to consider trade mark questions in Case C-342/08 Makro Zelfbedieningsgroothandel e.a. & Ors v Deisel Spa and Case C-302/08 Zino Davidoff SA v Bendesfinanzdirektion Sudost: (Class 46),

EPO Boards of Appeal finds that when a fax is transmitted and an ‘OK’ is noted by the sender, this is evidence that the transmission was successful: (IPKat),

Professor Hugenholtz slams European Commission for ignoring evidence on copyright extension: (Techdirt)

Federal Patent Court publishes guidelines on colour trade mark Signal Yellow: (Class 46),

Berlin court delivers setback to Europe’s leading ‘patent troll’ - SanDisk obtains order declaring trade show patent raid seizures illegal: (IAM),

Philips could be next in the firing line after Sisvel’s Berlin patent raids: (IAM), (Techdirt)

Mere filing does not constitute cause of action in passing off: K Narayanan & Anor v S Murali: (Spicy IP),

Yahoo!’s yodel first sound mark granted by India’s trade mark registry: (Managing Intellectual Property),

The public funded R&D Bill: does India need a Bayh Dole – II: (Spicy IP),

Confederation of Indian Industries in association with USPTO road shows on geographical indications rights: (Spicy IP),

Two Indians, N Prasad and K Sibal, in Managing Intellectual Property’s most influential people: (Spicy IP),

Fosters ruling by the Authority for Advanced Rulings and transfer pricing: (Spicy IP),

Meditative experiences on Geographic Indications: (Spicy IP),

Indian Geographic Indications and the need for ‘introspection’: discussion of Financial Express article: (Spicy IP),

Indian Bayh Dole to contain criminal provisions?: (Spicy IP)

Hari Puttar v Harry Potter – misinformed reporting?: (Spicy IP), (The Trademark Blog), (more from Spicy IP)

Omnibus claims no longer valid in Israel: (The IP Factor),

Galillean Vineyard trade mark dispute: (The IP Factor),

Room for only one Black Pearl: Two companies independently marketing products based on Dead Sea mud, using same trade-name – Black Pearl: (IP Factor)

Italian government axes anti-counterfeiting watchdog: (Class 46)

Jamaican Constabulary Force closing in on pirates: (International Law Office)

Foreign and fanciful – Action brought by Klöckner Moeller against Lestar Company’s registration of ‘PowerControl’ trade mark: (Class 46)

SABMiller boosts beer brand portfolio in South Africa: (Afro-IP)

Spanish to be recognised as an official language of Madrid system: (Class 46),

Artist alleges Spanish Olympian’s swimsuits infringed copyright: (Counterfeit Chic)

UK Trade & Investment and UKIPO publish new IP guides for businesses trading abroad: (IMPACT),

Control and exploitation of copyright material online: (Out-Law),

The Copyright and Related Rights Regulations: Britain’s approach to the Copyright Directive: (Out-Law),

Comptrollers’ opinions: (IPKat),

Photocopying in a commercial context: (Out-Law),

Terms of injunction should be no wider and no narrower than undertaking: Zipher Ltd v Markem Systems Ltd & Anor: (IPKat),

National Consumer Council demands removal of Green Dot mark on the grounds that it misleads customers as it is commonly assumed to be a recycling symbol: (Class 46),

Trade Marks (International Registration) Order 2008 coming into effect 1 October 2008: (The IP Factor), (IPR-Helpdesk)

US General

Stakes for protecting IP have gotten much higher according to McDermott Will & Emery: (Law360),

Are 88% of IT administrators really on the verge of stealing sensitive company information?: (Techdirt),

Michelle Obama’s IP link: (IAM)

Arbitration - California Supremes open door closed by US Supremes: Cable Connection v DirecTV; Hall Street Assoc v Mattel: (The IP ADR Blog),

Infringement allegations trigger insurance policy: Wausau Business Insurance Co v Fisher Printing Co: (Chicago IP Litigation Blog)

US Patent Reform

US presidential campaigns clash on patent law: (Out-Law), (IAM), (Anything Under the Sun Made by Man), (Law360)

US Patents

USPTO is doing ok on patent quality: (IP Thinktank),

USPTO and UKIPO extend patent prosecution highway pilot program: (Patent Docs),

BlackBerryGate: the billion dollar public penalty for PTO delay: (Hal Wegner), (Response from Patent Prospector),

Patents, search of prior art and revelation of information: (Philip Brooks),

Antitrust risks in patent pools and standard setting organisations: (Philip Brooks),

Federal Circuit retirements: timing impact of judicial pay raise legislation: (Hal Wegner),

Evidence based prosecution: Why are deadlines driving response timing?: (Patently-O),

‘Judicial Business of the United States Courts’ statistical report on US Courts released: (Patent Docs), (IAM), (Patent Prospector),

USPTO eliminates requirement for duplicate copies of fee request forms: (I/P Updates), (Patent Docs),

Small Business Innovation Research / Small Business Technology Transfer Reauthorisation Act of 2008 unanimously passed by Senate Committee on Small Business & Entrepreneurship: (Venture-backed companies may see SBIR dollars – Patent Baristas), (Small Business Administration ratcheting up SBIR program amounts - Patent Baristas),

USPTO seeking volunteers to test continuing education system: (Patent Docs),

Survey shows slight drop in clean energy patents: (Law360),

The evolving declaratory judgment standard: MedImmune v Genentech: (Law360)

CAFC vacates $49M jury verdict in favour of 800 Adept in patent case against Targus over toll-free call routing technology; finds no clear and convincing evidence of bad faith in infringement allegations: 800 Adept v Murex Securities & Ors: (Patent Prospector), (Law360), (Patently-O), (I/P Updates),

Substantial new question of patentability raised during reexam with cited but not relied upon reference in initial examination: In re Swanson: (I/P Updates), (Hal Wegner),

BPAI decision relating to software process patentability: Ex parte Lars Langemyr (Patent Prospector),

Claims construed to include preferred embodiment in Midtronics v Aurora Performance relating to electronic battery tester patent: (Chicago IP Litigation Blog),

CAFC upholds International Trade Commission finding that Linear Technology patent related to portable electronics power management is invalid in patent battle with Advanced Analogic Technologies: (Law360),

CAFC holds ‘The’ condylar element does not mean ‘each and every’ condylar element: HowMedica Osteonics v Wright Medical: (Patently-O), (Law360), (Patent Prospector),

Etilize wins partial summary judgment in CNET case: (Law360),

Court rules Thomas D Sykes’ mouse-pad patent term can’t be grandfathered: (Law360),

Federal judge dismisses Controlled Semiconductor’s allegations that Control Systemation misappropriated part of invention while supporting counterclaims of patent infringement: (Law360)

District judge finds two Medtronic patents covering angioplasty catheters and balloons unenforceable, citing inequitable conduct, in patent spat with Boston Scientific: (Law360),

Medtronic verdict against Boston Scientific cut again – this time to $19M: (EDTexweblog.com),

Federal judge rules Qualcomm violated injunction against use of chips and devices found to infringe Broadcom patents: (Law360), (Philip Brooks),

Twombly and patent pleadings in the Eastern District of Texas: FotoMedia Technologies v AOL: (EDTexweblog.com),

Arbitration clause terminates ITC investigation where assertion was not ‘wholly groundless’: Sumitomo v ITC: (I/P Updates), (PATracer),

US Supreme Court ruling on exhaustion worries lots of people: Quanta Computers v LG Electronics: (IP finance),

Implication of eBay for non-competes, other entities: (Law360)

US Patents – Lawsuits and strategic steps

Affinity Labs – After launching action against major automakers, Affinity Labs now accuses bevy of leading stereo makers of infringing its patent for connecting portable audio devices to car sound systems: (Law360),

BMW – Mobile Micromedia Solutions sues BMW and Hyundai alleging infringement of patents related to car entertainment systems: (Law360),

Breckenridge – Breckenridge files declaratory judgment action seeking to invalidate patent for KV’s vitamin supplement: (Law360),

Chevron - Chevron to pay California drivers $48M to settle Unocal patent suits: (Green Patent Blog),

DataTreasury Corp – City National Corp settles patent infringement suits over cheque-imaging technology brought by DataTreasury: (Law360),

DataTreasury Corp – Compass Bancshares settles patent infringement suits over cheque-imaging technology brought by DataTreasury: (Law360),

Equitable Life & Casualty Insurance – EL&CI sues rivals Assurity Life Insurance and Commemorative Life Insurance Services over ‘birthday gift’ policy patent: (Law360),

Finisar - Patentee and declaratory judgment defendant Finisar appeals Judge Alsup’s grant of summary judgment of invalidity to Comcast: (PATracer),

Fujitsu – Fujitsu and Nanya sign licensing agreement ending three-year patent battle over DRAM chips: (Law360),

Honda – Honda asks court to revisit patent decisions in its dispute with American Calcar: (Law360),

Medtronic – Medtronic can add patent infringement claims against Boston Scientific over Promus stent but won’t get January trial date it wanted: (Law360),

MPEG LA - MPEG LA transfers administration of DVB-T licensing programme to Italian IP manager Sisvel: (Managing Intellectual Property),

Sony – Litepanels, Sony settle patent dispute over camera-mounted lights: (Law360),

Star Scientific – Star Scientific asks Federal Circuit for new trial judge in patent suit against R J Reynolds Tobacco Co: (Law360),

Tessera – Tessera, Patriot Memory sign licensing agreement to end patent dispute over semiconductor technology: (Law360),

Toyota – Patent attorney inventor, Conrad Gardner accuses Toyota of infringing self-drafted hybrid vehicle patent: (Green Patent Blog),

USPTO – Sports goods manufacturer sues USPTO over refusal to reinstate patent that lapsed after clerk suffering confusion and memory loss due to terminal AIDS failed to make maintenance fee payment: (Law360)

US Copyright

Copies even a lawyer can love- custom reproductions of clothing, accessories: (Counterfeit Chic),

Carl Malamud wants California and other states to drop copyright claims on law: (pressdemocrat.com),  

CAFC holds first sale doctrine does not protect Costco Wholesale Corp from allegations it infringed Omega’s copyright by selling Swiss-made watches without authorisation: (Law360),

Bratz case - varying claims regarding amount of the verdict; Mattel to seek injunction after $100M award: (Property, intangible), (Managing Intellectual Property),

Io v Veoh – a terrific 512(c) defense-side win: (Technology & Marketing Law Blog), (Out-Law), (Text of DMCA ruling and EEF commentary - The Trademark Blog),

Court dismisses copyright case for lack of registration: Johnson v Cypress Hill: (Chicago IP Litigation Blog),

RIAA wins $40850 P2P judgment against Jeffrey Howell: (Ars Technica),

Open source software ruling will have big impact: Jacobsen v Katzer: (Law360)

US Trademarks

New York Times discusses trends in trade mark filings: (Seattle Trademark Lawyer),

Trade mark applications, IP lawsuits filings, and technology spending in Maryland: (Maryland Intellectual Property Law Blog)

Two years in prison and $136,089 damages ordered against Florence man for selling counterfeit purses: (The Trademark Blog),

Natural results and sponsored links both deceptive, court rules: TrafficSchool.Com v eDriver: (Rebecca Tushnet’s 43(B)log),

Subpoena of plaintiff’s prosecution/trial counsel denied: Miyano Machinery USA v MiyanoHitec Machinery: (Chicago IP Litigation Blog),

TTAB quickly affirms mere descriptiveness refusal of 7SECONDS for hair detangler: In re Unite Eurotherapy, Inc (non precedential): (TTABlog),

Specimens don’t match drawing, so TTAB affirms refusal to register AT C-LEVEL for magazines: In re San Diego Regional Economic Development Corp (non precedential): (TTABlog),

DISPENSE-A-PILL merely descriptive of pill dispenser, says TTAB: In re HealthOne Medical System (non precedential): (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Adidas – Wal-Mart settles with Adidas in case over three-stipes trade mark: (Law360),

Lerner, Glen - Las Vegas’ ‘Heavy Hitter’ Glen Lerner files declaratory judgment action against owner of ‘Heavy Hitters’ service mark: (Las Vegas Trademark Attorney)

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Friday, September 5, 2008 11:06am — PHARMA, BIOTECH & CHEM IP STRATEGY

Speaking Engagements (India) GenericsWeb Patent Academies 6 and 8 Oct 08

I'm delighted to let you know that I will be co-presenting at the upcoming GenericsWeb Patent Academies in Hyderabad and Mumbai with Leighton Howard.

These two single-day events will be held on 6 and 8 October.

The GenericsWeb Academies are always fantastic and I am looking forward to entertaining and thought provking discussions on patent strategy with the attendees.

Please get in touch with Jesse Tale at GenericsWeb if you'd like to come along. And please do pass this on to others who you think may be interested.

Here's a sneak preview of the details:

GenericsWeb is excited to announce that the Generic Pharmaceutical Patent Academy is travelling to India for two very special events:

• 6th of October '08 at the Taj Krishna, Hyderabad
• 8th of October '08 at the Leela Kempinski, Mumbai

This is an exciting opportunity for you and your colleagues to improve your understanding and effectiveness in our rapidly evolving industry. GenericsWeb Patent Academies are highly respected and renowned events, receiving feedback including:

"This course will make you love patent issues"

"Great information on all fronts regarding the generic patent environment"

"Very good, very recommendable"

The Indian Patent Academy is a specially adapted one-day version of the full patent academy and will provide a global overview of patent protection in
the generic pharmaceutical industry. The course will be delivered by industry experts Duncan Bucknell from Global IP Strategies and Leighton Howard CEO of GenericsWeb.

Why you should attend:
The ability for generic drug development personnel to understand and respond to patents is of increasing importance in today's markets. At no time in the past has the influence of patents been more significant on our industry, creating confusion and uncertainty with frightening regularity.

GenericsWeb recognises the fundamental need for personnel performing different functions to understand how pharmaceutical patenting affects the
generic development process and to integrate it into the development process by devising appropriate strategies.

Course Outline:

Part I: Understanding Patent Information

1. Introduction to Patents
2. The Patent Document: Bibliographic Information
3. The Patent Document: Technical Information
4. The Prosecution Process

Part II: Interpreting in the context of Industry & Legislation

5. Assessment of the Patent Landscape

Part III: Strategic Development of Generic Pharmaceuticals

6. The Route Ahead - Strategic Alternatives

Click here to find out more about course content.

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Thursday, September 4, 2008 11:00am — IP ON THE NET

Google Chrome EULA needs a polish

(Post by Ben Lehman, our online specialist.)

Google release a new browser to much media attention this week.  However it took some keen eyes to quickly spot some material issues with the EULA (end user licence agreement).

All that said, credit to Google for admitting the issue and recognising that its standard EULA needed a bit more polish.

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Wednesday, September 3, 2008 9:24pm — IP ON THE NET, GLOBAL IP STRATEGY

Software piracy - a strategic business approach

Here's a story from our Intellectual Capital Manager, Marie Louise about trying to get a copy of Microsoft Access, from Microsoft...

I went to the Access home page on the Microsoft website.  When I clicked on ‘buy now’ was taken to a page referring only to Office suites and stockists.  Called a local retailer and was told that they don’t think Access is sold as a stand-alone product anymore.  I then called the local Microsoft number to question if this is correct.  The first person I spoke to said he was unsure so directed my call to another person.  The second fellow told me he ‘thought’ it was still sold as a stand-alone product.  When I asked for stockists he stressed that he doesn’t have a list of stockists but personally he would recommend Harris Technology.  Harris Technology were very helpful so my search ended there.

So, the question is how many people would have taken up the offer of a free pirated copy before getting to the end of that saga?

Maybe another way to cut down on software (and content) piracy is to simply make it much easier for your customers to access the real thing?

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