IP Think Tank Global Week in Review General Edition – 14 November 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.

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Highlights this week included:

Member states review key copyright issues (WIPO) (IPKat) (Daily Dose of IP) (Intellectual Property Watch)

CFI rejects Lego’s appeal against OHIM’s Board of Appeals decision that Lego brick shape not registrable as a Community trade mark (Class 46) (IPKat) (Out-Law) (Law360)

Patent policy to be investigated by Federal Trade Commission (Out-Law) (I/P Updates) (Washington State Patent Law Blog)


Global – General

Foundation stone laid for WIPO’s new building (WIPO) (IPKat)

IP settlement strategy and tactics presentation (IP ADR Blog)

Global – Trade Marks / Brands

Ceremony marks 50th anniversary of Lisbon Agreement (WIPO) (IPKat)

GM and Chrysler: What about the Brands? (IP finance)

Global – Patents

R&D spending stalls, but the US and EU continue to lead the way (IAM)

IBIL seminar provides platform for judges to address concerns about the patent system (Solo Independent IP Practitioners) (IPKat)

Funding patent litigation – after-the-event insurance (ATE) and third party funding (TPF) really work? (IP finance)

Existing sources of investment information failed us: patent landscaping analytics provide necessary innovation for investors (IP Asset Maximiser Blog)

Global – Copyright

Member states review key copyright issues (WIPO) (IPKat) (Daily Dose of IP) (Intellectual Property Watch)

Curt Smith discusses cc-licensing (creativecommons.org)

Kelly Link on creative commons (creativecommons.org)


EU-Africa partnership aims at knowledge access, technology transfer (Intellectual Property Watch)


Novelty – direction, recommendation, or suggestion: Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd (IPRoo)

Three arrested over alleged breach of copyright law in connection with alleged sales or hire of unauthorised devices capable of decoding the signals of subscription television (IP Down Under)

Counterfeiters beware! Court of Appeal of the Supreme Court of Victoria rules on criminal provisions of the Trade Marks Act: Commonwealth Director of Public Prosecutions Reference No 1 of 2008 (Freehills)

Australian health club chain fights 3000% hike in music royalties (Techdirt)

End in sight for IP Australia’s PatSearch system (Patent Librarian’s Notebook)


Bosnia-Herzegovina signs up for Madrid Protocol (Class 46)


‘Why copyright? Canadian voices on copyright law’ – the trailer (Michael Geist)

The perils of insufficient evidence in trade mark cases (Canadian Trademark Blog)

Canadian radio stations have won a federal court decision that will allow them to exclude production costs of radio commercials from the amount on which royalties must be paid (Michael Geist), (Bloomberg)


Improved trade mark protection in China predicted (Managing Intellectual Property)


CFI rejects Lego’s appeal against OHIM’s Board of Appeals decision that Lego brick shape not registrable as a Community trade mark (Class 46) (IPKat) (Out-Law) (Law360)

CFI emphasises the fact that a mark is registered nationally outside EU is no proof of its registrability as a Community trade mark: Adobe Systems v OHIM (Class 46)

CFI refuses 24-colour Munsell system colour mark as Community trade mark: GretagMacbeth v OHIM (Class 46)

Many European countries represented in FutureBrand’s ‘Country Brands Ranking’ 2008 study (Class 46)

GI amendment applications relating to PERA DELL’EMILIA ROMAGNA for pears and SABINA for oil (Class 46)

EU denies ACTA document request: democracy undermined? (Ars Technica) (Techdirt)

Excess claim fees: EPO ‘admits it got it wrong’ (IPKat)

Pending patent page penalties: Decision of the Administrative Council of 21 October 2008 amending the Implementing Regulations to the European Patent Convention (CA/D 4/08) (EPO) (IPKat)

OHIM: Amendments to the ‘Manual of Trade Mark Practice’ (Class 46)

Directive 2008/95/EC replaces 89/104 (IPKat) (Class 46)


Germany considers putting patents on company balance sheets (IAM)

Federal Supreme Court decides that image of Marlene Dietrich not capable of trade mark protection (Class 46).

Hong Kong

CC in the Hong Kong Standard (creativecommons.org)


Who owns IN202354? Same patent number issued for different inventions to Roche and CSIR (Patent Circle)


Italians seek protected designation of origin (PDO) for PAGNOTTA DEL DITTAINO for bread (Class 46)


Macedonia accedes to European Patent Convention (EPO), (IPKat),


Arla Foods victorious in summary trade mark infringement proceedings against Th. Vergeer en Zonen before District Court of The Hague (Class 46)


Polish Patent Office partially invalidates VOGUE registration for Advance Magazine Publishers (Class 46)

Poland, brands and billboards (Class 46)

South America

South American cooperation plan in IP rights (IP tango)


Spanish Ministry of Employment auctioning brand ‘Galerías Preciados’ (Class 46)


Interbrand’s ranking of Russia’s most valuable brands (IP finance)

United Kingdom

Late responses delay dead artists’ right assessment (IPKat)

UK Intellectual Property Office to cease Designs search service in Dec 2008 (IPKat)

Artists lobby for royalty rights of the dead (Out-law)

United States

US General

Obama: boon or doom for IP? (Managing Intellectual Property)

American Jury Project: Questionnaires, deliberation guidance and time limits (Chicago Intellectual Property Law Blog)

Intellectual property rights and free enterprise (Philip Brooks’ Patent Infringement Updates)

US General – Decisions

District Court not convinced that Apple does not compete with IBM in trade secrets case; Judge bars former IBM senior executive from Apple job (Excess Copyright) (Law360)

District Court awards ClearOne over $10M in trade secrets suit relating to audio-conferencing technology (Law360)

US General – Lawsuits and strategic steps

Intel Corp – Former design engineer at Intel charged with stealing more than $1 billion worth of trade secrets after beginning work at Advanced Micro Devices (Law360)

Saint-Gobain Ceramics & Plastics – Saint-Gobain files trade secrets lawsuit against two former employees and their new employer Centronic (Law360)

US Patent Reform

Senior IP Counsel at SAS US recommends raising fees to solve patent backlog (Patently-O) (Patent Prospector) (IAM)

Experts identify the experience and background the new USPTO director needs (IAM)

PTO Deputy Director Peterlin out, Doll in, reports Aharonian; Shanna Winters rumored as Dudas successor (Hal Wegner)

Patent reform reform: House abolishes IP subcommittee, patents under full committee (Hal Wegner)

US Patents

USPTO issues 68 new secrecy orders in 2008 (Patent Librarian’s Notebook)

Patent policy to be investigated by Federal Trade Commission (Out-Law) (I/P Updates) (Washington State Patent Law Blog)

Judge Plager on claim construction (Patent Prospector)

Troll Tracker defamation update: Cisco wants to see tax returns, evidence of ‘mental anguish’ (The Prior Art)

Responding to examiner’s charge of burying reference (Patently-O)

Bill Gates’ new career? Patent troll for Nathan Myhrvold? (Techdirt)

Halliburton tries to patent form of patent trolling (Techdirt) (I/P Updates)(Law360)

From 15 September, committing any crime can result in revocation of ‘privilege’ to prosecute before USPTO (Patent Prospector)

USPTO to increase PCT transmittal and search fees (Peter Zura’s 271 Patent Blog) (Law360)

US Patents – Decisions

Questions of fact re alleged enjoined imitations prevent contempt: Liquid Dynamics Corp v Vaughan (Chicago Intellectual Property Litigation Blog)

Motion for stay denied in ‘only if’ case on remand: O2 Micro v Beyond Innovation Technology (EDTexweblog.com)

Constitutionality of the marking statute: Pequignot v Solo Cup (Patently-O)

California malicious prosecution charges based on PTO interference: Plumley v Mockett (Patently-O)

District Court denies post-trial motions seeking to invalidate two of four patents-at-issue in infringement suit against Fairchild Semiconductor International (Law360)

District Court rules Abbyy USA failed to support claims that Nuance Communications engaged in monopolistic practices in optical character recognition patent suit (Law360)

USPTO validates Proctor & Gamble’s patent that plays a role in several lawsuits between P&G and Kraft Foods over plastic coffee containers (Law360)

Firm disqualified from representing patentee in malpractice suit after defending deposition of prosecuting attorney: Touchcom v Bereskin & Parr (non precedential) (Patently-O) (Hal Wegner)

Bilski – audio podcast from Professors Doug Lichtman, Rob Merges and John Duffy (EDTexweblog.com) (Philip Brooks Patent Infringement Updates) (Peter Zura’s 271 Patent Blog) (Anticipate This!) (Patent Baristas)

Bilski – Federal Circuit clarifies test for business method patents (Managing Intellectual Property)

Adding inventor to issued patent requires corroborating evidence: Tavory v NTP (IP Spotlight) (Law360)

Egyptian Goddess puts teeth back in US industrial design rights (Intellectual Property Watch)

US Patents – Lawsuits and strategic steps

Bricor – Bricor sues Ecotech over low flow showerhead technology (Green Patent Blog)

DuPont – DuPont accuses Invista of patent infringement, misappropriation of trade secrets and host of other claims related to sale of its textile business to Koch Industries (Law360)

Encyclopaedia Britannica – Encyclopaedia Britannica revives notorious multimedia patent, attacks GPS manufacturers: (The Prior Art)

Environmental Analytics – EA launches seeks declaratory judgment against LDAR Solutions’ patent for hand-held gas monitor (Law360)

Hammill Manufacturing Co – Hammill seeks declaratory judgment in dispute with inventor who claims the biomedical supplier owes him royalties for sale of patented bone screw (Law360)

Katz, Ronald A – Katz inks patent licensing deals with 10 more companies including Aetna and Rite Aid (Law360)

LG – Days after appeals court clears LG in an epic patent fight with Whirlpool, LG asserts several washing machine patents against rival manufacturers, including Daewoo Electronics and Asko Appliances (Law360)

Nintendo – Motiva sues Nintendo for infringement of patent relating to human movement measurement system (Philip Brooks’ Patent Infringement Updates) (Law360)

Oticon – Oticon accuses Vivatone Hearing Systems and Sebo Tek Hearing Systems of infringing patent for digital hearing aids (Law360)

Rambus – Rambus hits Nvidia, others with International Trade Commission (ITC) complaint seeking to block importation of products that allegedly infringe nine Rambus patents related to semiconductor chips (Law360)

Rembrandt Technologies – Rembrandt accuses Fox Television Stations and MyNetwork of infringing patent related to digital television signals (Law360)

Resonant Sensors – Resonant Sensors and Resonant Optics accuse SRU Biosystems of infringing two patents related to mode resonant sensors and attack the validity of 31 of SRU’s patents (Law360)

Saint-Gobain – Saint-Gobain appeals from jury verdict finding it infringed patent directed to a refrigerator shelf: Gemtron v Saint-Gobain (PATracer)

Upaid – Fresh forgeries allegedly emerge in Satyam’s dealings over past year, Upaid files application to compel deposition of high-ranking Satyam officials (Spicy IP)

US Copyright

President elect Barack Obama cc-licensed behind the scenes photos on Flickr (creativecommons.org)

Judge Patel (who shut down the original Napster) proposes ‘utopian’ compulsory licensing scheme (excess copyright)

US Copyright – Lawsuits and strategic steps

Mattel – After limited copyright infringement victory, Mattel reportedly demanding court confiscate all MGA’s Bratz dolls (Law360)

Rowling, JK – RDR Books appeals ruling against Harry Potter lexicon (Techdirt) (The Trademark Blog)

US Trademarks

Eco-marks for green certified meetings (Green Patent Blog)

US Trade Marks – Decisions

Failure to allege fame results in denial of default judgment in dilution case: Corsair Memory v Corsair7.com (Seattle Trademark Lawyer)

Made in the USA claim partially barred by laches: Rocky Brands v Red Wing Shoe Company (Rebecca Tushnet’s 43(B)log)

TTAB cancels THE COLD WAR MUSEUM registration, respondents fail to prove acquired distinctiveness: Cold War Air Museum v Cold War Museum and Francis Gary Powers (non precedential) (TTABlog)

TTAB sustains 2(a) refusal of P. MAURIAT for musical instruments: In re Hsieh (non precedential) (TTABlog)

TTAB finds CHÊNE DES DOMAINES DE FRANCE geographically descriptive of wood from France: In re Office National des Forets (non precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Disney – Disney’s high end game plan for leveraging Disney brand in terms of product merchandising (IP finance)

Mars – Street performer known as the ‘Naked Cowboy’ drops trade mark suit against Mars over advertisement featuring M&M wearing underpants and cowboy hat (Law360)


Venezuela’s 1955 Industrial Property Law is revived (IP tango)


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