Virtual monopoly – four strategic choices

  Posted on April 3, 2008 By in IP Management

Christopher Pike’s book ‘Virtual Monopoly‘ provides an interesting set of four choices in the way to respond to the ‘crowded canvas’ created by the large and ongoing boom in IP – generating activity. Here they are:

1 – ‘Fervent firefighters’ view third party IP as an operational matter – make assessments at the project management level along with other project risks, such as market, regulatory, financial, organisational, etc.

2 – ‘Earnest evaluators’ engage in early, diligent analysis of the legal risk posed by third party IP and invest heavily in reources for thorough IP research and analysis.

3 – ‘Dynamic dealers’ make little or no proactive assemsment of third party IP. Instead, they deal with IP issues as and when they arise – through settlements, cross-licenses, defending litigation and so on.

4 – ‘Confident creators’ view the crowded IP environment as a creative challenge. They invest in resources for researching third party IP and use it to their competitive advantage.

Its not hard to see which one Christopher recommends – the confident creators.

However, each of these models can be useful at different times and in different situations. More importantly, each of these approaches may need to be applied by the same entity to different aspects of its IP Strategy.

New Continuation Rules dead – and so?

  Posted on April 2, 2008 By in IP Management

You have no doubt heard the news that the New Continuation Rules proposed by the USPTO have now been killed off.

So patent applicants in the US can now rest assured that they can file continuation applications ad infinitum in the neverending quest for the perfect claim (or at least to preserve the right to file new claims to catch a new competitor product).

Is that the end of the story?  Well probably.

As Hal Wegner has pointed out, the USPTO has every reason to try and add a greater rule making ability to the amendments currently before congress (which would effectively statutorily overule the court decision).

Stay tuned, but don’t expect anything soon.

IP Think Tank Global Week in Review – 28 March 2008

  Posted on March 28, 2008 By in Pursue Excellence

  1 Comment

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 me 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://thinkipstrategy.com/subscribe/

Highlights this week included:

Global

Global – General

  • How justified are differences in IP duration?: (IPEG),
  • Proponents: Slow better than poor for
    WIPO Development Agenda: (Intellectual Property
    Watch    ),
  • Chatham House Rule comes to WIPO Development Agenda: (IP
    Updates    ),
  • New campaign by a group of Second Life Avatars to raise awareness of the
    ‘theft’ of virtual items: (IPKat), (Patry
    Copyright Blog    ),
  • World IP Day is on the way: (IPKat),
  • Watch for IP leaks from publications: (Securing
    Innovation    ),
  • Lessig’s
    (Government) FOSS market: (IPcentral.info),
  • Notions
    of free: (IPcentral.info),

  • Microsoft’s new business imperative leads to IP rethink: (IAM),

  • Standards
    competition and globalization: (John
    Carroll    ),

  • The
    international IP enforcement landscape from a developing country perspective:South Center research paper 15: (IP
    Justice    ),

    Formulating
    IP strategy – enhancing assets: (IP
    ThinkTank    )

Global – Trade Marks / Domain Names / Brands

Global – Patents

Global – Copyright

  • Is
    breaking the law the secret to success in the digital music industry? – Warner
    Music buys share of Imeem.com file-sharing site: (Against Monopoly),
  • How
    IP.com supports copyrights: (Securing
    Innovation    ),
  • Sharing,
    part of the power of everybody: (Copyfight)

Pharma & Biotech

Pharma & Biotech – General

  • Intricacies
    of choosing a pharmaceutical trade mark: (International
    Law Office    ),
  • Commercial
    success v public interest: publicising clinical trial data: (Spicy
    IP    ),
  • Big
    Pharma and neglected diseases: (Spicy
    IP    ),
  • India: MNCs and
    patent applications: The tip of the iceberg and the iceberg itself: (Spicy
    IP    ),

  • India: Pharma MNCs approach to the Drug
    Controller General of
  • India:
    To take on the Patent Office together: (Spicy
    IP    ),

  • India:
    Frontline’s interview with Dr Baltimore touches on ‘moral conundrum’ regarding
    public health and patents: (Spicy
    IP    ),

  • India: Statins
    remain under margin pressure: (GenericsWeb),

  • India: Patents
    vs patients: Cipla’s victory and the evolution of new ‘compulsory licensing’
    norms: (Spicy
    IP    ),

  • India: Indian
    Pharma shows off its figure(s): (Spicy
    IP    ),

  • Will the real NGO stand up please?-
    Anonymity of policy research group quoted on pharma patenting policy and stats:
    (Spicy
    IP    ),
  • Thailand:
    More news/reactions on compulsory licenses: (Generic
    Pharmaceuticals & IP    ),
  • US:
    Follow-on biologic drugs and patent law: A potential disconnect?: (Patent
    Docs    ),
  • US:
    Alnylam CEO forecasts ‘perfect storm’ for biomedical patents: (Patent
    Docs    ),
  • US: Human Genome launches patent suit against
    Genentech over type of protein used to detect tumours: (IP
    Law360    )

Pharma & Biotech – Products

  • Caduet
    (Atorvastatin/Amlodipine) – US: Pfizer sues Ranbaxy to block generic Caduet
    until 2016: (IP
    Law360    ),
  • Dovonex
    (Calcipotriol) – Chancery Division EWHC grants interim injunction prohibiting
    Sandoz from distributing calcipotriol ointment in patent case brought by Leo
    Pharma: (IPKat),
  • HER2
    FISH pharmDXTM kit – Abbott’s HER2 US patent narrowed in The Regents of the University of California, Abbot Labs v
    Dakocytomation California    : (Patent
    Baristas    ),
  • Mircera
    (Methoxy polyethylene glycol-epoetin beta) – US federal court orders
    appointment of special master in patent dispute between Amgen and Roche as it
    considers whether to permanently enjoin Roche from selling the anemia drug
    Mircera in the US: (IP
    Law360    ), (Patent
    Docs    ),
  • Namenda
    (Memantine) – Forest launches another patent infringement suit in an effort to
    prevent Synthon from releasing generic Namenda in the US market: (IP
    Law360    ),
  • Pepcid
    (Famotidine)/ Toprol-XL (Metoprolol) – USFDA comes to different conclusions on
    180-day exclusivity tentative approval forfeiture provision – punts in one case
    and decides in another: (FDA
    Law Blog    ),
  • Reverse
    transcriptase enzyme kits / DNA amplification kits: Invitrogen files patent
    suit against General Electric Co’s healthcare subsidiary regarding enzyme kits
    and DNA kits: (IP
    Law360    ),
  • Risperdal
    (Risperidone) – Update on Teva’s action against USFDA concerning Orange Book
    relisting of Risperidal patent: initial briefs filed and Mylan enters the fray:
    (FDA
    Law Blog    ),
  • Tarceva
    (Erlotinib) – Delhi Patent Office hears arguments on whether Roche/Pfizer enjoy
    the right to a hearing in relation to Natco’s application for a compulsory
    licence to export generic erlotinib to Nepal: (Spicy
    IP    ), (Generic
    Pharmaceuticals & IP    ),
  • Tarceva
    (Erlotinib) – Natco may enter Indian market with generic erlotinib: (Generic
    Pharmaceuticals & IP    ),
  • TriCor
    (Fenofibrate) – 18 states and District of Columbia file lawsuit alleging Abbott
    Laboratories, Fournier Industrie et Sante SAS, and Laboratoire Fournier SA
    conspired to delay a generic version of TriCor reaching the market by filing a
    series of frivolous patent infringement lawsuits: (California
    Biotech Law Blog    ), (Patent
    Baristas    )

Africa

  • Tackling sales of pirated software:
    Microsoft success in Botswana: (Afro-IP),
  • Kenya: Clean Development Mechanism:
    Good intention for tech transfer blighted by brokers?: (Afro-IP),
  • If education and pricing policy
    fail, says Adobe in Nigeria, we can still sue: (Afro-IP),
  • South African arm of Chrysler objects
    to advertisement by Indian vehicle maker Mahindra and Mahindra that uses the
    term “jeep”: (Afro-IP),
    (Spicy
    IP    ),
  • Kenya’s call for anti-counterfeit
    legislation… amongst other changes: (Afro-IP),
  • Kenya: Shared computer use raises
    privacy, confidentiality issues: (Afro-IP)

Australia

  • Changes to grace period for trade
    mark renewal: (Australian
    Trade Marks Law Blog    ),
  • Full Federal Court considers the
    meaning of ‘relevant to work in the relevant art’: Ajinomoto Co Inc v Nutrasweet Australia Pty Ltd: (Mallesons
    Stephen Jaques    ),
  • Society of Authors’ report,
    ‘Educational publishing in Australia: What’s in it for authors?’: (LawFont.com)

Brazil

Canada

China

  • WorkTools: ‘We won the judgement
    but it did no good’ Part II: (IP
    Dragon    ),
  • How should China spend its extra
    Yuan on IPR enforcement?: (IP
    Dragon    ),
  • Which event is 2007 China top ten
    IPR event?: (IP
    Dragon    ),
  • Chinese hotel liable for sales by
    shop: (IPKat)

Denmark

  • Government report on counterfeiting
    and piracy: (Class
    46    )

Europe

  • DSS case shows why EU leaders want one patent
    jurisdiction, but will patent owners?: (IAM)
  • DSS case: Europe’s patent demise: (IPEG),
  • EU calls on US to fulfill TRIPS
    obligations re copyright: (The
    IP Factor    ),
  • How to safeguard unprotected
    know-how in FP7 projects: (IPR
    Helpdesk    ),
  • European Council calls for a free
    movement of knowledge: (IPR-Helpdesk),
  • Madrid amendments for
    double-treatied Union members: (IPKat),
  • Proposed Europe-wide rules
    governing biometric passports are still unsatisfactory despite some
    concessions, according to European Data Protection Supervisor: (Out-Law),
  • Is there an after-life for pan
    European injunctions?: (IPEG),
  • TomTom, Nokia, face competition
    concerns: (IP
    finance    )

Finland

  • PGI
    application for KAINUUN RÖNTTÖNEN for type of pie: (Class 46)

France

  • BOEUF DE
    BAZAS to become a PGI for beef: (Class 46)

India

  • More news on the Indian Bayh Dole:
    (Spicy
    IP    ),
  • Bajaj – TVS patent feud – the
    judgment: (Spicy
    IP    ),
  • Copyright and current reporting:
    FilmFAIR!: (Spicy
    IP    ),
  • The North East on a GI roll!: (Spicy
    IP    ),
  • Delhi High Court reserves judgment
    in Harpic v Domex comparative
    advertising matter: (Spicy
    IP    ),
  • Indian piracy in numbers: (Spicy
    IP    ),
  • Counterclaims for patent
    invalidity: A defence strategy: (International
    Law Office    ),
  • Trade mark law India: (Ezine
    @rticles    ),
  • Trade mark registration India: (Ezine
    @rticles    ),
  • Need for amending the Trademarks
    Act?: (Spicy
    IP    ),
  • BBMP seeks to patent construction
    technology: (Spicy
    IP    ),
  • Indian Patent Office decides not to
    implement Madrid Protocol: (The
    IP Factor    )

Israel

Japan

  • JPO provides information on legal
    status of Japanese patents: (Competitive
    Info    )

Korea

Lithuania

  • Court of
    Appeal finds MONTBLANC is well-known despite the fact that it is known only by
    a small proportion of consumers: (Class 46)

Netherlands

  • District
    Court of The Hague comes to intermediary decision in CTM infringement case Wrangler Apparel Corp v Sarl Dogg Label
    concerning jeans labels: (Class 46)

Spain

  • Spanish PTO sets ‘quality commitments’ related to duration of IPRs
    registration procedures: (Class
    46    )

United
Kingdom

  • Banksy: Trade marks and anonymity:
    (Class
    46    ),
  • New ICO survey reveals level of
    public concern over data protection: (IMPACT),
  • UK software patent law uncertainty
    continues: Symbian: (IMPACT),
    (PLI),
  • Third-party trade mark use in
    software: RxWorks Ltd v Paul Hunter:
    (International
    Law Office    ),
  • Information Commissioner warns on
    Heathrow fingerprint system: (Out-Law),
  • Laptop theft leads ICO to declare
    Skipton in breach of the Data Protection Act: (IMPACT),
  • Football fans worth £2.50 a year
    each in ITV sell-off: (IP
    finance    ),
  • Beatles’ company Apple Corp plans
    to take legal action against Feugo Entertainment in response to their proposal
    to release live recordings of the Beatles in Hamburg: (IPKat),
  • Nominet: Dispute resolution service
    statistics: (Class
    46    ),
  • UKIPO calls for people’s views on
    the modernization of the Trade Mark Rules: (Class
    46    ),
  • No strike
    out for Nokia: InterDigital Technology
    Corporation v Nokia Corporation & Anor    : (IPKat)

United
States

US General

  • ACTA’s
    misguided effort to increase government spying and ratchet-up IPR enforcement
    at public expense: (IP Justice),
  • Provisions
    for ACTA – According to Office of US Trade Representatives: (IP Justice),
  • White
    paper on proposed Anti-Counterfeiting Trade Agreement (ACTA): (IP Justice),
  • Public
    Knowledge files comments on ACTA: (Public Knowledge),
  • Comments
    of Knowledge Ecology International on the proposal for ACTA: (IP Justice),
  • Essential
    Action comments to USTR on ACTA: (IP Justice)
  • LEDES
    publishes UTBMS Intellectual Property Billing Codes: (IP Updates),
  • USPTO seminar: Protecting IP in
    China: (Patent
    Prospector    ), (Daily
    Dose of IP    ),
  • IP hypocrisy: US likes WTO rulings
    only when it wins: (Ars
    Technica    )

US Patent Reform

  • Chris Ohly and Sal Patel on the US
    Patent Reform Bill: (Spicy
    IP    ),
  • Absolute novelty, first-to-file,
    and foreign bias: (Patently-O),
  • Improving claim construction at
    district courts: (Patent
    Prospector    ),
  • Analysis: patent reform bill unable
    to clean up patent mess: (Ars
    Technica    ),
  • Reforming ourselves out of the
    green boom: (IP
    Law360    ),
  • Proposed patent reform remains
    problematic: (Against
    Monopoly    )

US Patents

  • Patent
    Troll Tracker – Cisco amends employee blogging policy following Troll Tracker
    spat: (IP Law360), (Anticipate This!), (Patently-O), (Chicago IP Litigation Blog),
  • It’s time to acknowledge Jon Dudas’
    major achievement: (IAM),
    (response from Patent
    Prospector    ), (IAM),
  • Patents and the Bush
    Administration: Grading Jon Dudas: (Hal Wegner),
  • Amateur hour – problems with PTO
    management: (Patent
    Prospector    ),
  • Costly IP trials make arbitration more
    appealing: (IP
    Law360    ),
  • Defending the trolls: (IP
    Law360    ),
  • Big Blue billion dollar patent licensing revenues ‘an urban legend’: (IAM),
    (IAM),
  • Courts resist using the term patent
    troll: (Patently-O),
  • LinkedIn describes PTO employees: (Patently-O),
  • Patent profile: Redpoint Bio
    announces issuance of patent for identifying taste signaling modulators: (Patent
    Docs    ),
  • 40% of section 337 actions go to
    trial: (IP
    Updates    ),
  • Reducing and managing patent
    litigation costs: (IP
    Law360    ),
  • USPTO boss talks about the rise of
    bad patents: (Ars
    Technica    ), (IPBiz),
    (IPBiz),
  • Medellin
    v. Texas    , the
    Paris Convention, TRIPS: The role of treaties in US patent law: (Hal Wegner),
  • IncreMental Advantage seminar on
    patent claim construction – Chicago, 23
    June / San Francisco, 14 July / Washington, 5 August: (Philip
    Brooks    ),
  • New website of interest – ‘USPTO Examiners’:
    (Patentably Defined), (Patent
    Prospector    )
  • USPTO/George Washington University
    School of Business competition: Fix the backlog: (Daily
    Dose of IP    ),
  • Harry Moatz is NOT crazy – Positions
    adopted by Patent Office regarding Rule 56, inequitable conduct and disclosure may
    have greater purpose: (PLI),
  • Pendency problems: (just_n_examiner),
  • Amgen ruling will increase section 337 investigations: (IP
    Law360    )

US Copyright

  • Low-res
    transformativeness: (43(B)log),
  • Court
    notes that empty ‘The Office’-style workplace concepts not subject to
    copyright: Situation Management Systems v
    ASP Consulting Group    : (Techdirt),
  • The
    politics of plagiarism: (IPBiz),
  • Zittrain
    speaks about preserving the internet and Lessig rants about eliminating
    copyrights and privacy: (IPcentral.info),
  • Attempted
    crimes and linking: (Patry
    Copyright Blog    ),
  • Has
    Congress backdoored in ‘attempted copyright infringement’ as a crime?: (Techdirt),
  • Film
    Maker and PK submit testimony on orphan works: (Public Knowledge),
  • Cotchkie
    copyright: One person’s useful article is another’s art: (Public Knowledge),
  • Net
    neutrality doesn’t extend to illegal acts: The Comcast saga continues: (Public Knowledge),
  • How
    reliable are industry announced piracy statistics?: (Techdirt)

US – Companies / Entities

  • Acacia –
    Acacia Research Group settles patent infringement suit against AOL over
    technology that displays background images in instant messages and emails: (IP Law360)
  • Acacia –
    Acacia settles with SAS Institute, Quest Software, Aspen Technology, BMC
    Software, and F-Secure over patent dispute relating to rule-based monitoring
    technology used in computer systems: (IP Law360),
  • Activision
    – Gibson sues Activision and numerous retailers over ‘guitar hero’ video game:
    (Techdirt), (IP Law360),
  • American
    Medical Systems – American Medical Systems sues Biolitec AG for allegedly
    infringing its patent on technology used to treat enlargement of the prostate:
    (IP Law360),
  • Apple –
    Apple and Aiphone settle trade mark dispute over iPhone: (IP Law360),
  • Aroa
    Marketing – Court rules that a Aroa Marketing infringed Storus Corp’s trade
    mark when it sponsored the term ‘Smart Money Clip’ in Google’s search engine
    and displayed the term as the headline of the advertisement: (Out-Law),
  • Avid –
    Judge finalises $6.8 million award of damages, interest and costs to Avid
    Identification Systems, against Datamars, in false advertising and patent
    infringement case: (IP Law360),
  • Bilski – Briefs
    files for In re Bilski appeal: (Patently-O), (Intellectual Property Law Blog)
  • Blizzard
    – World of WarCraft maker, Blizzard, files copyright suit against Michael
    Donnelly in connection with his ‘MMO Glider’: (Ars Technica),
  • Bridgeport
    Music: Sixth Circuit decides that attorney fees can be awarded to prevailing
    defendant under s 505 Copyright Act even if the plaintiff’s unsuccessful claims
    were objectively reasonable: Bridgeport
    Music, Inc v WB Music Corp    : (Patry Copyright Blog),
  • CardioNet
    – Trade Secret Act preempts state claims based upon confidential information: CardioNet, Inc v LifeWatch Corp: (Chicago IP Litigation Blog),
  • Continental
    Airlines: Continental Airlines settles patent dispute with inventor Ronald A
    Katz over interactive voice technology: (IP Law360),
  • Crocs –
    Cellect sues Crocs for patent infringement over plastic foam material used to
    make popular Crocs shoes: (IP Law360),
  • Dell – Dell
    granted summary judgment of noninfringement, upheld on appeal in patent case Computer Docking Station Corp v Dell, Gateway and Toshiba: (Patent Prospector), (IP Updates), (IPBiz), (IP Law360), (Patently-O),
  • Dell –
    Typhoon and Nova expand tablet PC patent suit against Dell to include Xplore
    Technologies Corp of America, Electrovaya, and Sand Dune Ventures: (IP Law360),
  • Dreamworks
    – CAFC applies doctrine requiring full enablement of broad claims, invalidating
    patent claims in Sitrick v Dreamworks:
    (IP Law360),
  • Dupre –
    Is printing call girl (Ashley Alexandra Dupre) photos fair use?: (Techdirt),
  • Epic –
    Epic Technologies accuses Freescale Semiconductor of patent infringement,
    breach of contract, unjust enrichment and trade sectret misappropriation: (IP Law360)
  • Ergotron –
    Court denies Ergotron’s motion for summary judgment of patent invalidity in its
    patent dispute with Mass Engineered Design: (EDTexweblog.com), (EDTexweblog.com),
  • Eros –
    Eros and Leatherwood settle copyright dispute over scripts for virtual sex in
    Second Life: (Ars Technica),
  • ETrade –
    Etrade sues two former employees and Bank of America subsidiary for allegedly
    misappropriating trade secret information to poach customers: (IP Law360),
  • General
    Motors – MHL TEK files patent infringement suit against major automakers
    including General Motors, Saturn, Ford, and Chrysler over tyre pressure
    monitoring technology: (IP Law360),
  • Georgia-Pacific
    – Georgia-Pacific Consumer Products sues Clorox Co and its subsidiary for
    patent infringement relating to wipes container: (IP Law360),
  • IBM – IBM
    patents real-time auto insurance surcharges: (Techdirt),
  • iParadigms (Turnitin) – Court rules that plagiarism detection is fair use in
    case brought by four students over use of archived student works: (Ars
    Technica    ), (IPBiz);
    (Patry
    Copyright Blog    ),
  • Lumenis – Lumenis sues four former employees and Alma Lasers Ltd for trade
    secret violations: (IP
    Law360    ),
  • Lumenis – USPTO to reexamine Lumenis patents, putting a freeze on litigation
    between Lumenis and Alma Lasers over laser-based cosmetic treatment systems: (IP
    Law360    )
  • Mattel – Supreme Court decision that arbitration awards should receive
    limited review by courts under federal law gets mixed reaction: Hall Street Associates LLC v Mattel Inc:
    (IP
    Law360    ), (IP
    ADR Blog    ),
  • Morris – Frances Morris and Morris Family Trust sue PC giants including
    Hewlett-Packard, Panasonic, and Sony Electronics for infringement of a patent
    relating to a modem-like method for transmitting and receiving analog signals
    and digital signals: (IP
    Law360    ),
  • New Line
    Cinema Corp – Summary judgment of no substantial similarity in copyright
    infringement case Tillman v New Line
    Cinema Corp     regarding screenplay scenes: (Chicago IP Litigation Blog)
  • News Corp
    – Cies Bisker LLC launches patent infringement suit against 3M, News Corp and
    others over advertisements printed on floors: (IP Law360),
  • Nilssen –
    Oke K Nilssen’s fluorescent-light patent suit against retailers including
    Costco Wholesale Corp, Ikea, Wal-Mart Stores and Home Depot dismissed for
    inequitable conduct: (IP Law360),
  • Oakley –
    Oakley sues Twentieth Century Fox Film Corp and Marvel Characters Inc for
    infringement of design patent relating to sunglasses on ‘Fantastic Four’ movie
    tie-in toy: (IP Law360), (Out-Law),
  • Paradise
    Canyon – Court rules in Paradise’ favour in its trade mark infringement and
    false advertising case against Integra Investments over its HIDDEN WOLF mark: (43(B)log),
  • Perricone
    – Celebrity doctor and author, Dr Nicholas Perricone’s skin care patents
    invalidated putting to rest his patent case against Medicis: (IP Law360),
  • Philips –
    Postverdict relief denied in patent portion of Avid v Philips: (EDTexweblog.com),
  • Rambus –
    Rambus stock soars following jury’s dismissal of antitrust and fraud charges
    from Hynix, Micron, and Nanya that Rambus rigged the playing field by getting
    patents on the SDRAM memory standard: (Patent Prospector), (Patently-O), (Techdirt), (IP Law360), (IP finance), (IPBiz),
  • Rambus –
    Rambus lawyers say the company will seek injunction preventing Hynix
    Semiconductor from designing memory chips that infringe its patent: (IP Law360),
  • RIAA – Cliff
    Thompson, sued by the RIAA for copyright infringement, asks Supreme Court to
    decide whether record labels should be forced to pay attorneys’ fees in cases
    where they voluntarily dismiss copyright infringement cases: (Ars Technica),
  • RIAA –
    RIAA fights having to pay legal bills of exonerated file-sharing defendant
    Tanya Andersen: (Ars Technica),
  • Rothschild
    – ITC begins investigation into whether numerous companies (including Hitachi,
    LG, Lite-On, Matsushita, Motorola, Nokia, Pioneer, Samsung, Sanyo, Sharp, Sony,
    Toshiba) infringed Dr G N Rothschild’s LED patents: (Ars Technica), (Techdirt), (Philip Brooks), (IPBiz),
  • Seagate –
    Seagate poised to assert patents if SDDs threaten the market position of
    conventional hard drive manufacturers: (Ars Technica), (Techdirt),
  • Silicon
    Laboratories – Integrated circuit makers Silicon Lab’s and Analog Devices
    settle long-running patent dispute: (IP Law360),
  • Sprint
    Nextel – Court rejects Sprint Nextel’s motion for summary judgment in patent
    infringement case brought by Enovsys relating to privacy safeguards for
    location-based cell phone services: (IP Law360),
  • STOP –
    Satellite Tracking of People LLC (STOP) sues rivals including Pro Tech
    Monitoring Inc, Omnilink Systems Inc and SecurAlert Inc for infringement of
    patent relating to GPS technology: (IP Law360),
  • Synthes –
    Judge dismisses patent dispute between Synthes and GM Dos Reis Jr Ind Com De
    Equip Medico finding the case lacks jurisdiction in California federal court: (IP Law360),
  • Synthes –
    Synthes overcomes Stryker’s objections and wins bid to stay clamp patent feud
    pending reexamination: (IP Law360),
  • Tessera –
    Connecticut Congressman Christopher Shays writes the Chairman of the ITC regarding
    stay of action pending PTO reexam while Tessera’s patents wither on the vine: (Patent Prospector),
  • Tooling
    Systems International – CAFC dismisses TSI’s allegations against UGS Corp regarding
    actions taken in Poland to enforce software licences, for lack of jurisdiction:
    (IP Law360),
  • Trainman
    Lantern Co – CAFC reverses preliminary injunction in lantern patent case
    finding no likelihood of success: A G
    Designs & Assoc LLC v Trainman Lantern Co Inc    : (Washington State Patent Law Blog),
    (Patently-O), (Patent Prospector), (IP Law360),
  • Volkswagon – AIPLA files amicus
    brief arguing that the Eastern District of Texas is hearing too many patent
    cases: In re Volkswagon: (Patently-O),
    (Patent
    Prospector    ),
  • Vygon – French company, Vygon,
    accuses a RyMed of infringing a patent for a connector that links an
    intravenous set with a catheter, even as RyMed has a separate suit pending that
    claims invalidity and noninfringement of the same patent: (IP
    Law360    ),
  • Wal-Mart –
    Court rejects Wal-Mart’s trade mark infringement claims against Charles Smith
    over use of phrases including ‘walocaust’ and ‘wal-qaeda’ on parody t-shirts
    and bumper stickers: (Techdirt), (IP Law360)

Formulating IP Strategy – enhancing assets

  Posted on March 27, 2008 By in IP Management

Chris Bowman (Professor of Strategic Management at Cranfield School of Management) wrote an interesting chapter in the Oxford Handbook of Strategy which is about formulating strategy.

Chris argues that successful strategy relies heavily on identifying and enhancing a firm’s strategic assets – those which help the firm to deliver value to customers.  (One might also describe strategic assets as those which deliver a clear competitive advantage.)

Enhancing strategic assets is clearly done by protecting the intellectual property associated with them.  Interestingly, though, strategic assets are often themselves intellectual property rights.

So how do you enhance an IP right?  The main thing is to keep coming back to the reason that it is strategic – the value it enables you to deliver to customers.  From an IP Strategy perspective then, enhancing the IP asset quickly becomes a program in understanding the essence of the value you deliver, and looking for ways to improve that value and to protect those improvements. 

As an example, this might be in the form of brand extensions into areas which are associated and highly important to customers.  All supported by trade mark, patent, design, copyright, etc rights as appropriate to the situation.

Brand Promise and IP Strategy

  Posted on March 26, 2008 By in Brands and Trade Marks + Pursue Excellence

As Brad VanAuken points out,a ‘Brand Promise’ is basically a compelling and differenciated benefit to the target audience.  This benefit essentially needs the following three qualities:

1 – it is extremely important to the target audience;

2 – your organization is uniquely suited to delivering it; and 

3 – competitors are not currently addressing it (nor is it easy for them to address it in the future).

Taking a step back for a minute, these are some pretty fundamental points.  If you are clever enough to actually achieve this, from a business strategy perspective, you’re really going to succeed.

From an IP perspective – sure – you had better protect those brands with a registered trade marks and appropriate use, etc.  Also, though even though this derives from a discussion about branding, it’s pretty easy to see how you can use intellectual property rights.  So for example, the core elements of this strategy – your unique ability to deliver something of extreme importance to yoru target audience (customers) – should be covered by patents and possibly registered designs, where appropriate.  As always, don’t stop there though.  Keep thinking deeply about, developing and improving this core (you will inevitably have to anyway, just to keep up with the market) – and keep filing new, relevant and robust IP rights to cover it.

IP Think Tank Global Week in Review – 21 March 2008

  Posted on March 22, 2008 By in Pursue Excellence

  3 Comments

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 me 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://thinkipstrategy.com/subscribe/

Highlights this week included:

Global

Global – General

  • WIPO Director General hails 125th anniversary of Paris
    Convention: (WIPO)

  • Global – Trade
    Marks / Domain Names / Brands
  • WIPO:
    domain ‘pradagirls.com’ registered in bad faith: (Class
    46    ),
  • INTA Advanced Trademark Symposium: (Report 1 – IPKat),
    (Report 2 – IPKat),
    (Report 3 – IPKat),
    (Report 4 – IPKat),
    (Report 5 – IPKat),
    (Report 6 – IPKat),
    (Report 7 – IPKat),
    (Catch Us
    If You Can!!!    ),
  • INTA roundtable on ‘Internet domain names: A
    trademark practitioner’s point of view’ – Manhattan,
    14 April: (The
    Trademark Blog    ),
  • INTA trade mark conference, Sydney: OHIM President offers to host
    roundtable to cut red tape facing businesses attempting to obtain worldwide IP
    protection: (IPwar’s)
  • Domain tasting: why are IP owners silent?: (IP finance),
  • ICANN proposes new anti-domain tasting solution: (Out-Law),
  • Three strikes, three countries:France, Japan
    and Sweden:
    (Electronic
    Frontier Foundation    )

Global – Patents

Global – Copyright

  • Sound
    copyright: (Creative
    Commons    ),
  • WIPO:
    Panellists outline strategies on exceptions and limitations to copyright: (Intellectual Property
    Watch    ),
  • WIPO
    Copyright Committee considers many proposals for 2008 Work Program: (IP
    Justice    ),
  • ISPs
    and P2P: (Michael
    Geist    ),
  • File-sharing,
    LimeWire, identity thieves, and 9-year-olds: Solutions are needed: (IPcentral.info),
  • WIPO
    panel sees tension between IP and human rights: (Intellectual Property
    Watch    ),
  • DRM
    gets another lease of life – reports that iTunes will launch scheme allowing
    unlimited downloads for a monthly fee: (IMPACT)

Pharma
& Biotech

Pharma & Biotech – General

  • Are
    generic medicines inferior compared to branded medicines?: (Generic
    Pharmaceuticals & IP    ),
  • EU:
    Counterfeit medicines in the EU: a new consultation: (Class
    46    )
  • Thailand US
    Trade Representative to ‘talk’ to Thai government: (Generic
    Pharmaceuticals & IP    ),

  • US:
    Cellectis SA files suit against Precision BioSciences, alleging infringement of
    two patents relating to materials used to make genome modifications in certain
    types of organisms: (IP
    Law360    ),

  • US:
    PharmaBiotech IP Summit 28-30 May, Philadelphia will address
    patent reform and its potential impact on IP practitioners within the pharmaceutical
    and biotech industries: (Patent
    Baristas    ),

  • US:
    Legislators introduce Follow-on Biologics Bill: (IP
    Law360    ), (Patent
    Docs    ),
  • US:
    Want generic biotech? You might wait 14 more years: (GenericsWeb),
  • US:
    Hypocrisy at FTCR?: (IPBiz),
  • US:
    Two remaining challenged WARF embryonic stem cell patents upheld in ex parte
    reexamination: (Holman’s
    Biotech IP Blog    ),

Pharma & Biotech – Products

  • Aricept
    (Donepezil) – USV wins appeal against USPTO decision: (Spicy
    IP    ),
  • Celerex
    (Celecoxib) – CAFC decision in Celebrex patents dispute between Pfizer and Teva
    will cut patent term by one and a half years: (Patent
    Baristas    ),

  • Inersan
    – Ranbaxy in-licenses Inersan to CD Pharma to market in India and Nepal: (Generic
    Pharmaceuticals & IP    ),

  • Lipitor
    (Atorvastatin) – Federal Court of Appeal in Canada upholds Lipitor enantiomer
    patent, Decision prevents launch of generic product by Ranbaxy until 2010: (SmartBrief),
  • Mircera (Methoxy polyethylene glycol-epoetin beta) – In defiance of Kinik, Federal Circuit rules 271(e)(1)
    safeharbour applies to ITC action against importation of product made by
    patented process: Amgen v ITC and Roche
    Diagnostics    : (Patently-O), (Patent Prospector), (IP Updates), (IP Law360), (Patent
    Circle    ),
  • Strattera (Atomoxetine) – US District Court of Virginia dismisses patent
    dispute between Eli Lilly & Co. and Synthon Laboratories despite objections
    from one of Synthon’s co-defendants facing similar claims in another district:
    (IP
    Law360    ),
  • Sutent
    (Sunitinib) / Tarceva (Erlotinib) – Roche expected to assert its right to
    attend compulsory license hearing at Delhi Patent Office: (Intellectual Property
    Watch    ),
  • Tarceva
    (Erlotinib) – Delhi High Court allows Cipla to continue manufacturing Erlotinib
    until a final ruling is given in its case against Roche: (Spicy
    IP    ), (Generic
    Pharmaceuticals & IP    ), (IP
    Law360    ),
  • TriCor
    (Fenofibrate) – 18 states and District of Columbia file lawsuit alleging Abbott
    Laboratories and Fournier Industrie et Sante conspired to delay a generic
    version of TriCor reaching the market by filing a series of frivolous patent
    infringement lawsuits: (IP
    Law360    ), (GenericsWeb),
    (Therapeutics
    Daily    ),
  • Uroxatral
    (Alfuzosin) – Sanofi-Aventis sues Wockhardt over Uroxatral patent in US: (IP
    Law360    ),
  • Valcyte
    (Valganciclovir) – US District Court dismisses Ranbaxy’s motion for summary
    judgment in patent infringement suit launched by Roche Palo Alto over Roche’s
    patent for Valcyte: (IP
    Law360    ),
  • XenaDerm
    – US District Court refuses to dismiss Healthpoint and DPT Laboratories’
    lawsuit accusing Allen Pharmaceutical and another of wrongly claiming their
    product is a generic equivalent of XenaDerm: (IP
    Law360    )

Africa

  • South Africa Supreme Court of
    Appeal decision on security of costs: D W Zietsma Electronic Media Network Limited: (Afro-IP),
  • Namibia Industrial Property Draft
    Bill circulated for comment: (Afro-IP),
  • Who owns ‘Africa money’?: (Afro-IP)

Australia

  • Professor Fitzgerald’s opinion article ‘It’s
    vital to sort out ownership of ideas’: (IP:KCE)

Brazil

Canada

China

  • Sobering thoughts from China IP
    protection statistics and projections: (IAM),
  • Obviousness under Chinese patent
    law: (IP
    Updates    ),
  • Interview with WorkTools cofounder
    regarding experience with Chinese and Taiwanese patents: (IP
    Dragon    ), (IP
    Dragon    ),
  • The IPR Crises: (Ezine
    @rticles    )

Europe

  • Eurostat publishes new edition of
    report ‘Science, Technology and Innovation in Europe’: (IPR-Helpdesk)
  • Data protection of children:
    ensuring consent as children mature: (Out-Law), (Techdirt),
  • COMMUNIA conference on public
    domain in the digital age – Belgium, 30 June to 1 July: (opencontentlawyer.com),
  • Martini SpA enjoys double victory
    against Martini & Rossi before the OHIM Board of Appeal: (Class
    46    ),
  • OHIM: Google fails to obtain pan-EU trade mark protection for ‘Gmail’ due to confusingly similar German trade mark (Class 46), (Ars
    Technica    ),
  • EC holding inquiry into trade mark
    system in Europe: (IPwar’s),
  • Results of OHIM User Satisfaction Survey
    2007: (Class
    46    ), (BLOG@IP::JUR)

France

  • More
    counterfeit goods seized in 2007: (Class 46),
  • News from
    patent attorneys and lawyers professions merger deliberations: (BLOG@IP::JUR)

Germany

  • Current issue of PMZ with Federal
    Patent Court statistics: (Class
    46    ),
  • German government unable to correct
    London Agreement implementation law in due time: (BLOG@IP::JUR),
  • German court tightens up ISP, phone
    data retention rules: (Ars
    Technica    )

India

  • Two Kerala rice varieties get GIs:
    (Spicy
    IP    ),
  • India considers Bayh-Dole type
    legislation: (IAM),
    (PLI),
    (Spicy
    IP    ),
  • ‘Gillette defence’ used in Indian
    patent case J Mitra and Co Pvt Ltd v
    Kesar Medicaments    : (International
    Law Office    ),
  • Content owners join forces to
    combat low revenue shares, piracy: (Content
    Sutra    ),
  • Indian government issues IP
    Enforcement Rules: (Spicy
    IP    ),
  • Spicy IP interview with Director
    General of CSIR, Dr Samir K Brahmachari: (Spicy
    IP    )

Ireland

  • Irish ISP, Eircom, sued by record labels over file-sharing by users: (Out-Law)

Israel

  • Israel
    rebukes US: Our copyright laws are fine, thanks: (Ars
    Technica    ), (IP
    Factor    ),
  • Trade
    mark for ‘Bladeless Razor’ rejected for descriptiveness: (IP
    Factor    )

Italy

  • Italian
    Supreme Court decides compatible bricks for Lego systems ‘not unfair competition’:
    (Class
    46    ),
  • Consorzio
    del Prosciutto di Parma crackdown on fake Parma hams sold in Italy: (Class
    46    )

Japan

  • ISPs to take on downloaders: (IPKat)

Lithuania

  • Supreme Court decision clears way
    for Lithuanian collecting society to claim levies from all Lithuanian importers
    of blank media: (IPKat)

Netherlands

  • District
    Court in The Hague dismisses trade mark claims brought by Andy Scott of British
    pop band The Sweet against Galaxy Music BV: (Class 46)

Norway

  • EFTA guidance on international exhaustion requested in L’Oreal Norge AS v Smart Club Norge AS: (Class
    46    )

Poland

  • No confusion between MAKROTERM and
    MAKRO: (Class
    46    ),
  • High fees for trade marks: (Class
    46    )

Serbia

  • New Serbian .rs domain name is a success: (Class
    46    )

Sweden

  • Sweden becoming less friendly to file sharing: (Techdirt),
  • Swedish Pirate Party rejects Swedish plan to enable courts to order ISPs to
    reveal IP addresses of file-sharers: (Ars
    Technica    )

Switzerland

United Kingdom

  • Yahoo! – UK decision on
    sponsored linking and trade mark infringement: (Rouse & Co International),
  • Worldwide
    piracy crackdown threatens ISPs: (IMPACT),
  • High
    Court overturns UKIPO decision to refuse computer program patent application in
    Symbian’s Patent Application, UKIPO
    announces it will appeal (equivalent patent granted by EPO): (IPKat), (Out-Law), (Peter Zura’s 271 Patent Blog), (IPEG), (Techdirt), (IP Law360), (IP Factor),
  • JK
    Rowling sues to block fan site’s Harry Potter book: (Out-Law),
  • DSS’s UK patent
    invalidated in European Central Bank v
    Document Security Systems Inc    : (IPKat),
  • Scottish
    Court hands down judgment in passing-off case Wise Property Care Limited v White Thomson Preservation Limited &
    Ors    : (IPKat),
  • Government
    must take data protection more seriously, says Parliamentary committee: (Out-Law),
  • Personal
    data: Information Commissioner to focus on reducing risk, not enforcement: (Out-Law)

United States

US
General

  • IP
    litigation at the ITC: Recent developments and best practices: (Philip Brooks)

US
Patent Reform

US
Patents

US Copyright

US
Trademarks

  • USPTO requires written description
    in application for trade marks containing non-standard characters: (IP
    Spotlight    ), (IP
    Updates    ),
  • New trade mark description rule to
    take effect 13 May 2008: (Daily
    Dose of IP    ),
  • Trade mark declaration audits for
    fraud remediation: (IP
    Updates    )

US
– Companies / Entities

  • Apple –
    Apple sued by Mirror Worlds over document streaming patents: (IP Law360), (Ars Technica), (IPBiz),
  • Barnes
    & Noble – Illinois federal judge allows infringement case against Barnes
    & Noble and Aeropostale to proceed after denying claims that MedCom USA’s
    patent for prepaid phone and gift card technology is invalid: (IP Law360),
  • BrainLAB
    – Although Medtronic’s patent suit was dismisses last year, the company faces a
    request from BrainLAB to pay $6M for legal fees: (IP Law360),
  • Cardica –
    Federal judge refuses to dismiss patent interference suit brought by Cardica
    against Integrated Vascular Interventional Technologies over patents covering
    an apparatus for minimally invasive bypass surgeries: (IP Law360),
  • Citigroup
    Credit Services – Court dismisses copyright case brought against Citigroup
    Credit Services and its counsel by FM Industries over program used to manage
    debt collection information: (IP Law360),
  • Citrix –
    Citrix wins stay in patent dispute with Communique, pending patent
    re-examination: (IP Law360),
  • Cook –
    Court rules endovascular grafts manufactured by Cook do not infringe Edwards
    Lifesciences patents: (IP Law360),
  • Dime
    Group International – Court stays Dime’s trade mark infringement claims pending
    international arbitration in Russia: Dime
    Group Int’l, Inc v Soyuz-Victan USA, LLC    : (Chicago IP Litigation Blog),
  • Dell – Dell
    fails to invalidate Mass Engineered Designs’ patent relating to multiscreen
    display units: (IP Law360),
  • Dupre –
    Spitzer call girl, Ashley Dupre, threatens news outlets over copyright: (Techdirt), (43(B)log), (Patry Copyright Blog),
  • eBay –
    Split decision for eBay refines internet trade mark infringement standards: Purfumebay.com v eBay: (Intellectual Property Law Blog),
  • Finjan –
    Finjan awarded $9 million upon finding that Secure Computing Corp willfully
    infringed three web antivirus patents: (IP Law360),
  • Guatanamera Cigars – TTAB decides
    GUATANAMERA geographically misdescriptive for cigars: Corporacion Habanos, SA v Guatanamera Cigars Co: (IP
    Updates    ),
  • IBM –
    Harry&David bring patent suit against IBM over WebSphere and Net Commerce
    software: (IPBiz),
  • ImagePoint
    – CAFC reverses noninfringement ruling in patent dispute over menu board
    technology: LSI Industries, Inc v
    ImagePoint, Inc    : (IP Law360), (Peter Zura’s 271 Patent Blog), (Patent Prospector),
  • iParadigms
    (Turnitin) – Court rules that plagiarism detection is fair use in case brought
    by four students over use of archived student works: (43(B)log),
  • Medsafe
    Technologies – Medsafe files suit against Becton Dickinson & Co and
    Retractable Technologies for infringement of safety syringe patent: (IP Law360),
  • Microsoft
    – Veritas invalidates Microsoft’s data base patent: (Washington State Patent Law Blog),
  • Motorola
    – USPTO refuses to register Motorola radio’s chirp as a trade mark: (IP Law360),
  • Nortel –
    Remittitur granted from $28 million to $11.82 million in QPSX patent case against
    Nortel: (EDTexweblog.com), (Patent Prospector), (IP Law360),
  • Nymex – Supreme
    Court denies petition for writ of certiorari filed by the New York Mercantile
    Exchange, affirming an appellate court’s ruling that Nymex’s settlement prices
    for oil and gas futures cannot be copyrighted: (IP Law360),
  • Palm –
    Canadian residents, Howard B Rosen and Robert M Nelson sue Palm for patent
    infringement relating to wireless phone automatic dialing technology: (IP Law360),
  • PharmaStem
    Therapeutics – High Court denies writ of certiorari in blood storage patent
    suit brought by PharmaStem against ViaCell: (IP Law360),
  • Qualcomm
    – Appellate judge refuses to block lower court’s permanent injunction barring
    Qualcomm from importing and selling chips and devices that allegedly infringe
    three Broadcom patents: (IP Law360),
  • RIAA – RIAA
    awarded $23,250, or $750 in statutory damages for each of the 31 songs named in
    the lawsuit, plus $420 in court costs: Atlantic
    v Anderson    : (Ars Technica),
  • RIAA –
    Tanya Andersen refiles class action against the RIAA alleging racketeering,
    fraud, illegal spying: (Techdirt), (The IP ADR Blog),
  • Sony –
    ITC probes Sony in LED patent case: (IP Law360),
  • Strom –
    District Court holds breached settlement agreement does not create patent
    jurisdiction in Strom v Strom Closures,
    Inc    : (Chicago IP Litigation Blog),
  • TiVo –
    Dish Network asks CAFC to reconsider damages award to TiVo for patent
    infringement: (IP Law360), (Patent Prospector),
  • Zimmer – Hudson
    Surgical Design sues Zimmer alleging infringement of two patents relating to
    knee replacement implants and surgical techniques: (IP Law360)

SpicyIP

  Posted on March 19, 2008 By in Pursue Excellence

Those familiar with it will surely agree that India-focussed SpicyIP blog is a force to be reckoned with in the IP blogosphere. 

I’m sad to let you know that I have officially stopped blogging with SpicyIP as of today.  I haven’t been able to post there for quite a few months due to time commitments, and I would be a fraud to keep my name there without making a substantive contribution.

All the best to the team – you’re doing a great job.

New Article – The wonderful world of patent drafting

  Posted on March 18, 2008 By in IP Management

  2 Comments

For anyone involved in patent litigation, it is abundantly
clear that the task of drafting these infernal documents is not for the faint
hearted. For their part, those who draft
patents are acutely aware of the pitfalls which await their clients should
there be a mere slip of the pen.  Here’s a link to a slightly longer intro to my recent Oxford JIPLP review article.

Please post any comments you have about the article as comments on this blog post.  I look forward to your comments.

The wonderful world of patent drafting

  Posted on March 17, 2008 By in IP Management

For anyone involved in patent litigation, it is abundantly
clear that the task of drafting these infernal documents is not for the faint
hearted. For their part, those who draft
patents are acutely aware of the pitfalls which await their clients should
there be a mere slip of the pen. This
commentator is daily involved in the pre-filing review and prosecution of
patents and, alongside clients, assisting lawyers in many countries with patent
litigation. I, for one believe that the
patent drafter must surely apply art and science in at least equal
measures. To learn and maintain these
skills is quite a task indeed.

Two recent books have done patent agents and patent attorneys
and their trainees a great favour by making substantial contributions to the
body of recorded knowledge on the subject of patent drafting. Paul Cole’s ‘Fundamentals of Patent Drafting’
published by CIPA, will surely go down in history as one of those legendary
works and a ‘must-have’ for every patent agent or patent attorney’s
library. Similarly, Gwilym Roberts’
book, “A Practical Guide to Drafting Patents” published in Sweet &
Maxwell’s EIPR Practice Series, is an extremely practical guide for those
wishing to learn more about this black art.

Read the full article, available for download at Oxford University Press’ Journal of Intellectual Property & Practice.

Speaking engagements – Generic Medicines – 20 May 2008

  Posted on March 17, 2008 By in Pursue Excellence

The Generic Medicines Australia conference was a big hit last year, and I’ll be speaking at the 2008 conference.

First up, I’ll participate in a panel discussion entitled “Patents vs. patients: examining the effect of patent legislation on the pharmaceutical industry”.

In a subsequent session, I will take the audience through what has been happening in India (and other countries) over the patentability of Glivec (Gleevec) crystalline forms and what it might mean for the future.

For those of you interested in the Australian pharmaceutical scene – I hope to see you there.

Duncan Bucknell

Insights & News

Duncan Bucknell