General Global Week in Review 27 July 09 from IP Think Tank

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Highlights this week included:

US: Kappos confirmation hearing set for 29 July (IP Watchdog) (IAM) (Peter Zura’s 271 Patent Blog) (Inventive Step)

US: More delays in Patent Reform Act likely as anti-lobby finds a powerful friend – Prof Scott Shane’s study indicates post-grant review could increase PTO pendency by 25% (IAM) (Peter Zura’s 271 Patent Blog) (Inventive Step)

Germany: Bundesgerichtshof decides Lego toy brick can no longer be registered as 3D trade mark (IPKat) (Class 46)

Poland: Depreciation for registered trade marks only (Class 46) (IP finance)

Global – General

Where to now in the age of intangibles? IP Think Tank podcast 16 July 2009 (IP Think Tank) (Tangible IP)

WIPO’s traditional knowledge talks fail after 9 years of negotiation (Spicy IP)

ACTA talks may open up, slightly (Intellectual Property Watch) (BLOG@IP::JUR)

WIPO members scrutinise draft 2010-2011 programme, budget (Intellectual Property Watch)

Innovation policy needs national focus, use of TRIPS obligations, panellists say (Intellectual Property Watch)

Time for an IP market share? (IP finance)

Lamy to meet with WTO membership on IP issues (GI extension, biological diversity); breakthrough unlikely (Intellectual Property Watch)

Global – Trade Marks / Brands

Rebecca Tushnet’s on whether cognitive science can justify dilution claims (Class 46)

Verb it up? Why becoming generic might be good for a trade mark (IPKat)

Good old days of counterfeiting in Hong Kong? – counterfeiting expanding (IP Dragon)

Global – Patents

RPX secures a new backer, but big challenges lie ahead (IAM)

New patent data/statistics/analytics website – Boliven Patents (Invent Blog)


Canada’s position on a WIPO Treaty for the Blind (Michael Geist)

Trademark protection: LEE vs L.E.I. (

Federal Court upholds distinctive surname mark dispute between competing family businesses: Miranda Aluminium v Miranda Windows and Doors (Global IP Watch)


Patently speaking: Failure to heed IP in China can be costly (IP Frontline)

Major breakthrough for Chinese companies in the patenting stakes (IAM)

Zhengzhou Intermediate People’s Court hears arguments in Pepsi’s trade mark infringement and unfair competition case against Henan 百事 (pronounced Bai-shi, PEPSI in Chinese) (S&F)

China owns most trade marks in the world (S&F)

China battles against counterfeiting, copyright violations (S&F)


Altria plans to boost Colombia cigarette brands (IP tango)


Cyprus trade mark statistics (Class 46)

Czech Republic

Czech Republic gets another protected beer appellation – Brněnské pivo or Starobrněnské pivo PGI (Class 46)


Copenhagen Maritime and Commercial Court recent decisions – scope of protection of Hermes’ Birkin bag trade marks (Class 46)


Metro newspaper franchise reaches Ecuador (IP tango)


New annuities payment regime in Egypt (Afro-IP)


Candidates for EPO presidency (BLOG@IP::JUR)

When will European industry learn the American lesson? (IAM)

Judicial partiality? Just try proving it… G-2/08 (PatLit)

MARQUES and other organisation take united position on the Cooperation Fund (Class 46)

EU communication on future of competition law framework for motor vehicle sector (BLOG@IP::JUR)

EU ‘Friends of the Presidency Group’ discussing non-agricultural geographic indications (BLOG@IP::JUR)

Scents and sense – or perfumes for peanuts? Selective distributions agreements and the cosmetic industry (IPKat)


Update on merger of professions of patent attorneys, attorneys at law (BLOG@IP::JUR)


Bundesgerichtshof decides Lego toy brick can no longer be registered as 3D trade mark (IPKat) (Class 46)

Munich court holds heirs of composer entitled to royalties from German ‘Kufstein Song’ and not the song’s publisher (IPKat)


Icelandic Parliament votes to join EU (IPKat)


Parliamentary report on the patent system – the good, the ugly and the doubtful (Spicy IP)

IPO’s latest note on power of attorney (Spicy IP)

Techdirt plays fast and loose with patent facts about India (IAM)

Indian intellectual property: The (differential) ‘price’ of protection (Spicy IP)

Managing Intellectual Property’s 50 most influential people in IP – the IP blogger (Spicy IP)


Nocciola Romano gets PDO protection for hazel nuts from Italy (Class 46)


Civil enforcement of copyright finally a reality in Nigeria: MCSN successfully sues Zain in connection with works used in advertisement and ringtones (Afro-IP)


Poland: against asking? – no ECJ referrals on trade mark cases (Class 46)

Depreciation for registered trade marks only (Class 46) (IP finance)

Krakow City seeks protection for Hejnał Mariacki as sound trade mark (Class 46)

Are the shoemaker’s children always ill-shod? Polish Ministry of Treasury registers figurative trademark in all class 01 to 45 (Class 46)


Swiss takes Feta hostage in PDO dispute (Class 46)

United Kingdom

UK IPO announces public consultation on proposed changes to patent fees (SOLO Independent IP Practitioners) (PatLit) (IPKat)

UK IPO booklet – ‘Patents: Deciding Disputes’ (PatLit)

EWHC dismisses Nokia’s application for judicial review of HMRC refusal to detain consignment of counterfeit phones: Nokia Corporation v Her Majesty’s Commissioners of Revenue & Customs (IPKat)

EWCA: When is it better not to have a trade mark?: Whirlpool Corporation v Kenwood Ltd (IPKat)

EWHC (Pat): EP 258 valid in Netherlands but not UK: Novartis AG and Cibavision AG v Johnson & Johnson Medical Ltd & Ors (IPKat)

EWHC (QB): When lawfully seized items can’t be retained under s 22 Police and Criminal Evidence Act 1984 (1709 Copyright Blog)

United States
US General

Obama IP vacancies (IP Frontline)

Kappos confirmation hearing set for 29 July (IP Watchdog) (IAM) (Peter Zura’s 271 Patent Blog) (Inventive Step)

Will USPTO money run out before FY 09 ends? (IP Watchdog)

Washington appellate courts starting to put briefs on the web (Seattle Trademark Lawyer)

US Patent Reform

More delays in Patent Reform Act likely as anti-lobby finds a powerful friend – Prof Scott Shane’s study indicates post-grant review could increase PTO pendency by 25% (IAM) (Peter Zura’s 271 Patent Blog) (Inventive Step)

Bipartisan questioning of patent reform in US Senate (IP Watchdog)

US Patents

USPTO published latest re-examination statistics (Peter Zura’s 271 Patent Blog)

Overview of USPTO proceedings for the re-examination of a US patent (Patently-O)

‘We are alive and well’ says Peer-to-Patent (IPKat)

The effectiveness of examiner interviews (Patently-O)

PTO inter partes re-examination may give insight on post-grant opposition (Inventive Step)

Another bad day for IP auctions – first ICAP Ocean Tomo auction (IAM)

Re: Patent backlog (E^(IP))

Discussion of D M Bey and C A Cotropia’s paper ‘The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard’ (Peter Zura’s 271 Patent Blog) (Patently-O) (Patently-O)

USPTO announces a ‘no decision’ regarding annual practitioner fee (Patent Docs) (Patent Docs) (Patently-O)

USPTO e-Office action program launches (Patent Docs) (Peter Zura’s 271 Patent Blog) (Filewrapper)

Avoid noncompliant appeal briefs – use the USPTO’s internal appeal brief compliance checklist (Patentably Defined)

Successful Fed Circuit mandatory mediation program takes a patent dip in first half of ’09 (IP ADR Blog)

Priority claims in issued patents (Patently-O)

Catching up with Scott Harris (The Prior Art)

National Association of Patent Practitioners annual meeting (IP Watchdog)

US Patents – Decisions

CAFC: When the infringing device only temporarily meets the claim limitations: Gemtron v Saint-Gobain (Patently-O) (Gray on Claims)

CAFC: Inventorship: conception does not require scientific certainty; rather, ‘proof that the invention works to a scientific certainty is reduction to practice’: University of Pittsburgh v Marc Hendrick (Patently-O) (Gray on Claims)

District Court N D Illinois awards almost $2.5M in sanctions for NPE asserting unenforceable patents: Nilssen, et al v. Wal-Mart Stores Inc, et al (Peter Zura’s 271 Patent Blog)

District Court N D Illinois: Inventor/plaintiff’s Managing Director not given highly confidential technical information: McDavid Knee Guard Inc v Nike USA Inc (Chicago Intellectual Property Law Blog)

District Court E D Pennsylvania: Warsaw Orthpedic awarded $2M in Globus patent dispute (Patent Docs)

District Court E D Texas: ‘I have good cause but it’s a secret’ – motion for leave to amend PICs denied: Hill v Abercrombie & Fitch (

District Court Massachusetts judge considers scope of design patent Markman hearing post-Egyptian Goddess: DePaoli v Daisy Mfg Co (TTABlog)

BPAI finds broadest reasonable construction of ‘fixed’ includes both direct and indirect connections: Ex parte Carranza (Gray on Claims)

BPAI reverses rejection based on 75-year-old reference and broad dictionary definition of ‘strap’: Ex parte Smith (Gray on Claims)

USPTO: Swift overcomes obviousness rejections to obtain small wind turbine patent (Green Patent Blog)

US Patents – Lawsuits and strategic steps

HandyLab – HandyLab files declaratory judgment action against Caliper Life Sciences alleging 13 Caliper patents relating to microfluidics are invalid and unininfringed by HandyLab’s products and activities (Holman’s Biotech IP Blog)

Wal-Mart Stores – Wal-Mart, Best Buys and other named in patent case brought by Changzhou Asian Endergonic Electronic Technology Co over dash board mounts for navigation devices (S&F)

US Copyright – Decisions

District Court S D New York: Statutory damages award in default copyright infringement case relating to karaoke machines: Karen Manno v Tennessee Productions Center (The Trademark Blog)

District Court S D New York: Damages from contempt of preliminary injunction order in copyright and trade mark infringement case: Atlantic Recording Corp v BCD Music Group (The Trademark Blog)

District Court Colorado: Copyright and ratings: Health Grades v Robert Wood Johnson University Hospital (Patry Copyright Blog)

US Trade Marks – Decisions

CAFC affirms TTAB’s genericness refusal of HOTELS.COM: In re LP (TTABlog)

District Court E D New York: JAPONAIS: identity beyond coincidence, preliminary injunction granted: Roy Tuccillo v Geisha NYC dba Japonias and OSSS Hospitality (The Trademark Blog) (Las Vegas Trademark Attorney)

TTAB precedential no 28: TTAB affirms 2(e)(5) functionality refusal of bicycle spoke design: In re Rolf Dietrich (TTABlog)

TTAB precedential no 29: TTABstrikes testimony of witness not identified in pre-trial disclosure: Jules Jurgensen/Rhapsody, Inc v Peter Baumberger (TTABlog)

TTAB precedential no 30: TTAB okays warranty services for applicant’s goods sold under third party marks: In re Husqvarna (TTABlog)

TTAB says SKINNY CEREAL merely descriptive of cereal products: In re Peace Mountain Natural Beverages Corp (not precedential) (TTABlog)

TTAB grants request for reconsideration: In re O’Rouke-Nicaud Ventures LLC (not precedential) (TTABlog)

TTAB says prepositional difference in marks not enough to avoid 2(d) refusal: In re Nine Dots LLC (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Tropicana Las Vegas – TLV files declaratory relief action against Aztar, Tropicana Entertainment to keep using TROPICANA name (Las Vegas Trademark Attorney) (Property, intangible)


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