General Global Week in Review 8 May 09 from IP Think Tank

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

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

You can separately subscribe to the IP Think Tank Global Week in Review at the Subscribe page:

Highlights this week included:

USTR releases Special 301 Report ‘Priority Watch List’ (Public Knowledge) (Intellectual Property Watch) (Patent Docs) (I/P Updates) (IP Dragon) (Afro-IP) (Michael Geist) (Excess Copyright) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Ars Technica) (At Last… the 1709 Copyright Blog) (Michael Geist) (The IP Factor) (TorrentFreak)

US government still blocking information on ACTA (EFF) (Public Knowledge) (Michael Geist) (Ars Technica)

Alison Brimelow to quit as EPO President (IAM) (IPKat) (BLOG@IP::JUR)

Beware Mumbaikers: The Slumlord’s Act could detain you for a year for simply buying a pirated DVD (Spicy IP) (At Last… the 1709 Copyright Blog)

Global – General

USTR releases Special 301 Report ‘Priority Watch List’ (Public Knowledge) (Intellectual Property Watch) (Patent Docs) (I/P Updates)

International Intellectual Property Alliance on Special 301 Report: ‘China and Russia remain major concerns for copyright industries’ (IP Dragon)

USTR Special 301 Report – Algeria and Egypt only African countries on priority watch list (Afro-IP)

Valuation of IP (Pat Sullivan’s Blog)

Intangible valuation myths – an author responds (IAM)

NN Prasad appointed as Chief of Staff to WIPO DG (Spicy IP)

WIPO members move ahead on development agenda implementation (Intellectual Property Watch)

Global – Trade Marks / Brands

TTABlogger and Jeremy Phillips on IP Think Tank podcast discussing bona fide intent and fraud and how they impact foreign trade mark owners (TTABlog)

2009 edition of Brandz report (Class 46)

Global – Patents

Patent update and comparisons between the United States and Europe IP Think Tank podcast 4 May 2009 (IP Think Tank)

James Pooley nominated as WIPO Deputy Director General for Patents (IP Watchdog) (Hal Wegner)

WIPO pushes members on Patent Treaty compliance; US wants PCT II (Intellectual Property Watch)

PCT II – A step toward a ‘world patent’? (BLOG@IP::JUR)

CAFC Judge Rader: ‘Stronger IP system allows countries to compete in world marketplace’ (PatentlyBIOtech)

Professor Mossoff’s historical paper about patent thickets, patent trolls and patent pools: relevant today (IP Dragon)

The balance between standards and patent regulation (IP Frontline)

Patents in a bear market (IP Solutions)

Full Federal Court: Commonsense approach to trade mark use and the beer/wine dichotomy confirmed: E&J Gallo Winery v Lion Nathan Australia Pty Ltd (International Law Office)

Australian patent litigation – stronger, quicker, cheaper (PatLit)


US targets Canada over copyright in Special 301 Report (Michael Geist) (Excess Copyright) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Michael Geist) (Ars Technica) (At Last… the 1709 Copyright Blog) (Michael Geist)

Copyright Board oral hearing on definition of ‘sounds recording’, 7 May 2009 (Excess Copyright)

CIPO releases 2009-2010 Business Plan (Canadian Trademark Blog)

Science, Technology and Innovation Council releases first State of the Innovation Nation, 2008 benchmarking Canada’s science, technology and innovation system (Michael Geist)

Federal Court: No likelihood of confusion between GLAMOUR for magazines and GHOULISH GLAMOUR for Halloween cosmetics: Advance Magazine Publishers Inc v Farleyco Marketing Inc (Canadian Trademark Blog)


Special 301 Report out – China still on priority watch list (China Hearsay)

Supreme People’s Court guidelines promise tougher IP rights enforcement (International Law Office)

Supreme People’s Court promulgates ‘Interpretation on the Application of the Law Concerning Several Issues Regarding the Trials of Civil Disputes Relating to the Protection of Famous Trademarks’ (China Law Insight)

Knockoff phones explode and not just the volume (IP Dragon)

Chinese patentees turn increasingly to litigation (PatLit)

No 1 patented bus infringement case between Neoplan and Chinese defendants Yanchengzhongwei, Zhongda Industrial Group and Beijing Zhongtongxinghua decided by the Court of First Instance, defendants appeal (Panawell & Partners)

Patent invalidation proceeding expectedly to be concluded before the PRB within 6 months from the date of docketing (Panawell & Partners)

Trade mark examination in China accelerated (Panawell & Partners)

Newly amended measures for the implementation of the Regulations of IPR Customs Protection with be effective 1 July 2009 (Panawell & Partners)

Amended Implementation Regulations of the Patent Law will be published and coming into effect soon (Panawell & Partners)

Huawei Technologies tops the list of PCT applications filed in 2008 (Panawell & Partners)

2008 witnessed big increase of foreign-related trademarks cases investigated by AICs (Panawell & Partners)

Patent filings hit 5 million in 2008 (Panawell & Partners)

Chinese Supreme Court received record-high 270 IP petitions for re-hearing in 2008 (Panawell & Partners)

East Africa

Urgent action required as counterfeiting expected to increase (Afro-IP)


ECJ rejects SAFETY 1ST mark: Dorel Juvenile, Inc v OHIM (Class 46)

ECJ: PAGO – is Austria ‘substantial’?: PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH (IPKat)

ECJ to hear Volker Merkel & Ors v OHIM – Is PATENTCONSULT the new BABY-DRY? (IPKat)

CFI: Sausage configuration over-analysed to death in unsuccessful CTM application: Thomas Rotter v OHIM (IPKat)

Alison Brimelow to quit as EPO President (IAM) (IPKat) (BLOG@IP::JUR)

18 staff layoffs at the EPO (BLOG@IP::JUR)

NewsTimes article: European damages ‘equal legal fees’ (PatLit)

Business method patents in Europe are alive and kicking (IAM)

It’s going to get harder to obtain a European patent. Will this lead to US-style confrontation? (IAM)

European Audio-Visual Observatory publishes paper ‘An Introduction to Music Rights for Film and Television Production’ (At Last… the 1709 Copyright Blog)

PGI/PDO applications and amendments: Redykolka cheese from Poland; Spanish meat product Jamón de Teruel; Polish cheese Wielkopolski ser smazony; Hungarian meat product Budapesti téliszalámi (Class 46) (Class 46)

What is a ‘covenant not to sue’? (IPKat)

What a bargain! CTM prices drop 40% (The Gray Blog)


French approach to interpretation of patent claims (International Law Office)


Parallel imports and exhaustion: A different framework for copyrights?: Warner Bros v V G Santosh (Spicy IP)

Where do we go? Chennai Live 104.8 FM asks the Madras High Court: Indian Performing Rights Society Ltd & Ors v Branch Manager, Muthoot Finance Private Limited, Chennai & Ors (Spicy IP)

Bombay High Court: Use of inventions for government purposes: Garware Wall Ropes v A I Chopra Engineers & Contractors, Konkan Railway Corporation (IP Frontline)

Beware Mumbaikers: The Slumlord’s Act could detain you for a year for simply buying a pirated DVD (Spicy IP) (At Last… the 1709 Copyright Blog)

Will there be an Indian form of IP practice? (IP finance)

Ramkumar ‘dual sim’ case: Micromax obtains declaratory judgment (Spicy IP)

Murder potentially linked to Ramkumar v Samsung patent war (Spicy IP)

Geographical indications registry admits more products (International Law Office)


Israel remains on Special 301 Priority Watch List (The IP Factor)

Israel Patent Office allows two companies to register same trademark (The IP Factor)


The case for formal registration and deposit of copyright works (International Law Office)


Supreme Administrative Court legitimate interest interpretations: Cassation complaints by Gemi and Nestle (Class 46)

South Africa

The Gap trade mark litigation – ruling on joinder and claims amendments (Afro-IP)


Supreme Court on trade mark dilution – BIO for dairy products (Class 46)


IP law amendments implements Enforcement Directive (International Law Office)


Swiss Federal Administrative Court upholds refusal to register GB on the basis that the abbreviation ‘GB’ was a geographical indication (Class 46)

Panton Chair: The end of the three-dimensional trade mark? (International Law Office)


Ukraine signs up to figurative marks agreement (Class 46)

United Kingdom

Following on the heels of Joe Satriani, Yusuf Islam (formerly Cat Stevens) accuses Coldplay’s ‘Viva La Vida’ of borrowing from his earlier song ‘Foreigner Suite’ (At Last… the 1709 Copyright Blog)

Affordable legal route for victims of infringement? – Private prosecution (At Last… the 1709 Copyright Blog)

British MPs angry at TV programme product placement ban (IP finance)

Government plans tenfold increase in penalties for criminal breaches of IP law (Out-Law)

United States
US General

Who will be the next PTO Director; new name, Mike Kirk, enters the frame (Inventive Step) (IAM) (Promote the Progress) (Patently-O) (Hal Wegner)

Government still blocking information on ACTA (EFF) (Public Knowledge) (Michael Geist) (Ars Technica)

Obama pledges 3% of GDP to science research (IP Watchdog)

US Patent Reform

US first-to-file price tag: $10 million (Intellectual Property Watch)

House Republican High-Tech Working Group writes letter to House Speaker Pelosi in support of US patent reform (PatentlyBIOtech)

Federal Reserve Chairman Benanke: patent reform as encouraging innovation (Promote the Progress)

House panel not going to ‘rubber stamp’ Senate bill (Inventive Step)

Patent reform stalls in Senate – a silver lining? (IP Frontline)

Will proposed new post-grant review procedures invite abuse? (Patent Baristas)

US Patents

USPTO begins pilot program with German Patent Office (Patent Docs)

Should Intel really lose the right to control its own patent portfolio? (Response to comments by Andy Grove) (IAM)

FTC talks about ‘public notice’ function of patents – not that it exists or anything (The Prior Art)

BPAI judges get patent attorney clerks (IP Watchdog)

Rogue administrative patent judge criticism of PTO Board; Board appointments challenges (Hal Wegner)

What recession? Seattle patent cases exploded from Feb to Apr 2009 (Washington State Patent Law Blog)

US Patents – Decisions

US: Supreme Court rules 9-0 that CAFC has jurisdiction to review case remanded by district court to state court: Carlsbad Technology Inc v HIF Bio, Inc et al (Managing Intellectual Property) (Patently-O)

CAFC applies Phillips to limit gift card claim construction: Every Penny Counts v American Express, Visa, Green Dot, MasterCard, First Data (Patently-O)

CAFC: Pointing out the problem to be solved or objects of the invention: Revolution Eyewear v Aspex Eyewear (Patently-O) (Hal Wegner)

CAFC reverses trial court’s abuse of discretion through failure to proscribe new evidence: Axiom Resource v United States (Hal Wegner)

CAFC: The importance of carefully drafting an IP assignment document: Euclid Chemical Co v Corrosion Tech (IP Spotlight)

District Court E D Texas: Jury’s royalty rate quadrupled after judgment: Paice LLC v Toyota Motor Corp (IP Frontline)

District Court W D Washington: Fees denied to K2 in short, fat ski case: Paul N Nelson v K2 (Washington State Patent Law Blog)

BPAI: Inter partes reexam appeal to the Federal Circuit?: Shimano v Patent of Sram Deutscheland (Hal Wegner)

BPAI tightens use of declarations in overcoming obviousness rejections: Ex Parte Jella (Peter Zura’s 271 Patent Blog)

ITC enters final determination affirming s 377 violation, infringement (direct and induced) of Funai’s patent relating to digital televisions (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Bilski – PTO files brief opposing certiorari in Bilski (Inventive Step) (Hal Wegner)

Farouk System – ITC declines review of initial determination in investigation brought by FS relating to hair irons (ITC 337 Law Blog)

General Electric – ITC decides not to review initial determination on economic prong in investigation relating to variable speed wind turbines (ITC 337 Law Blog)

Hillcrest Laboratories – ITC denies motion for summary determination that licensing activities satisfy domestic industry (economic prong) requirement in investigation concerning video games (ITC 337 Law Blog)

John Mezzalingua Associates– ITC decides not to review initial determination in enquiry brought by JMA against Fu Ching Technical Industry Co and Gem Electronics over coaxial cable connectors (ITC 337 Law Blog)

Qimonda – ITC denies LSI’s motion for summary determination regarding invalidity in matter concerning semiconductor integrated circuits (ITC 337 Law Blog)

Rothschild, Prof Gertrude – ITC to investigate six more Rothschild LED patent accused infringers Chi Mei Lighting, Tekcore, Toyolite Technologies, Tyntek, Visual Photonics Epitaxy and Xiamen Sanan Optoelectronics (Green Patent Blog)

SPH America – ITC institutes investigation regarding wireless communication devices in response to complaint from SPH against Kyocera MetroPCS, Sprint Nextel, America Movil, TracFone and Virgin Mobile (ITC 337 Law Blog)

Whirlpool – ITC to review initial determination in investigation of LG importation and sale of refrigerators and refrigerator components (ITC 337 Law Blog)

US Trade Secrets

California Court of Appeal: Trade secret identification under California statute need not always include differentiation from skill in the art: Brescia v Angelin (IP Law Observer)

District Court N D Illinois barely denies motion to dismiss for delayed interrogatory answers in trade secrets case: UTStarcom v Starent Networks (Chicago Intellectual Property Law Blog)

US Copyright

‘This house believes existing copyright laws do more harm than good’ Economist debate (Michael Geist)

US Trademarks

No end in sight to decline in US trade mark applications, says Commissioner (IAM)

US Trade Marks – Decisions

TTAB precedential no 18: Refusing to read limitations into cited registration, TTAB affirms 2(d) refusal of WAVE for recreational trailers: In re Thor Tech, Inc (TTABlog)

TTAB: No famous marks doctrine: Bayer Consumer Care v Belmora (precedential) (I/P Updates)

TTAB: BIG O TIRES challenge to BIGG WHEELS for automobile wheels goes flat: Big O Tires, LLC v Wheel Specialities LTD (not precedential) (TTABlog)

TTAB finds design of MOI putter head functional under section 2(e)(5): In re Karsten Manufacturing Corporation (not precedential) (TTABlog)

TTAB clarifies requirements for intent-to-use application based on foreign registration: Honda Motor Co v Friedrich Winkelmann (I/P Updates)

CAFC hears oral argument in Bose fraud appeal: Bose Corp v Hexawave (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Arrow Productions – Adult film companies Arrow Productions and VCX embroiled in copyright and trade mark battle over ‘Deep Throat’ (Las Vegas Trademark Attorney)

Gucci – Gucci files trade dress complaint against Guess? over green-red-green stripe design (The Trademark Blog)

Tampa Bay Rowdies – The Tampa Bay Rowdies don’t own the TAMPA BAY ROWDIES mark? (The Trademark Blog)



2 Comments on “General Global Week in Review 8 May 09 from IP Think Tank

%d bloggers like this: