IP Think Tank Global Week in Review, General Edition – Friday, 21 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:

USPTO releases ‘FY2008 Performance and Accountability Report’; claims success despite backlog (Managing Intellectual Property) (Law360) (Patent Librarian’s Notebook) (Patent Docs) (Peter Zura’s 271 Patent Blog) (Patent Prospector)

USPTO transition team appointed (Managing Intellectual Property) (Intellectual Property Watch) (Patent Docs) (Patent Prospector) (Peter Zura’s 271 Patent Blog)

Article One Partners to use crowdsourcing and bounties to uncover invalid patents (Ars Technica) (Techdirt) (Philip Brooks’ Patent Infringement Updates) (IP Frontline) (Patent Prospector) (Peter Zura’s 271 Patent Blog)

Graham analysis not necessary for obviousness-type double patenting rejection: In re Baselle Poliolefine Italia (Patently-O) (I/P Updates) (Patent Prospector) (Peter Zura’s 271 Patent Blog) (Patent Baristas)


Global – General

IP and the credit crunch: hot topics for the financial freeze (IP finance)

Credit crunch highlights need for strong IP rights (Managing Intellectual Property)

IP management and budget cuts: have your cake and eat it too! (Financial Aspects of Intellectual Property)

Climate change and Millenium Development Goals top agenda during UN Secretary General’s visit to WIPO (WIPO)

Global – Trade Marks / Brands

What every marketing department needs to know about trade marks (IP Spotlight)

Forbes 2008 list of ‘Top-earning Dead Celebrities’ (Seattle Trademark Lawyer)

Trade mark protection, broadcast rights vital for sports, say stakeholders (Intellectual Property Watch)

How many drafts until you get your logo right? (Innovationpartners)

Global – Patents

Improving the global patent system needs buy-in from the C-suite and political leaders (IAM)

Trilateral group meet in The Hague; under new pressure to harmonise patent processing (Intellectual Property Watch) (IP Menu News)

IP model proposed for the North-South nanotechnology divide (Intellectual Property Watch)

Global – Copyright

Wrangling over the rights of the blind (Public Knowledge)


The Statesman (Ghana) reports piracy is most visible barrier to success of African musical talent (Afro-IP)


WIPO/Indonesian government host conference in Bali to examine role of creative industries in Asia (WIPO)


The IP marketplace and patent reform – implications for patentees, VCs and the economy (IPRoo)

IP Australia patent searching update – change to operation of Patsearch (IPRoo)

‘Confidential information and trade secrets: When is a trade secret in the public domain?’ paper by Graeme Clark SC (IP Down Under)

Full Federal Court decision concerning brand reputation in context of ‘lookalike’ products and famous brands: Hansen Beverage Company v Bickfords (Australia) Pty Ltd (Mallesons Stephen Jaques)

Federal Court holds that grace period applicable to a ‘parent patent’ is different to that of its divisional ‘child’: Mont Adventure Equipment v Phoenix Leisure Group (IP Down Under)

Design valid but not infringed: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (IP Down Under)

Diana Ferrari loses bid to stop luxury sports car brand Ferrari registering Ferrari marks for retailing services and new range of watches, clocks, jewellery and accessories (IP Down Under)


Copyright reform back on the legislative agenda (Michael Geist)

Speech from the Throne on competition, copyright and trade (Excess Copyright)

Industry Minister Tony Clement on copyright reform (Michael Geist)

Flattery is still infringement: use of Energizer Bunny in Gordon DeRosa’s re-election campaign (Canadian Trademark Blog)

Canada rated second best global brand in 2008 FutureBrand Country Brand Index (Canadian Trademark Blog)

Canadian government relaunches ACTA consultations (Michael Geist)

Local councillor claims copyright in university name (Michael Geist)


Intellectual property in daily life Beijing (IP Dragon)

Transitional review mechanism of China’s TRIPs implementations Q&A copyright law (IP Dragon)

Tips on IP litigation in China (Managing Intellectual Property)

Supreme People’s Court: Severely punishing IP-related criminals (DeBund)

Judicial criteria for copyright cases (DeBund)

Shanghai Intellectual Property Arbitration Center recently launched offering new channel to solve IP disputes, file lawsuits and lodge complaints to government departments (DeBund) (Panawell & Partners)

Owner of international fashion brand ‘Montagut’ wins trade mark lawsuit filed in Shanghai High People’s Court against a Shanghai laundry service and manufacturer (DeBund)

Online application for trade mark registration entitled to 20% discount (DeBund)

China’s Supreme Court hearing more and more IPR cases (Panawell & Partners)

China and US sign Memorandum for Copyright Strategic Cooperation (Panawell & Partners)

Draft Implementing Regulations of the Chinese Patent Law published for public opinion (Panawell & Partners)

Courts across country concluded 130,000 IPR cases in first instance (Panawell & Partners)

SIPO and USPTO sign Memorandum of Cooperation in Beijing (Panawell & Partners)

Administrations for Industry and Commerce across China investigated 21,045 trade mark offences in the first half of 2008 (Panawell & Partners)

First IP case protested by Supreme Public Prosecutor concluded in Beijing (Panawell & Partners)

China’s top legislature finished the first reading of the draft Patent Law (Panawell & Partners)

Major changes in the draft of the Chinese new Patent Law (Panawell & Partners)

Costa Rica

Costa Rica decriminalises IP offences (IP tango)


Risk of confusion ruled in shoe strip case: PUMA AG Rudolf Dassler Sport v Netto A/S (International Law Office)



ECJ hearing on royalty payment reference: Falco Privatstiftung and Thomas Rabitsch v Gisela Weller-Lindhorst (IP finance)

Court of First Instance rules in application to annul decision of CPVO’s Board of Appeal that "candidate variety" could not be clearly distinguished from a reference variety: Schräder v Community Plant Variety Office (IPKat) (Further note on this post and confusing IP language – IPKat)


Europe fails once again as national self-interest stymies Community patent and court progress (IAM)

Hopes for a single European patent jurisdiction fading fast (IAM)

The EPO referrals: what’s really going on? (IPKat)

EU favours disclosure of computer patents before standards are set (Intellectual Property Watch)

Trade Marks

Court of First Instance finds RAUTARUUKKI fails to satisfy acquired distinctiveness criterion: Rautaruukki Oyj v OHIM (Class 46)

Court of First Instance finds original signature of famous Italian lutist Antonio Stradivari, in arte Stradivarius, of the 17th century, cannot be read by relevant consumers: T340/06 (Catch Us If You Can!!!)

Court of First Instance rejects Lego’s appeal against OHIM’s Board of Appeals decision that Lego brick shape not registrable as a Community trade mark (Ars Technica) (Techdirt)

OHIM opposition quality standards – the Office responds (IPKat)

Charlie McCreevy puts forward proposal to reduce CTM fees by about 40% (Managing Intellectual Property) (Class 46)

New protected geographical indications: French PGI Boeuf de Bazas for fresh meat and offal; Finnish PGI Kainuun rönttönen for breads and other baker’s wares (Class 46)


French judge finds producers of film ‘Syriana’ did not plagiarise Stephanie Vergianault’s screenplay (Law360)


German Federal Supreme Court (Bundesgerichtshof) hands down headnote concerning partially identical composite marks in its SIERRA ANTIGUO decision (Class 46)

Polar bear cub trade marks in Germany: a definitive analysis (Class 46)


Indian copyright collecting societies and foreign royalties: whither transparency? (Spicy IP)

Both Hindi cinema and theatre are accused of copyright infringement by relatives of dead authors (Spicy IP)

Dispute between Bisleri and Coca-Cola over ‘Maaza’ trade mark ends up in Delhi High Court (Spicy IP)

Geographical indications: the BASMATI wrangle (International Law Office)

Foreign geographical indications enter India: (Spicy IP)

Trade mark search essential to reveal deceptively similar trade marks (International Law Office)

Outsourcing patent related services from India – market report (Competitive Info)


Jerusalem District Court dismisses claims brought by Ketuvim Almog against Or Vishua Yeshiva for infringement of publisher’s rights in indexed edition of the Mishneh Torah (The IP Factor)


Japan overhauls patent application system (IP Menu News)

Patent granted in 17 days in Japan (Managing Intellectual Property)


Princess Sumaya calls for establishing ‘Jordanian innovation system’ (Tech Transfer Blog)


Macedonia accedes to European Patent Convention (Daily Dose of IP)


Foreign trade mark rejected as descriptive? Don’t give up (International Law Office)


Morocco hopes to benefit from Iranian technology expertise (Afro-IP)


Medical aid association Eerste Hulp Bij Ongelukken loses trade mark infringement summary proceedings before Presiding Judge of the District Court in The Hague against first aid material wholesaler MF Medical & Safety BV (Class 46)

Plasma & Materials Processing research group at Eindhoven University of Technology, awarded Leverhulme Technology Transfer Award for 2008 for knowledge transfer to solar energy industry (Tech Transfer Blog)


Stakeholders in the film industry tackle piracy (Afro-IP)

Nigeria and the Special Case if the USTR Special 301 Report (Part 1 – IP’s What’s Up) (Part 2 – IP’s What’s Up)


Principles of merchant’s honesty in trade mark cases (Class 46)

South Africa

Deputy Trade and Industry Minister Rob Davies fake goods speech – problem (Afro-IP)

Who has the right to Mandela brand naming? (NameWire)


‘Information orders’ to improve protection of IP rights holders (International Law Office)

United Arab Emirates

Dubai Court of Cassation rules on trade mark registration of names (International Law Office)

United Kingdom

CambridgeIP research reveals UK patent leaders (Managing Intellectual Property)

UKIPO issues press release: ‘Destruction of patent documents filed at the Office’ (IPKat)

Local politicians oppose Liverpool Football Club’s application to register Liverbird element of its famous emblem as a UK trade mark (IPKat) (The IP Factor)

Cornish All Blacks rugby team seek registered trade mark protection for their name (The IP Factor)

Armour v LeisureTech: British obviousness test, why not the EPO approach? (Hal Wegner) (IPKat)

Professor Branestawm wins a temporary reprieve: Blacklight Power v Comptroller General of Patents (IPKat)

IP management and UK universities – aims, objectives, incentives (IP finance)

United States

US General

US elections, global economy are major challenges for US IP Association (Intellectual Property Watch)

Change to come slowly for Office of Solicitor General under Obama (Law360)

Under Obama, IP reforms may still come slow (Law360)

Gregory B Craig to serve as Obama White House Counsel (Law360)

Washington Legal Foundation ‘Conversations With’ series: ‘The Changing Legal Landscape for Intellectual Property’ (Patent Docs)

How long does patent and trade mark prosecution take? (IP Spotlight)

US General – Lawsuits and strategic steps

Grow Co – New Jersey appeals court allows Grow Co to pursue trade secrets case against Pharmachem Laboratories (Law360)

Thompson Reuters – Reuters asks bankruptcy court for compensation for any of its services and intellectual property that might be included in transition services agreement between Lehman and its European branches (Law360)

US Patent Reform

‘US Patent Reform – the 2009 Landscape’ TACPI conference presentation (Hal Wegner)

‘Working inventory’ and the 1.2 million case PTO backlog – a creative way to cut the backlog by 450,000 cases (Hal Wegner)

Chamber of Commerce releases draft report outlining proposed solutions to USPTO problems (Patent Prospector)

USPTO transition team appointed (Managing Intellectual Property) (Intellectual Property Watch) (Patent Docs) (Patent Prospector) (Peter Zura’s 271 Patent Blog)

Secretary of Commerce names new members names of Patent Public Advisory Committee: Marc Adler, Stephen Pinkos and Maureen Toohey (Patently-O) (Law360)

Shana Winters as Director of PTO: Professor Dennis Crouch’s analysis (Hal Wegner)

‘Ten step inter partes patents re-examination reform’ (Hal Wegner)

USPTO v Tafas & GSK appeal (PLI) (PLI)

Patent reform: Next stop should be USPTO operations, says Ron Katznelson (Patently-O)

Obama may tell IP agencies to sit tight, say experts (Law360)

US Patents

USPTO releases ‘FY2008 Performance and Accountability Report’; claims success despite backlog (Managing Intellectual Property) (Law360) (Patent Librarian’s Notebook) (Patent Docs) (Peter Zura’s 271 Patent Blog) (Patent Prospector)

Tick tock, the slow patent examination clock (Intellectual Property Directions)

USPTO announces PCT fee increase (Daily Dose of IP) (Patent Docs)

Annual fee announced for registered practitioners (Hal Wegner) (Anticipate This!) (Patently-O) (Patent Docs) (Patent Prospector)

Does the USPTO have a looming cash crunch? (Invent Blog)

Patent ratings and policy matrix terminology (I/P Updates)

IPO president reveals initial results of the organisation’s patent quality initiative (IAM)

Federal Circuit explains ‘essential procedures’ of the court in revised ‘Internal Operating Procedure’ (Hal Wegner)

Small Business Association study regarding impact of small business patenting (Peter Zura’s 271 Patent Blog) (IAM)

Patent against trolls a social commentary? – Halliburton Energy Services’ patent application for ‘patent acquisition and assertion by a (non-inventor) first party against a second party’ (Patent Baristas)

Addition to Hal Wegner’s top ten patent cases: In re Ferguson: post-Bilski abstract method (Hal Wegner)

KSR declaration evidence at the PTO (Hal Wegner)

Patent academics speak: In re Bilski, Tafas v Dudas (Hal Wegner)

Patent battles focusing on third parties to push for settlements (Techdirt)

Docket Navigator: Pacer on steroids (Chicago Intellectual Property Law Blog)

Official notice and tips for responding to rejections based on official notice (Patentably Defined)

Software should be patentable (Patent Fools) (PLI) (PLI)

How long do I wait for a first office action? (updated data) (Patently-O)

Trends in patent complaints (Patently-O)

Article One Partners to use crowdsourcing and bounties to uncover invalid patents (Ars Technica) (Techdirt) (Philip Brooks’ Patent Infringement Updates) (IP Frontline) (Patent Prospector) (Peter Zura’s 271 Patent Blog)

US Patents – Decisions

Graham analysis not necessary for obviousness-type double patenting rejection: In re Baselle Poliolefine Italia (Patently-O) (I/P Updates) (Patent Prospector) (Peter Zura’s 271 Patent Blog) (Patent Baristas)

Non-obviousness: analogous arts test still strong: Anderson v Pella (non precedential) (Patently-O)

Knowledge of patent not wilful infringement: Honeywell International et al v Universal Avionics Systems Corporation (Law360) (Peter Zura’s 271 Patent Blog)

‘Parties’ inaccurate assertions in the briefs’: Medegen v ICU (non precedential) (Hal Wegner) (Patent Prospector)

Encyclopedia Britannica fails in attempt to revive infamous multimedia patent (Techdirt)

Qualcomm held in contempt in patent dispute with Broadcom; Qualcomm appeals (Law360) (PATracer)

Calcar loses permanent injunction bid against Honda (Law360)

Sony hit with $18.5 million infringement verdict for infringing Agere Systems’ music chip patent (Law360)

ITC finds Vizio and others infringed Funai’s patent covering broadcast data processing systems (Law360)

Florida judge dismisses patent case from chemist alleging Pennsylvania State University research department stole his process for converting methane gas into liquid (Law360)

Sanyo prevails against Papst in camera patent case over high-speed interface for digital camera (Law360)

Malpractice and statute of limitations: Wright v Renaldo (Patently-O)

Judge dismisses Psystar’s antitrust claims against Apple (Ars Technica) (Techdirt) (Law360)

Post-Bilski BPAI approves of Beauregard claims: Ex parte Bo Li (Patently-O) (I/P Updates) (Patent Prospector)

Post-Bilski at the USPTO: Is the BPAI looking to create a ‘software per se’ exception?: Ex parte Godwin (Peter Zura’s 271 Patent Blog)

In re Bilski and its impact on business method patents (International Law Office)

Bilski to raise questions for different industries (Managing Intellectual Property)

Software method claims: Bilski in light of Benson (Patently-O)

Egyptian Goddess v Swisa: en banc Federal Circuit clarifies design patent law test (International Law Office)

US Patents – Lawsuits and strategic steps

Ball State University – Ball State royalty-sharing policy proposal worries students (Tech Transfer Blog)

Brita – 3M subsidiary settles patent infringement suit against Brita, Sears Roebuck & Co and Pentair Filtration over patents covering cartridge-based water purification and filtration systems (Law360)

Callpod – Chargepod maker, Callpod, sues Target claiming the company is selling knockoff Chargepods under the Target brand (Law360)

Card Activation Technologies – Patent infringement suit launched by CAT against TJX chain stores over prepaid phone card and gift card patent has been resolved (Law360)

ClassCo – ClassCo files lawsuit against Motorola, Panasonic and VTech alleging infringement of audible caller ID patents (Law360)

Clear With Computers – HP latest to settle with Clear With Computers (Law360)

DuPont – DuPont fails in second attempt to win injunction against MacDermid in patent case relating to heat-based printing plate market (Law360)

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

Hewlett-Packard – HP and LexJet settle ink cartridge patent dispute (Law360)

Iovate – Iovate appeals against finding that certain claims were invalid as anticipated by magazine advertisements: Iovate v Bio-Eengineered Supplements (PATracer)

Kodak – Kodak sues LG and Samsung over alleged violations of digital imaging patents (Ars Technica) (Philip Brooks’ Patent Infringement Updates) (Law360)

Laserfacturing – Laserfacturing appeals from sealed judgment and sealed order in patent dispute with Daimler Chrysler concerning a method of high speed welding (PATracer)

LML Patent Corp – LML sues JPMorgan and Citigroup over cheque-reading patent (Law360)

Medtronic – Wyeth, Cordis add Abbott Laboratories to their infringement suit against Medtronic over stent patents (Law360)

Medtronic – Both Advanced Cardiovascular and Medtronic appeal from verdict, orders and judgment finding infringement, no inequitable conduct, and declining to enter permanent injunction (PATracer)

Medtronic – Edwards Lifescience appeals from summary judgment of non-infringement in favour of defendants Cook Inc and WL Gore: Edwards Lifescience v Medtronic (PATracer)

Qimonda – Qimonda accuses LSI of infringing numerous patents related to the manufacture of integrated circuits (Law360)

Rambus – NVidia loses bid to toss Rambus patent lawsuit (Law360)

Spansion – Spansion files patent infringement suit and related ITC complaint against Samsung over flash-memory device technology used in cell phones, digital cameras and other consumer products (Content Agenda) (Law360)

Synthes – Synthes accuses Spinal Kinetics of infringing patent related to intervertebral implants (Law360)

T-Mobile – Calypso Wireless files patent suit against T-Mobile alleging infringement of technology that allows wireless devices to switch between cellular service and wireless internet signals (Law360)

Vizio – Vizio obtains license for patents covering video compression standard putting a stop to pending patent enforcement action brought by tech giants including Mitsubishi, Samsung, Sony (Law360)

Volterra – Volterra files suit against Primarion and Infineon Technologies accusing them of infringing several voltage regulator patents (Law360)

US Copyright

‘Performance royalty’ threatens local radio (Content Agenda)

US Copyright – Decisions

First sale doctrine not applicable to foreign imports manufactured and first sold abroad: Quality King Distributors v L’Anza Research International (Intellectual Property Law Blog)

Licensor of ‘Gone in 60 Seconds’ can pursue copyright and trade mark claims for retained rights in character ‘Eleanor’ the car: Halicki Films v Sanderson sales and Marketing, Carroll Shelby International (IP Law Observer) (Seattle Trademark Lawyer) (Law360)

You still have to own the copyright: Tacori Enterprises v Rego Manufacturing (Property, intangible)

US Copyright – Lawsuits and strategic steps

King Jr, Martin Luther (Estate) – Estate of Martin Luther King Jr threatens to sue vendors for selling products with featuring images of Obama and King

McCain, John – McCain’s memo in motion to dismiss Jackson Browne’s copyright suit (The Trademark Blog)

US Trademarks

Commerce Secretary names new members of Trademark Public Advisory Committee (TTABlog)

Prosecuting eco-marks – Part V: Acquired distinctiveness wins the day for GREEN PATENT BLOG (Green Patent Blog)

TTABlog recommended reading: ‘US Declarations of Use for Madrid-Based Registrations’ (TTABlog)

US Trade Marks – Decisions

Precedential TTAB decision: BOBBLE POPS merely descriptive of candy: In re Paul Leonhardt (TTABlog)

Fame of KOHLER mark for faucets keys TTAB 2(d) victory over KOHLER HOMES: Kohler Co v Kohler Homes (non precedential) (TTABlog)

TTAB reverses 2(d) refusal, finds PORTIA SUMMA and SUMMA VINEYARDS not confusingly similar for wine: In re Bodegas Portia (non precedential) (TTABlog)

TTAB delivers split decision in IRONMAN v IRON WOMAN 2(d) opposition: World Triathlon Corp v Traditional Medicinals (not citable) (TTABlog)

TTAB says INTERNET AUTO RENT & SALES not generic, but merely descriptive and lacks acquired distinctiveness: In re Internet Auto Rent & Sales (non precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Intel – Intel files 15 trade mark infringement lawsuits this year including recent one against electrician using the name Intellectric (Techdirt)  

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