Tourism And Intellectual Property

WIPO has published an interesting article on tourism and IP and more precisely on "Role of Intellectual Property in Enhancing the Competitiveness of the Tourism Industry"(link).

This article is very articulated and provides hints on how IP can be used to strenghten competitiveness in the tourism industry. In fact, the author has contemplated that "Success in today’s globalized and very crowded economic environment is, therefore, about adding value and offering a differentiated product".

The author then emphasizes the fact that "intellectual property system provides (that) protection by allowing for proprietorship and exclusive rights thus providing the tools for enhancing the competitiveness of enterprises and ultimately of an economy as a whole".

This is the case since "intellectual property system provides the structure and the tools for protecting, managing, exploiting and enforcing the rights arising from such intangibles".

This is a clear example which shows that IP is not limited to particular industries but is a tool for any industry in our globalized world.

And The Winners Are...

1. Finland

2. Norway

3. Danmark

4. Netherland

5. Germany

6. Switzerland

7. New Zealand

8. United Kingdom

9. Sweden

10. Iceland

11. Australia

12. Luxemburg

13. Austria

14. Singapore

15. Ireland

16. Japan

17. Hong Kong

18. Canada

19. United States

20. Belgium

...

114. Zimbabwe

115. Bangladesh



This is not a ranking for a sport but one based according to an International Intellectual Property Right Index (IPRI) for 2008 computed by the Property Rights Alliance, "a non-partisan advocacy organization that utilizes research, lobbying and educational efforts to protect physical and intellectual property rights around the globe".

The full report is available there.
The index comprises eleven variables, which are divided into the three main components: Legal and Political Environment (LP), Physical Property Rights (PPR), and Intellectual Property Rights (IPR).

Interestingly, European countries largely dominate the ranking.

Patent Prosecution Highway (PPH) Between USPTO And EPO

The USPTO has announced today the start of a trial period for a PPH program between the USPTO and the EPO.
The trial period is going to start on September 29, 2008 and is for a period of one year. An extension may be possible.
The USPTO has already started to establish trial PPH programs with various patent offices including Canadian Intellectual Property Office, UK Intellectual Property Office, the Korean Patent Office (KPO), IP Australia (IPAU).
A running PPH program is already established with the Japan Patent Office (JPO).

Let's hope the highways don't get jammed!

Microsoft Escapes A $1.5B Judgement

The U.S. Court of Appeals for the Federal Circuit has affirmed (link) a lower court's decision that Microsoft was not infringing U.S. Patent No. 5,341,457 of Alcatel-Lucent's patents for MP3 digital audio technology, and had a proper license for the U.S. Patent No. RE 39,080.

A jury last year had decided that Microsoft was infringing on Alcatel-Lucent's MP3 patents, and ordered it to pay more than $1.54 billion in damages.

Save Money When Filing A PCT At The USPTO

The USPTO has announced it has entered into an agreement with IP Australia (IPAU), the Australian Patent Office, effective November 1, 2008.
Under this agreement, IP Australia will be an available International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).
Applicants will be able to select the IP Australia when filing a PCT application with the advantages of:
-speed; and
-cost of obtaining searches and examination.
i.e. $1514 instead of $1800 for the search fee; and
AUD 550 and AUD 196 for respectively the international preliminary examination fee and the handling fee instead of $600 and $300.

This is intended to help reducing the current backlog at the USPTO.

Hidden treasures at Wall Street?

Are there still some hidden treasures under Wall Street buildings? I guess a lot of people would hope that this was the case considering the current meltdown of the economy there. A lot of the current crisis is related to very innovative ways to (try to) make money.

While in some instances it is very beneficial to keep a financial innovation secret, I could not resist to browse the patent databases to hunt for the recipes of the fallen stars of Wall Street.

-Lehman Brothers has 64 patent applications and 12 patents
Some have some quite interesting titles:

US2008/0021819 is for a "Method and system for an asset-backed commercial paper conduit". This sounds familiar!

US2007/0061236 is for a "Combination of financial instruments and method for implementing investment strategy".

-Bank of America has 45 patent applications and 26 patents
Example:

US2008/0195514 is for an "Automated review and hold placement"

-Goldman Sachs has 14 patent applications and 48 patents
Example:

US2007/0203793 is for a "System and method for providing a fuel purchase incentive with the sale of a vehicle".

-Merrill Lynch has 10 patent applications and 39 patents
Example:

US2003/0225656 is for "Financial instruments and methods"US6269346 is for "Stock option control and exercise system".

-Freddie Mac has 1 patent applications and 7 patents
Example:

US2006/0074794 is for a "Method, system, and computer program product for structuring and allocating payments on a loan with secured repayments".


US6067533 is for a "Method and apparatus for determining an optimal investment plan for distressed residential real estate loans".

-AIG has 0 patent applications and 0 patents

-Fanny Mae has 0 patent applications and 0 patents

Remarks: Some of the patent applications give a good indication of what has fueled the crisis. I guess this is food for thoughts.

US Design patent protection becomes stronger

The Court of Appeals for the Federal Circuit has discussed in Egyptian Goddess v. Swisa the standard to apply for infringement in US design patents.

The "point of novelty" test as a requirement to prove infringement of a design patent has been rejected by Judge Bryson.

The court has ruled that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed."

The Gorham test originates from a Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). That case involved a design patent for the handles of tablespoons and forks. In its analysis of claim infringement, the Court stated that the test of identity of design "must be sameness of appearance, and mere difference of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity." Identity of appearance, the Court explained, or "sameness of effect upon the eye, is the main test of substantial identity of design"; the two need not be the same "to the eye of an expert," because if that were the test, "[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them."

The Gorham Court is that: "[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." In the case before it, the Court concluded that "whatever differences there may be between the plaintiffs’ design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing—so much alike that even persons in the trade would be in danger of being deceived."

Conclusion: It is expected that this decision will increase the value of design patent protection for its owner since the threshold for infringing a design patent becomes easier to reach.

After EPO, JPO and USPTO, WIPO acknowledges serious challenges ahead

The new director general of WIPO, Mr Francis Gurry of Australia has mentioned, inter alia, the volume of work facing many patent offices as a big challenge.

“The functional consequence of this trend is that the system is becoming a victim of its own success” with patent offices “choking on demand and struggling to perform in a manner that is timely enough to be responsive to the needs of the economy,” he told the Assembly in Geneva. He has mentioned that right now there are 3.5 million unexamined patent applications in the world while last year only 1.7 million patent applications were filed.

His own preference goes for a multilateral solution based on the Patent Cooperation Treaty (PCT) rather than on initiatives involving a limited number of jurisdictions. I assume he is targeting recent US initiatives.

It is interesting to see that while so many detractors are fighting against IP rights and more precisely patents, the figures are there and the patent system is a robust system integrated with the economy. This is a global trend, not limited to a jurisdiction. As clearly indicated by Mr Gurry "the economic value of innovation has increased and, with it, the desire to acquire property rights over the frontiers of knowledge. "

Should I file in China?

This is a very good question often heard by patent practitioners. In order to try to answer this question. I believe that the graph above is very useful.

As clearly shown, the number of patent applications filed in this jurisdiction has been increasing a lot. In less than ten years, the number of patent applications filed there has been multiplied by 8! In 2007, this number is almost equal to half the number of patent applications filed every year at the USPTO. By just extrapolating this graph, it is clear that in a couple of years, the number of patent applications filed there will be much greater than the number of patent applications filed at the USPTO.

Furthermore, an interesting element is that the amount of patent applications filed by Chinese applicants is greater than the amount of patent applications filed by the foreigner applicants. This clearly shows that domestic applicants are confident in the Chinese patent system.

Another interesting element to consider are the most famous sub classes for patent applications filed there. This indication gives an idea of the type of technology for which patent protection is sought in this jurisdiction.

It is interesting to note that the top 7 sub-classes relates to information technology which shows that there is a big interest in that domain for applicants. I believe that this is an indication that China is now definitely seen as a market rather than just as a workshop.

While it is difficult to give general answers to complicated decisions. I believe that ignoring China, when considering patent protection in the globalized chess game, is a great mistake. This is particularly true especially considering that the life of patent is 20 years and that 20 years is a long time for regretting a "too quickly taken" decision.

Example of a China-US cooperation for cracking down software piracy

According to China Report of Intellectual Property of Sept. 17, 2008, a 800 million yuan (approx $117M) software piracy case is being heard in Shenzhen (Guangdong)'s Futian District People's Court.

Interestingly, this case is one of the largest criminal activities uncovered under a China-US joint operation against software piracy.

According to a Shenzhen prosecutor,when investigating a piracy gang in the United States, the Federal Bureau of Investigation sought help from the Chinese Ministry of Public Security (MPS) because it found several Shenzhen residents suspected of manufacturing and distributing pirated software in October 2006.

Later on, a Chinese-led operation resulted in the arrestation of 14 suspects, attack at 6 locations for manufacturing, packaging and distributing disks as well as seizure of 22 matrices.

Guangdong and Shenzhen police discovered 860 million yuan proceeds including pirated software, counterfeit tags of genuine products, forged licensing documents and matrices.

Remarks: This case shows that some cooperation is achieved between both countries however, around 1 billion dollars is lost by US companies every year due to piracy in China. Some good ressources can be found on the topic on the StopFakes.gov website.

Amendments to the Industrial Design Regulations in Canada

Amended Industrial Design Regulations will come into force on October 5, 2008. Amendments to the Industrial Design Regulations were published in the Canada Gazette, Part II, on September 17, 2008 (link).

In particular, a key element of the amendments is an increased flexibility concerning requirements on the colour, size and quality of a design application. For instance, the changes provide for the option of filing colour drawings and photographs.

A FAQ detailing the amendments is available (link).

Globalization in patent filings: Who file where (Part 3)

...Continuing on my last post, it is interesting to see who filed where in the most famous jurisdictions.

Republic of Korea

21.1% of the patent applications originate from the Netherlands,

10.6% of the patent applications originate from Switzerland,

6.5% of the patent applications originate from France,

6.0% of the patent applications originate from the United States of America,

5.4% of the patent applications originate from Germany,

4.7% of the patent applications originate from Japan,

4.4% of the patent applications originate from United Kingdom,

2.3% of the patent applications originate from Canada,

2.2% of the patent applications originate from Australia,

0.7% of the patent applications originate from Brazil, and

0.3% of the patent applications originate from China.

Interesting points: The ranking of countries filing in Korea is again very interesting. Last filer is China while the pole position is for the Netherland. Over 50% of the patent applications filed there originate from Europe.

(source WIPO Statistics Database)

Globalization in patent filings: Who file where (Part 2)

...Continuing on my last post, it is interesting to see who filed where in the most famous jurisdictions.

China

32.5% of the patent applications originate from the Netherlands,

22.0% of the patent applications originate from Switzerland,

13% of the patent applications originate from France,

11.1% of the patent applications originate from Germany,

9.9% of the patent applications originate from the United States of America

8.3% of the patent applications originate from United Kingdom,

8.0% of the patent applications originate from Japan,

7.7% of the patent applications originate from the Republic of Korea,

5.6% of the patent applications originate from Canada,

4.9% of the patent applications originate from Australia, and

1.4% of the patent applications originate from Brazil.

Interesting points: The ranking of countries filing in China is very similar, at a few exceptions, to the ranking for filing in Japan. This is very interesting since some subject matter is not available for patent protection in China, notably software innovations. Again European countries are leading for filing in China.

(source WIPO Statistics Database)

Globalization in patent filings: Who file where (Part 1)

The World International Patent Office (WIPO) has issued "World Patent Report: A Statistical Review (2008)". This document is a goldmine for information.

It is interesting to see that some facts that clearly show globalization in patent filings.

In 20 years, the number of patent applications filed has doubled to reach almost 1.8 million applications filed per year.

The percentage of patent application filed by foreigners was 43.6% in 2006 while it was only 30% twenty years ago. It means that protection is often sought outside its own jurisdiction.

The top five jurisdictions for filings are 1. United States of America, 2. Japan, 3. China, 4. Republic of Korea and 5. European Patent Office.

Japan

32.3% of the patent applications originate from the Netherlands,

22.3% of the patent applications originate from Switzerland,

15.2% of the patent applications originate from France,

13.6% of the patent applications originate from Germany,

12.7% of the patent applications originate from the United States of America

10% of the patent applications originate from United Kingdom,

6.2% of the patent applications originate from the Republic of Korea,

4.8% of the patent applications originate from Australia,

4.9% of the patent applications originate from Canada,

1.1% of the patent applications originate from Brazil,

0.5% of the patent applications originate from China,

Interesting points: China is far from being the first filer there despite its geographic position. United States is not the first filer there while in the United States Japan is in the top 3. A large portion of the filings is done by European countries.

(source WIPO Statistics Database)

The ITC institutes an investigation of certain automative products

The U.S. International Trade Commission (ITC) has announced (link) that it has decided to "institute an investigation of certain automotive multimedia display and navigation systems, components thereof, and products containing same".

This follows a complaint, filed last month by Honeywell International Inc., which alleges violations of section 337 of the Tariff Act of 1930.

Section 337 investigations most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods.

A first remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States.

Another remedy is the issuance of cease and desist orders against named importers and other persons engaged in unfair acts that violate Section 337.

In this case, the respondents are four japanese companies (Alpine Electronics, Inc.; Denso Corporation of Japan; Pioneer Corporation of Japan and Kenwood Corporation of Japan) as well as their US units.

To have a list of all Section 337 investigations, check the link.

An offensive move for Google

Google has decided to become very proactive against Netlist and has filed for a declaratory judgement (link) to invalidate US Patent No7,289,386 ('386).


Netlist is a manufacturer of high-density memory subsystems and has had some discussions in the past with Google for potentially supplying "specific server memory devices used in certain Google servers".


At the end, Google decided to select another supplier for his server memory devices.


The '386's Abstract reads as follows:


"A memory module connectable to a computer system includes a printed circuit board, a plurality of memory devices coupled to the printed circuit board, and a logic element coupled to the printed circuit board. The plurality of memory devices has a first number of memory devices. The logic element receives a set of input control signals from the computer system. The set of input control signals corresponds to a second number of memory devices smaller than the first number of memory devices. The logic element generates a set of output control signals in response to the set of input control signals. The set of output control signals corresponds to the first number of memory devices."


In May 2008, Netlist has argued that certain server memory technology used by Google was infringing the '386 patent. Shortly after other threatening notices were sent to Google according to the filing.


Google believes that the '386 patent is invalid since it does not comply with the conditions and requirements for patentability under US Patent Law.


Google has already been sued 6 times this year.

Where to get information on most Foreign Industrial Property Systems?

The Japanese Patent Office (JPO) has a page (link) to "Information on Foreign Industrial Property Systems".

This page provides links to all pertinent ressources at a single click including Patent Act, Patent Rules, Industrial Design Act, Industrial Design Rules, etc. for a large number of countries (56). In addition all pertinent treaties governing or related to IP are available too.

This is a great ressource. Moreover, the interesting element is that all those documents are available in English!

Interesting presentations on patent statistics for decision makers available

The European Patent Office has announced that the first presentations from the "Patent Statistics for Decision Makers conference" are now available online (link).

The conference was held on September 3 and 4, 2008.

An interesting presentation is about "The use of patent data to measure patent value" by Nils Omland of the WHU Otto Beisheim School of Management. This is of great interest since valuating IP is often perceived as a very esoteric task.

Best universities for technology transfer

Forbes has published an interesting article (link) about universities that maximize the Return On Investment (ROI) for revenues generated from research. The article has compiled some data originating from the Association of University Technology Managers.

The total of research-related income generated by all the 189 schools is a nice $1.5 billion.

The top 5 universities for maximizing the ROI for 2006 is:

1. New York University

Research Expenditures: $210 million
Research-Related Income: $157 million
Yield: 75%

2. Wake Forest University

Research Expenditures: $146.3 million
Research-Related Income: $60.5 million
Yield: 41%

3. Stevens Institute of Technology

Research Expenditures: $28 million
Research-Related Income: $4.56 million
Yield: 16%

4. Ohio University

Research Expenditures: $24 million
Research-Related Income: $3.26 million
Yield: 13%

5. Brigham Young University

Research Expenditures: $26 million
Research-Related Income: $3.07 million
Yield: 11.7%

New Fee Schedule at the USPTO

A new fee schedule has been provided and will be effective on October 2, 2008. It will replace the previous fee schedule.

The notice announcing the new fee schedule and published in august can be found here.

According to the USPTO, certain patent fee amounts are being adjusted to reflect fluctuations in the Consumer Price Index (CPI) for financial year 2009.

New patent law draft published in China

A new Patent Law draft has just been published in China. This is the third time an amendment is published in the last 25 years. In fact, Patent Law in China is not very old. A first amendment was made 1992 to add pharmaceutical compositions to the list of patentable subject matters while a second amendment was made to make China part of the Patent Cooperation Treaty (PCT).

This third amendment is intended to make the patent prosecution process as well as the patent infringement enforcement process more efficient.


For instance, the draft proposes:

- adoption of the "absolute novelty" standard that is applied internationally.Under this standard, "patent examiners will be required to consider public use evidence both inside and outside China when processing patent applications".

- removal of the statutory requirement for all Chinese applicants to first file applications in China for inventions made in China. As a consequence, local applicants could apply for foreign patents even before filing Chinese patent applications.

- provisions for "compulsory licenses". In one instance, the government may grant a compulsory license to a party qualified to exploit the patent if the patent owner, without justification, has not exploited or sufficiently exploited the patent three years after the patent was granted.

The objective of the amendment is to make the Patent Law more efficient in China in order to enable Chinese to advantageously use the patent system.Right now a vast majority of the patent applications filed in China are made by foreign applicants.

The law is expected to change as a result of this amendment in 2009.

Eco-Patent Commons expands

Bosch, Dupont and Xerox have announced that they have joined the Eco-Patent Commons.
The Eco-Patent Commons is a "business effort to help the environment by pledging environmentally-beneficial patents to the public domain".
This initiative was launched in January 2008 by IBM, Nokia, Pitney Bowes and Sony in partnership with the World Business Council for Sustainable Development (WBCSD) to provide an opportunity for businesses to share innovations in support of sustainable development.
The objectives of the Eco-Patent Commons are to facilitate the use of existing technologies to protect the environment, and encourage collaboration between businesses that foster innovations.
The newly pledged patents include:

-a Xerox technology that reduces the effort for removing hazardous waste from water and soil;

-a DuPont technology that converts certain non-recyclable plastics into beneficial fertilizer; and

-Bosch automotive technologies that help decrease fuel consumption, reduce emissions, or convert waste heat from vehicles into useful energy.

The full list of patents is available at the following link.

Global patent warming

This expression is not mine. It was used today by Ms Alison Brimelow, the president of the European patent office (EPO). In fact, the situation on the patent prosecution side is not great and there are a lot of concerns amongst the three main patent offices i.e. the EPO, the USPTO and the JPO.

Basically all patent offices have seen their volume of filings increasing dramatically in the last years. The problem is that since the volume of filings increases, the backlogs increases too and it takes more and more time to have a patent granted.
The purpose of the patent system is defeated since the reward for publishing the invention, i.e. the monopoly granted by the patent, does not come at the time it should.

For instance, the USPTO has seen an increase of 40% in the number of patent filings in the last 4-5 years. In the world it is almost 1.7 million patent applications that are filed every years.

The USPTO is hiring around 1200 new examiners every year to deal with around almost half a million patent applications filed every year. The director of the USPTO, Hon. Jon W Dudas is very clear that the office cannot sustain such increase.

I was very fortunate yesterday night to have a quick chat with him after the opening ceremony of the AIPPI Congress. I find him very proactive and I support his new initiative concerning continuing education of practitioners.

There are solutions for dealing with the global warming and one of them is collaboration between the main patent offices. Commissioner Suzuki of the Japan Patent Office has even mentioned the expression of Global virtual patent office. I like the concept but reducing this idea to a practical embodiment might take some time.. The devil is in the details.

E-learning ressources on IP

The European Patent Office has some interesting ressources on its website.
E-learning webinars are available, free of charge, at the following address.

They cover inter-alia:
- The European patent system,
- Searching and documentation,
- IP innovation and business, and
- Special topics.

This is a great ressource for getting some good information from leaders.
I have particularly enjoyed the IP innovation and business category.

Obama has won!

...at least on the patent side... In fact, "obama" and "patent" collects 1850000 hits while "mccain" and "patent" collects 1340000 hits on Google.

However, Obama and McCain are radically different individuals each of whom represents a given vision of America. It is interesting to note that they both agree that the patent system is flawed in the US.

From a Canadian perspective this is very interesting for various reasons:

1. It means that both candidates have an opinion on it or understand that a clear policy is required even though no real measures are suggested. Each understands that an efficient patent system is one of the keys for securing innovation and ensuring that US does not become a victim of globalization (This might not be the case of all G8 countries)

2. It also means that there is room for improving the patent system. Many practitioners know it already but both candidates, who are not patent-savy, appreciate it and do not accept the statu quo situations.

3. Both candidates are really connected to innovation and support it since an efficient patent system is key for encouraging it. This is a clear statement that the innovation is one of the key ingredients for a strong and leading country.

We, in Canada, may be faced with a federal election very soon, let's hope that intellectual property will be one of the issues discussed whether or not there is a consensus between all candidates on it.

Royalty Reducation for DVD encoder and DVD decoder

The DVD6C Licensing Group has announced that it has revised its worldwide patent licensing program.

The group comprises developers of DVD technology and formats such as Hitachi, Ltd., Matsushita Electric Industrial Co., Ltd. (Panasonic), Mitsubishi Electric Corporation, Samsung Electronics Co., Ltd., Sanyo Electric Co., Ltd., Sharp Corporation, Toshiba Corporation, Victor Company of Japan, Ltd. (JVC) and Warner Bros. Home Entertainment Inc.

For instance, under the new license, the royalty rate for a DVD-video disk is 0.04$/disk.
For a DVD Decoder the patent royalty is the greater of 4% of the Net Selling Price of the DVD Decoder or US$1.00 per decoder sold on or before the effective date of the new license, and the new royalty rate will be US$0.50 per decoder on or after the effective date of the new license.

Beware of misleading news: a scroll key story!

In the last days, many posts and news releases have flourished on the Internet claiming that the Redmont company, Microsoft, got the patent for the scroll key. As a patent practitioner, I found that claim quite surprising and wanted to find out more about that.

So this is right, Microsoft obtained a US patent No. 7,415,666 for a "Method and system for navigating paginated content in page-based increments ". The patent application was filed on March 4, 2005, which is quite recent. But to my knowledge, in 2005, my keyboard had already the scroll keys and it was not a Microsoft keyboard!

While the title of the patent seems really broad, the scope of the monopoly granted to the assignee of this patent is in the claims and is much much smaller than what the title may seem to indicate.

claim 1 reads as follows:

claim 7 reads as follows:

claim 13 reads as follows:

In order to be infringed, all the limitations of the claims must be met. The longer the claim is, the more limitations the claim has and the easier it is to avoid infringement.
In particular, the whole formula limitation seems very limiting! I guess the scroll keys are still safe for now...
Oufff...
It is interesting to note that apparently, Microsoft has not applied for patent protection for this technology in Canada!