South Korea Starts Sweeping Investigation Into Patent Abuse

The 271 Patent Blog: Peter Zura features South Korea's move to curtail patent abuses by companies foreign and domestic in his recent post entitled South Korea Launches "Largest-Ever" Antitrust Probe on Patent Abuse. Zura calls out a quote from Mobile Business Briefing to help explain the situation:

Companies with market dominance and widespread technologies that have become industry standards will be targeted,” said Kim Jun-beom, director of the FTC’s market supervision team. “Foreign companies that have a large influence on the domestic market also will be targeted.” Although the government's specific targets are unknown, experts say the probe will likely cover large domestic firms such as Samsung, LG and Hynix Semiconductor. The investigation is thought to be part of a crackdown by the government on alleged abuses by large corporations, including alleged unfair practices toward smaller companies. “Local small and midsize enterprises have suffered considerable damage from patent-related abuses by large domestic and foreign companies,” Kim said.

Whoa, nelly! Talk about a bucking bronco of an announcement and one that should help home-grown Korean medium and small (SMEs) businesses compete on a more even playing field than is currently the situation. The probe is not limited to outside businesses, mind you, and Zura notes that the investigation will target Korean businesses for wrong-doing starting in the middle of September with other potential unfairly competing companies coming next.

IPWatchdog.com: A major non-practicing entity (NPE) has garnered some careful attention from IP pundit Gene Quinn, the President and Founder of IPWatchdog.com, who pulls no punches in voicing his thoughts on the company's tactics in his topical piece, Mother of all Patent Trolls, Acacia Research, Gets More Funding. Quinn quips:

Technology companies have for far too long engaged patent trolls in a game of hunter and huntee, where the part of the prey is played by the technology giant who seeks to make and sell inventive products and offer innovative services. Much like the deer in the woods, who are not armed, they are shot by the hunters (i.e., the patent trolls) who are armed. Since patent trolls have nothing to fear in terms of a counterclaim (because they are not making or selling anything) they can fire at will without concern of being fired upon. In short, the strategy that technology companies employ is one that is likely to being shot at ever increasing rates. Add onto that the fact that in many situations the technology companies actually lose and lose big in patent infringement litigation, and add in the factor that they frequently settle, and it is hard to criticize any business person for making the choice to be a patent troll. In fact, being a patent troll seems like an almost guaranteed way to make money these days.

And, it could certainly be argued that business are in the business of making money, so NPEs that show strong tendencies towards profitability might attract a certain kind of investment-minded person that is looking only at the bottom line and not taking into account the ethical/moral concerns that Quinn seems to be focusing in his piece. Be sure to read all of the above linked work for more thoughts on why NPEs/patent trolls who "greatly overstate their case and send cookie cutter, non-specific and intellectually dishonest demands to technology giants" should be reigned in.

The CIPA Congress, IP in the New Decade, which takes place in the Lancaster Hotel, London on 30 September and 1 October, is extra sweet this year due to an offer by the crew at IPKat to pay for the admission of one lucky soul who wins their competition. The value of the prize is a non-measly 1075 pounds Sterling and should be a great way for the less-monetarily endowed to attend this excellent IP event sans cash outlay. You can find more on the contest rules here and read all the pertinent details courtesy of Jeremy Phillips in his related article, Now you can win without even going to court.

Patent Baristas.com: Stephen Albainy-Jenei comments on a CBS piece featured in this very blog the other day in his August 10th entry, CBS News Highlights Growing Backlog at the U.S. Patent & Trademark Office. Here's what Albainy-Jenei shares with the gentle reader regarding the well-known admission of the USPTO's terrible pendency troubles:

...[W]ith an average wait time of 36 months and a backlog of 700,000 applications, Patent Office Director David Kappos says speeding up the process will help the economy. “The backlog is indeed our biggest problem. It represents innovations trapped in this agency that otherwise could be creating jobs.”

Kappos wants to cut the waiting time from 36 to 20 months and the backlog in half but he needs more money to hire an additional 1200 patent examiners and update computers. “It’s no taxpayer dollars at all– all the fees we collect come from patent applicants.”

Congress sets the fees charged by the patent office. The legislative branch also does not permit the patent office keep all $2 billion in its annual revenue, by diverting $200 million dollars a year for other federal budget items.  Legislation that would end fee diversion and empower USPTO to adjust its own fees is pending.

There is also a note to the effect that patent applicants would be willing to pay additional costs to process their submissions if it would mean a quicker turn-around, which would be a boon to time-sensitive innovations that are only valuable if capitalized on post haste.

Fashionista.com: Only a few days ago, New York Senator Charles E. Schumer penned a bill in the US Senate called the Innovative Design Protection and Piracy Prevention Act that would re-write the rules of fashion intellectual property with more protection for innovative fashions that qualify as "the most original design." Lauren Sherman has more on the subject in Why the New Intellectual Property Bill Might Tranform the Fashion Industry. She writes on the bill's long genesis:

The bill was passed by the House of Representatives in April 2009. It was then amended with input from different groups within the fashion industry, and is now being presented to the Senate. If it passes in the Senate, it will become a law. (As long as the President signs off on it, that is.)

We know that the law will help to protect original designs from piracy, but how? Susan Scafidi, an intellectual property attorney and author of the popular fashion law blog Counterfeit Chic, broke it down for us. PS: If you’re interested in fashion and intellectual property law, you should be following Scafidi. She teaches a fashion law course at Fordham Law School and has been instrumental in launching Fordham’s Fashion Law Institute, where she serves as Director.

This would be quite the sea change in a marketplace where designs are *expected* to be pirated and copied and could create additional innovations in the lower segments of the fashion world which have only been duplicating leading ideas at knock-off prices and qualities in the past.

Bonus IP piece o' the day: How Fifty Percent Of China's 'High Tech' Companies Are Actually Fake by Vincent Fernando at Business insider - Money Game.

Stan Lee Battles For “Super Seven” Rights

KSN.com: Graphic novel maven Stan Lee has been on the other end of legal battles over intellectual property but this time he's the target of a lawsuit claiming his use of the term "Super Seven" infringes on a toy company's trademark. Stan Lee sued over trademark has the story for the gentle reader:

Lee, the man behind Spider-Man and the X-Men, is facing legal action from bosses at toy company Super 7, who claim they own the trademark to their name.

Lee announced plans for his latest multimedia series at Comic-Con, but Super 7 executives allege they tried to stop him going forward with his plans in February.

They claim they wrote a letter outlining their trademark rights and were told that Lee would "move in a different direction" and "develop another mark", according to the complaint, filed in the U.S. District Court in California.

Mr. Lee's pockets must be pretty deep these days, so the battle ahead might be of epic proportions. Maybe someone will break out their cape and special powers to help win the fight for Super 7/Seven world domination!

PC World: Chris Brandrick reports on Apple's patent filing for a bicycle accessory in his topical article entitled Here Comes the iBike? Apple Files Patent for a Bicycle Accessory [Updated].The update to the original article is due to a mistaken assumption that Apple was attempting to patent a bicycle, which as we know, would not be a patentable idea unless it included something novel and/or non-obvious, like say, a connection to an Apple gadget? Brandrick writes:

The patent application, which was published by the US Patent & Trademark Office on August 5, highlights Apple's concept for what they are calling a 'Smart Bike'. The bike patent application, which Patently Apple likens to a Nike + for cyclists, details a system which would allow bike riders to log and wirelessly share information about cycling routes.

Apple's Smart Bike patent, which was originally filed for during the first quarter of 2009, would log a whole host of cycling information, with a heavy emphasis on sharing data. This information would include cycling speed, distance traveled, time, altitude, incline, decline and more. A users heart rate would also be collected.

According to the patent, this range of information would be collected via a connected iPod or iPhone and built in sensors. What the integrated technology to measure these cycling metrics would be is any ones guess. But accurate heart rate sensors in the handlebars, accelerometers and on-board GPS would all seem to be fairly safe bets.

Nothing new here, as Brandrick notes, since small bike computers have been rolling around for decades, but the implementation of such a system with an iPhone or other smart gadget, takes exercise data gathering to the next level and might qualify for protection under USPTO rules.

ArsTechnica.com: Jacqui Cheng covers Apple's most excellent purchase of intellectual property related to Liquidmetal's special blend of alloy metal in her topical piece,"Amorphous" metal alloys to slip into Apple products soon. She writes:

Liquidmetal's technology is used in the fields of sports, medicine, space, jewelry, and of course, electronics. Whereas a typical metal has a crystalline atomic structure (a repeating pattern of crystals), an "amorphous" metal alloy basically has no crystals. This allows manufacturers to tweak the precise configuration of the alloy without worrying about the usual structural or strength limitations.

As such, Liquidmetal brags that its products are not only strong and resistant to impact/fatigue, they are also lighter than comparable products made out of normal metals.

The agreement between the two companies was signed last Thursday, but was not revealed until the publication of the 8K this morning. Liquidmetal's technology has previously been used in Nokia and Sandisk products, but no more—Apple now has "perpetual, worldwide, fully-paid, exclusive license to commercialize such intellectual property in the field of consumer electronic products."

This news definitely falls in the category of "cool beans" so be sure to look for some new and exciting Apple-designed devices in the near future featuring "Terminator-esque" metals.

Excess Copyright, the topical blog authored by Ottowa, Canada-based Howard Knopf, tackles the tricky subject of Access Copyright's proposed fee to students in his recent post, Access Copyright’s excessive $45 per university student proposed tariff - August 11, 2010 deadline. Here's some of what's got Knopf excited:

$45 is not a misprint. Moreover, it’s more than 13 times the current base amount per student. The good news, as if anyone would possibly see it that way, is that it’s all inclusive and doesn’t require the intensely disliked $0.10 per page course pack fee. That’s not really much of a concession since the use of photocopied course packs is rapidly becoming obsolete, rather like blank CDs. The future lies in e-reserves and other legitimate uses of the new technology that could soon make Access Copyright itself obsolete if universities decide to exercise their technological and legal options.

The bad news is that this figure is exorbitant and AC is arguably not entitled to much if not most of this money. It is seeking to charge for all sorts of uses that are simply not covered by copyright law or which are or should be regarded as fair dealing according to the Supreme Court of Canada’s landmark decision in the 2004 CCH v LSUC decision. AC also has serious “repertoire” and rights problems, discussed below. AC wants educators and students (i.e. taxpayers) to pay for much stuff and uses that are or should be free, if the law is properly understood and applied. And, as indicated above, AC may have a big gap in terms of digital rights in the very limited actual repertoire that it has in its system. I will, at a later date, blog about its other “repertoire” problems for those who have not read my analysis published about a decade ago.

Interesting analysis by one of our neighbors to the North. As works progress into the digital realm, it becomes clearer that gathering royalties and payments is getting much more difficult for rights owners but at the same time, as those works become more widely available, the potential to make more money using a lower cost amount to the end consumer also increases. Balance is needed and charging students (read: taxpayers in the case of Canada) a significant fee won't encourage compliance with any IP rules since students might interpret such a payment as free license to steal whatever IP they want.

The News Star.com: Dr. Mark DeCoster, associate professor of biomedical engineering at Louisiana Tech University, has been issued a patent by the US Patent and Trademark Office (USPTO) for his novel bio-medical device. More information can be found here: Tech professor, researcher receives patent for electromagnetic technology. A sample of the coverage of Dr. DeCoster's electromagnetic device for the constant reader:

According to DeCoster, the invention allows users to see the electromagnetic probe within the microscopic field, enabling them to more easily observe and position the probe in relation to the magnetic materials. Prior to this invention, researchers had to use fixed magnets, which were hard to position, and often bulky.

The probe, as an electromagnet, can produce variable magnetic fields, as well as pulsed fields, and can be used in combination with a microscope for visualization, a micromanipulator for spatial control and a catheter or endoscope for medical purposes.

DeCoster says the device is relatively inexpensive to build, and can be used both in air and in liquid, which is of great benefit for medical applications. The device can also be used to effectively control magnetic materials at both the nano- and micro-scale.

A great reward for what must be many thousands of hours of work by the good doctor and his team of research assistants.

Bonus IP piece o' the day: CAFC: Inconsistent Characterization (and Partial Disclosure) of Disputed Prior Art May Lead to Inequitable Conduct by Peter Zura at The 271 Patent Blog.

Berne Convention Paved The Way To Modern IP Protection

Helium: D. Vogt tackles the contents of The Berne Convention, which is one of the seminal pieces of legislation that laid out intellectual property protections and rights. In his aptly titled piece, Intellectual Property law: Rules governing the Berne Convention, Vogt writes on many aspects of this 19th Century legal work that still rings true down through the years, including this historical passage:

The Berne Convention was the product of a public campaign by the French International Literary and Artistic Association (ALAI), an organization founded several years before by Romantic writer Victor Hugo to call for stronger legal protections for writers. Copyright laws were not a new invention during the 1880s: indeed, in America, the foundations of both copyright and patent law is enshrined in Article I of the Constitution. However, at the time copyright laws were simply a lengthy series of national legislative initiatives. Not only did the specifics of these laws differ in varying countries, but it was understandably difficult to enforce one's copyright privileges in foreign countries. A French work, for instance, would be protected by French copyright law only in France, but not in neighbouring Germany or Britain.

From Vogt's writing, it's easy to see how having a unified approach to copyright law in Europe would help spawn additional creative works by the likes of Victor Hugo because the publication of protected books would then be directly coupled with the collection of royalties. The protected works would also be subject to the rule of law which  previously lacked the authority to pursue the theft of IP in a unified, meaningful way. Be sure to read the rest of the piece at the above link for more details on the origin of modern European (and, arguably, American) copyright law.

TechCrunch.com: An ex-software programmer has turned against the hand that once fed him: his patents, that is, and has decided that patents for software applications need to be banished immediately, if not sooner. Vivek Wadhwa is the coder-turned professor in question and in his topical Why We Need To Abolish Software Patents he explains the thinking behind his radical proposal. He writes:

Patents make a lot of sense in many industries; they are needed to protect the designs of industrial equipment, pharmaceutical formulations, biotechnology products and methods, biomedical devices, consumer products (toothpaste, shampoo, contact lenses, etc.), advanced materials & composites, and of course, widgets (lighting fixtures & elements, batteries, toys, tools, etc.). But in software these are just nuclear weapons in an arms race. They don’t foster innovation, they inhibit it. That’s because things change rapidly in this industry. Speed and technological obsolescence are the only protections that matter. Fledgling startups have to worry more about some big player or patent troll pulling out a big gun and bankrupting them with a frivolous lawsuit than they do about someone stealing their ideas.

Wadhwa backs up his claims with a variety of facts and figures, including a report by Pam Samuelson that suggests the biggest winners in the software patent game are the lawyers and non-practicing entities (NPEs). Ideas like Wadwha's aren't all that uncommon but there is always more than one side to any story, or opinion, and there are certainly reasons why protecting software innovations is important to the health of American tech industry and smaller, entrepreneurial ventures that use patents to increase the likelihood that they will attract investment monies.

PC World: Spansion, a company that specializes in flash memory, is launching a campaign to convince the U.S. International Trade Commission (US ITC) that Samsung is infringing on some of its protected technology. Agam Shah offers up some details of this latest foofarah in the world of memory manufacturing by way of his timely piece, Spansion Complaint Seeks to Bar Samsung Memory Imports. Here are the relevant passages:

Spansion filed a complaint with the U.S. International Trade Commission against Samsung for infringing on four patents. The company is seeking a block on the importation to the U.S. of devices such as MP3s, smartphones and tablets that use Samsung's allegedly infringing flash memory.

A Spansion spokesman declined to comment on which products those may be. However, Apple's iPad and iPhone 4 use Samsung flash memory.

Spansion also filed other complaints in the U.S. District Courts in the Eastern District of Virginia and the Northern District of California. In the court cases, Spansion is seeking damages to the extent of profits made by Samsung from the allegedly infringing products.

Samsung has been in other legal hot water of late for similar complaints but doesn't appear to have learned a lesson from the previous claims of patent infringement. Interestingly, Shah notes that Spansion is only recently out of bankruptcy, which could explain why they are feeling a bit frisky these days: frisky enough to take on one of the heavies in the industry in a continuation of their 2008 filing.

CBS Evening News: Inventors are fed up enough with the huge patent application backlog at the US Patent and Trademark Office (USPTO) and some are even taking their products directly to market without any legal protection at all. Joint authors Phil Hirschkorn and Rebecca Jarvis provide the gentle reader with more information on this dangerous, but necessary, practice by inventors who can no longer afford to wait for the government to play catch up. Patent Backlog Frustrates Inventors features one inventor who has already gone through the process of trying to gain protection via official channels but is less enthusiastic about the process after losing the exclusive rights to one of this unique safety devices:

Entrepreneur Aldo DiBelardino started developing lightweight "Spekx" eyewear four years ago in an office above his garage in Virginia Beach, Va. He gave CBS News an exclusive sneak peek at his invention before they went on sale.

"They provide you goggle-like protection, but they provide you the style and convenience of sunglasses," DeBelardino says.

DiBelardino is preparing to start selling them this summer. But the trouble is, he does not have a patent to protect his invention. He applied for one in April.

"Until I get a patent, I have a very limited ability to defend myself in the marketplace against copy activity," he explained.

DiBelardino knows that from personal experience. His first commercial venture -- the X-It Ladder -- a compact fire escape ladder for the home was copied by Kidde, the biggest fire extinguisher maker in the United States. After DeBelardino refused to sell the company his idea, it produced a knockoff that ate into his market share. In 2002, DiBelardino sued Kidde for patent infringement and won a $17 million settlement, the bulk of which went to attorneys fees, and had to give up the exclusive rights to his invention.

DiBelardino has decided to directly sell his product to the public, which is much more risky than gaining IP protection via a patent, but he explains why he is taking this extreme step: "'I'm taking a big risk, but the reality is I have no other choice,' DeBelardino says. 'The way the marketplace works, I can't be sitting on the sidelines as well, because by the time the patent would possibly issue, my opportunity window could close.'"

Bonus IP piece o' the day: Intellectual Property Protection In China at Chinese Language Software.

US Copyright Group Appear To Have Copied Website Verbatim

ArsTechnica.com: The people behind a large number of "John Doe" lawsuits have apparently "borrowed" heavily from a similar group's website and are being called out on it by none other than Nate Anderson, who reports on the matter in his topical post, Anti-P2P lawyers accused of copyright hypocrisy. He writes:

Have the copyright enforcers been caught with their hands in the cookie jar? The blog TorrentFreak today published its claim that the US Copyright Group, which has filed more than 14,000 lawsuits against anonymous P2P movie sharers, ripped off another copyright settlement group in crafting its own settlement website.

The site was tipped off by a reader, who claimed that US Copyright Group had jacked code and visual elements from Copyright Settlements, which is in a similar business: sue P2P users, then send them letters demanding a settlement to avoid trial.

The sweet smell of hypocrisy!

Anderson and like-minded intellectual property enthusiasts must be reveling in the irony of a group of lawyers whose most dearest wish is to sue others for copyright infringement have been caught copying directly from a competing lawsuit mill. Read more of Anderson's piece for additional details of this potentially serious legal faux pas.

Telegraph.co.uk: Famous British vacuum cleaner manufacturer, Dyson, deserves the kind of intellectual property protection that accompanies a valid, innovative effort to produce new and original products. According to Damian Reece, Dyson sued the maker of a copycat vacuum cleaner, but lost the case, which isn't the kind of IP enforcement in question, but rather, the opposite of honest dealings that are the hallmark of British justice. From Reece's Britain must get serious about protecting its intellectual property:

You might think it's a trick question and that both are. In fact the one on the left is a Dyson, the one on the right a Chinese product called the Mach Zen. Dyson has sued the maker, Vax, for design infringement (and you can see why) but yesterday lost its case. It's expected to appeal this most ridiculous of High Court decisions and good luck to it.

Design is crucial to our future as a high-end manufacturing exporter but if companies can't protect their designs (which are just as important as patents) we're done for. A design doesn't just mean a pretty technical drawing. It represents huge amounts of time and investment, research and development, to get something to the manufacturing stage.

Helping recoup the costs associated with inventing a novel product are part of what IP protection is all about, and if the legal system can't help make it evidently clear to entrepreneurs that they will be able to get back some of the energy/money they put into researching and developing such items, they might decide to find a more favorable venue in which to pursue their business. Like say, America!

Securing Innovation: The informatively-titled Google Patents Indexing, Retrieval of Blogs highlights the world's leading search/online advertising company's bid to search blogs by using a patent to defend its proprietary methods. Here's the scoop on what the company presents as a background for their new patent application:

The World Wide Web (“web”) contains a vast amount of information. Locating a desired portion of the information, however, can be challenging. This problem is compounded because the amount of information on the web and the number of new users inexperienced at web searching are growing rapidly.

Search engines attempt to return hyperlinks to web pages in which a user is interested. Generally, search engines base their determination of the user's interest on search terms (called a search query) entered by the user. The goal of the search engine is to provide links to high quality, relevant results (e.g., web pages) to the user based on the search query. Typically, the search engine accomplishes this by matching the terms in the search query to a corpus of pre-stored web pages. Web pages that contain the user's search terms are identified as search results and are returned to the user as links.

Over the past few years, a new medium, called a blog, has appeared on the web. Blogs (short for web logs) are publications of personal thoughts that are typically updated frequently with new journal entries, called posts. The content and quality of blogs and their posts can vary greatly depending on the purpose of the authors of the blogs. As blogging becomes more popular, the ability to provide quality blog search results becomes more important.

Indeed Google wants to lock up the ability of others to search blogs, and with the recent Bilski ruling coming down apparently in favor of software and business method patents, they just might be setting themselves up for a very lucrative IP licensing side business.

NAMAC: A group of university students have taken on the task of defending a film company against claims that their work violates the spirit of "fair use" clauses meant to allow snippets of media to be used in new, transformative works. Gilien Silsby at the University of Southern California Law News Service reveals to the faithful reader the story behind a real-life victory for students learning how to apply their classroom knowledge to the world outside academia in her related piece, the lengthily-titled USC Intellectual Property & Technology Law Clinic Wins Copyright Law Exemption on Behalf of Filmmaker. She reports:

Alongside a team of USC Law students from the USC Intellectual Property and Technology Clinic, NAMAC has helped secure an exemption that will allow documentary filmmakers to use material contained on DVDs and other sources that were previously off limits.

The exemption to the Digital Millennium Copyright Act (DMCA) was announced today by the United States Copyright Office. The Digital Millennium Copyright Act of 1998 makes it a crime to break the digital locks on DVDs and other media. The restriction prevented filmmakers from making fair use of material, or using public domain material.

Together with Beverly Hills entertainment attorney Michael C. Donaldson, the students represented Kartemquin Films of Chicago, IL, the International Documentary Association, and a national coalition of documentary filmmakers and filmmaker organizations.

“This is a huge win for documentarians,” said Prof. Jack Lerner, director of the Clinic. “Instead of using DVDs, filmmakers were forced to use costly, time-consuming, and technically inadequate workarounds, like taking the footage they sought for their films from VHS tapes. It became increasingly clear that these were not viable alternatives, as such material is either unavailable, too degraded, or technically unsuitable for documentary filmmaking.”

Fair use is absolutely necessary to the creation of new works, as each additional instance of a movie, or song, builds on the roots established by those creators before them and without adequate protections for those who use small pieces of others' works in their own original creation, creativity and artistic growth would grind to a halt. Be sure to read Silsby's entire piece to hear feedback from the students involved in this winning effort.

The Blog of Legal Times: The US Patent and Trademark Office (USPTO) got its 2010 funding from Congress, but as the process for determining the amount to be budgeted for the important intellectual property organization is flawed, the award might fall far short of what is needed to reduce patent application pendency and help hire additional examiners to backfill a serious hole left by disgruntled ex-USPTOers. Maria Coyle has more:

The legislation, which now goes to the president, stems from the rather unusual budget system for the PTO and the annual problems that system creates. The office is fully financed by user fees. Every year it estimates the amount of fees it will collect, and the House Appropriations Committee subsequently appropriates an amount equal to the estimate.

“It's imperfect because their predictions are obviously imperfect,” Rep. Alan Mollohan (D-W.Va.) told his colleagues on the House floor on Wednesday. “They are talking about revenues that they may or may not receive into the future.”

But it now appears that the agency will collect more fees this year than it had estimated—roughly $129 million more. Under the current budget authority, the PTO would be unable to touch that extra money. And so Congress had to step in.

3 cheers for a bit of fiscal sanity! With the windfall amount to be used by the USPTO to do just what is stated in the opening paragraph of this BLT entry. About time Congress modified the USPTO's budget methodology to make sure monies collected from patent-related fees aren't siphoned off for other uses but are applied where they are needed most.

Bonus IP piece o' the day: Rambus investors gleeful over big legal victory by Therese Poletti at MarketWatch.com.

i4i Gains Additional Legal Support For XML Patent In Microsoft Ruling

PC Magazine: Microsoft's on-going patent battle with Canadian firm i4i over the inclusion of an XML editor in Microsoft's Word application has reached yet another dead end. Chloe Albanesius reports on the matter in her topical piece entitled In Blow to Microsoft, Validity of i4i Patent Upheld. She writes on Microsoft's bid to defend itself against what it views as improperly interpreted patent law:

"We continue to believe there are important matters of patent law that still need to be properly addressed, and we are considering our options for going forward," Kevin Kutz, director of public affairs for Microsoft, said in a statement.

The case dates back to 2007, when i4i sued Microsoft for infringing on its XML editor patent. In August 2009, a District Court in Texas handed down a $290 million judgment against the software giant and ordered Microsoft to remove Word from the market within 60 days.

Microsoft appealed, but lost in December. At that point, Microsoft said it would remove the infringing XML editor from all copies of Word by January 11, but still filed a second appeal on Jan. 8. In March, the court issued a preliminary ruling that said the original judgment should stand, and in April, it rejected Microsoft's request for an en banc review.

Microsoft could still appeal to the Supreme Court, a viable but slim possibility.

To the Supreme Court, then! Check out the rest of Albanesius' piece for the details of i4i's side of the story and look for a motion from Microsoft to continue to fight the good fight in the weeks or months to come.

Intellectual Property Watch: The mandated 3 year review of the Digital Millennium Copyright Act (DMCA) by the US Patent and Trademark Office (USPTO) has been performed and the results of the deliberation confirm the rights of consumers to use gadgets and snippets of video footage in certain situations. Leslee Friedman informs the gentle reader what these confirmations mean for the general public in her related piece, Review Of US Digital Millennium Copyright Act Brings New Exemptions. Here's a choice passage, or two:

The United States Copyright Office this week completed its statutorily required review of the landmark Digital Millennium Copyright Act (DMCA). Included in the ruling were three major exemptions: a renewal on the exemption for cell-phone unlocking, a new exemption for the jailbreaking of smart phones technology, and the use of visual media clips for transformative, non-commercial works [vidding]. The ruling has resulted in a flood of optimism from a range of open-access advocates.

These exemptions will have to undergo new scrutiny in order to be renewed through the same process in three years, but for the moment, the vidding exemption opens up new ground for professionals working on presentations, artists, and educators to grapple with visual media while being certain they are covered by Fair Use Doctrine, according to sources.

The ruling has excited groups and individuals in favor of a more "open access" environment, including the Electronic Freedom Foundation (EFF) and the Organization for Transformative Works (OTW). The implications of "jailbreaking" apply somewhat heavily to products made by Apple so time will tell if the USPTO decision on the DMCA will negatively impact Apple's bottom line or not.

The Huffington Post: Author, professional speaker, and founder of InnovationCoach.com Robert F. Brands' timely article, Redefining Innovation's True Reward: Amassing Intellectual Property and Value Creation takes a supportive stance on the ability of intellectual property protections to invigorate and increase entrepreneurial efforts. He writes:

...Intellectual Property will drive the future. As we move past the Industrial Age and the Age of Technology, the future era will focus on process that drives IP -- and the real value it delivers. It is imperative to build and protect IP through the use of patents. Patents protect and define the innovation so they are the key step to commercialization and enhancing value.

It is essential for every company to keep a patented Intellectual Property portfolio. The IP portfolio of Airspray doubled in value because of the patented technology that turned liquid hand soap into foam. Airspray realized -- and its fiscal results proved -- that the regular and persistent renewing, refreshing and updating of patents was well worth the cost.

Hear, hear! If IP can help the biggies like Coca-Cola, which Brands holds up as a shining beacon of the profitability that a strong and innovative company can achieve when they put IP ahead of all else, then it certainly can boost small businesses' bottom lines, too. Find out about Coke's successful renewal under a strong, IP-centric leader in the early 80s by reading Brands' entire piece at the link above.

IPWatchdog.com: Ever since the US Supreme Court ruled on Bilski, the IP community has been agog and many sectors that will be directly impacted by the decision have been scrambling to make policy decisions to comply with the long-awaited instruction. Gene Quinn's Patent Office Releases Interim Bilski Guidelines provides insightful guidance from the USPTO on what the examiners will be using to stay within the new interpretation of business method and software patents. To whit:

The Patent Office explains that it is their understanding of the Supreme Court decision in Bilski that the Court intended to “underscored that the text of Sec. 101 is expansive… [and] business methods are not “categorically outside of Sec. 101’s scope…”

The Notice also reminds examiners are reminded that Sec. 101 is not the sole tool for determining patentability where a claim encompasses an abstract idea, and specifically states that “Section 101 is merely a coarse filter and thus a determination of eligibility under Sec. 101 is only a threshold question for patentability.” This should hardly be considered new, or refreshing, but the way that the Patent Office and many patent examiners have interpreted business methods and computer implemented methods over the last few years suggests that this change in examiner guidance could be monumental. It really ought to not be monumental because this guidance merely directs the patent examiners accurately on the law, and patent eligibility under Section 101 has always been merely a threshold question. Patent examiners and the Patent Office for years have not treated it that way, largely ignoring basic principles of patent law. This guidance should put an end to that and there is real reason for optimism.

At least UPSTO Chief Kappos and crew are getting their ducks in a row, but are all the other affected parties so ready to address the new rules of the software/business method patent game?

The Hill: In a separate, and somewhat related piece, USPTO Chief Kappos comments on the collection of fiscal year 2010 fees and highlights the need for the Congress to help his organization get adequate funds to address on-going pendency problems and high examiner turnover. Here's a snippet from the press release, Ensure USPTO has access to all of its fee collections:

Without urgent congressional action to amend its current year appropriations, USPTO cannot invest its fee collections this year to make a dent in the backlog, hire new examiners, pay for overtime and make critical investments in IT infrastructure. Without help from the Congress, American companies, universities, and independent inventors hoping for patent approval to commercialize their new technologies and create new private sector jobs will have to wait unnecessarily for their patents to be granted.

Thankfully, a simple, and completely budget-neutral solution has been proposed by the administration that would allow USPTO access to all of its collections this year. But it requires fast Congressional action to maximize its effectiveness. I urge Congress to act swiftly on the administration’s request and help accelerate the pace of our economic recovery, for the sake of local businesses and entrepreneurs in each and every district of our country.

True, 'dat! Without funding, the USPTO can not hope to keep up with current incoming patent applications, yet alone eliminate the millions of already-filed applications stacked to what must be sky-high levels awaiting the overworked examiner corps to take action.

Bonus IP piece o' the day: Nvidia Loses to Rambus in Latest Patent Suit by Michelle Maisto at eWeek.com.

US Patent And Trademark Office Changes Mind On Pot Patents

The Wall Street Journal: USPTO-approved, cannabis-related patents have come and gone quicker than a dime bag of kind bud, it seems, leaving marijuana businesses without intellectual property protection for their THC-containing elixirs, salves and unguents. An op-ed piece by L. Gordon Crovitz provides all the back ground information on the short-lived life of the marijuana patent category in his related article, Government Drops the Ball on Patents. Here's the 411:

On April 1, the U.S. Patent and Trademark Office created a new trademark category: "Processed plant matter for medicinal purposes, namely medical marijuana." The patent office, part of the Department of Commerce, posted the new category on its website.

But last week the patent office snuffed out the promise of federal recognition. On Tuesday, after questions about the new pot-trademark category from a Wall Street Journal reporter, a patent-office spokesman said the office planned to remove the new pot classification by week's end, and the category is now off the website.

A would-be dream come true for medical marijuana peddlers but the USPTO recognized the problems inherent in examinations of pot-related patent applications and put the kibosh on the whole program to avoid any very funny, YouTube-able scenes from patent examiner's cubes as they test drive the good stuff. Read the rest of Crovitz' piece for the story of the mercurial rise and fall of pot patents. Or should that be Icarus-like?

Bloomberg Businessweek: A Soviet emigrant to the US is suing automaker Toyota over its Prius hybrid car, claiming that the vehicle infringes on his "1994 [patent] for a high- voltage system to power gas-electric hybrid cars." Susan Decker and Alan Ohnsman reports on this potentially devastating lawsuit in their topical, co-authored work, Toyota Prius Success Runs Into Soviet Emigrant’s Patent Claim. They write:

The success of Toyota Motor Corp.’s Prius, the best-selling hybrid car in the U.S., may stall if Alex Severinsky doesn’t get paid.

The Soviet emigrant, who began his career developing antitank-warfare instrumentation, is getting his day in court over his claims that the idea he patented in 1994 for a high- voltage system to power gas-electric hybrid cars was used by Toyota without permission. Severinsky, 65, has spent years trying to get the automaker to pay royalties, and a hearing that starts today may lead to the U.S. blocking imports of the Prius.

“When I invented the hybrid engine, I said ‘this is the biggest invention I can ever make,’” Severinsky, who fled to the U.S. in 1978 with his wife, son and $800, said in an interview. “They are thieves.”

The International Trade Commission (ITC) is now weighing the benefits of giving Mr. Severinsky his financial due against the damage Toyota will sustain if their Prius automobiles are blocked from sale in the United States.

Essex, the ITC judge, has said Toyota can’t try to re-argue the validity of the patent or whether it’s infringed. That leaves the question of whether Paice has a domestic market to protect, and if it’s in the public interest to issue a ban.

Citing potential job losses, lawmakers have written the ITC to side with Toyota. Among them are Senate Republican Leader Mitch McConnell of Kentucky and Democratic Representative Travis Childers of Mississippi, who have Toyota plants in their states.

Paice’s lawyer, Ruffin Cordell of Fish & Richardson in Washington, said other automakers including Ford Motor Co. make hybrid vehicles and could benefit from an ITC order against Toyota.

Maybe some kind of royalty payment might be in order for the patent-holder of high-voltage systems in cars, but to stop Toyota altogether from offering its best-selling green car would seem beyond good reason.

For an in-depth look at the latest ACTA skinny, be sure to check out Kim Weatherall's ACTA: new (leaked) text, new issues… at The Fortnightly Review of IP & Media Law. A snippet to get you started:

So where to from here? The parties are still talking about concluding negotiations by the end of the year.  According to IP Watch, some of the negotiators have seen “a real acceleration” in the more recent rounds of negotiations, and Prof Geist has opined that we could in fact see conclusion of the negotiations this year. Perhaps this is why the tension between some of the negotiating parties is bursting out a little in public.

US negotiator Stan McCoy has said that “there was some progress on ACTA in Lucerne, but not as much the U.S. had hoped”, and the EU negotiators have been accusing the US of ‘hypocrisy’ and drawing ‘red lines’.  To an outsider, it looks like they’re getting to crunch time: and the question of exactly how far they’re willing to compromise has to be faced – but they will be faced, because everyone involved wants to move on after over 2.5 fairly intense negotiating years and more rounds in 2010 than one would care to count. Me? I think they’ll reach agreement, and soon, and they’ve all committed too much to see it fall over.

But regardless of what happens in the ACTA negotiations, I have a feeling that we’ll be seeing something very close to these provisions again real soon.  Because there is another set of negotiations going on at the moment: the Trans-Pacific Partnership negotiations. The TPP is supposed to be “a high-quality, comprehensive 21st century Free Trade Agreement (FTA) that increases economic integration in the Asia-Pacific region”.  That is trade-diplomat-code-speak for “it’s an FTA with everything, like the AUSFTA”. And that means IP will be in it.

NewsyStocks.com: From Beijing, China, comes news of an effort to codify traditional Chinese patent medicine. Instead of having to rely on outside interpretations of what kinds of mixtures to make and prescribe to their patents, doctors will be able to read definitive advice from specialists in book form and act accordingly. Experts to compile textbook on traditional Chinese patent medicine tells the tale:

Traditional Chinese patent medicine,including pills, capsules, and ointments made from Chinese herbal medicines, will soon have their own textbook, Beijing Huimin Health and Medical Development Foundation announced Friday.

Entitled "Proper Use of Traditional Chinese Patent Medicine" , the textbook seeks to end the semi-anarchical state of traditional Chinese patent drugs by guiding doctors in their prescriptions, said Hui Lusheng, the board chairman of the Foundation.

There are more than 9,000 traditional Chinese patent medicines, of which around 1,000 are widely prescribed by practitioners, according to Hui.

"Doctors, without a systematic understanding, usually prescribe them according to the instructions from drug makers," noted Hui.

A boon to patients and physicians alike, nu? The tome also aims to help reduce the number of incorrect applications of Chinese patent medicine that can result in adverse reactions and sicknesses caused by mistaken knowledge.

IPWatchdog: Gene Quinn details a round table to be hosted by the USPTO on the new Enhanced Examination Timing Control Initiative (EETCI) in his related post, USPTO to Host Roundtable on Three-Track Patent Proposal. Here's what Quinn has to reveal to the gentle reader:

The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as “Three-Track,” currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. The meeting will also be webcast. Web cast information is available on the USPTO’s website by visiting http://www.uspto.gov/patents/announce/3track.jsp.

If you can't attend in person, be sure to tune in for this exciting public forum discussion on an important USPTO program-in-the-making via the web. Both USPTO Chief David Kappos and USPTO Commissioner for Patents Bob Stoll will be in attendance, which should make for a lively event with the IP community, the public and members of the media invited to attend.

Bonus IP piece o' the day: Google Spent $100 Million Defending Against Viacom’s $1 Billion Lawsuit by Erick Shonfeld at TechCrunch.com.

Marijuana Inc. Applies For Patent On ‘True Cannabis Derived Remedy’

Bloomberg.com: Microsoft scores a major intellectual property (IP) win in China with a recent judgment in their favor for the amount of $477,000. Mark Lee provides additional news of this exciting development in his topical article, Microsoft Settles China Intellectual Property Dispute With CITIC Kington. Lee writes:

Microsoft agreed to settle a lawsuit it filed against CITIC Kington Securities at a court in the eastern city of Hangzhou, the U.S. company said in an e-mailed statement today. CITIC Kington will buy 3.23 million yuan ($477,000) of Microsoft software as part of the settlement, it said.

The maker of the Windows operating system is stepping up action against Chinese companies for unlicensed software use. Microsoft is losing billions of dollars to software piracy in the world’s third-biggest economy, Chief Executive Officer Steve Ballmer said in May.

A seminal event and one that shows China is getting on board the infringement enforcement bandwagon. Microsoft stands to recover further millions from fraudulent Chinese software consumption if additional cases can successfully be prosecuted in favorable legal venues.

Channel Register: New Zealand's judiciary strikes out into unknown territory with a controversial court ruling that makes software "unpatentable". Kelly Fiveash reports:

The New Zealand government has decided to push through the country's contentious new Patent Bill without making any amendments to it, thereby making software "unpatentable".

However, NZ's commerce minister Simon Power noted that the country's Intellectual Property Office would draft new guidelines once the Bill has passed the final stages in Parliament.

The rulebook will eventually allow inventions that contain embedded software to be patented, he said.

So the ban is not 100 percent against protection for software innovations, it seems, and there is bound to be future wrangling over the "anti-software patent" move by powerful IT lobbies. Read all of Fiveash's NZ government makes software 'unpatentable' (for now) for the rest of this developing story.

Groklaw: In re Bilski gets a new day in court with a ruling that declared an HP patent application invalid. Rather than quote out the details, which happen to be very much in favor of such a ruling, and therefor are only valuable as a look at what the other side thinks, click yourself through and read Alladin Sane's Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler.

Wolters Kluwer: A surprising number of companies report the theft of intellectual property according to a recent poll. More than one third of companies believe their intellectual property has been stolen highlights the problems encountered by companies who don't practice strict controls over their sensitive information. And, it should come as no surprise that a large portion of IP theft events come due to employees snooping and stealing from their employers. Here are a pair of relevant passages for the gentle reader's enjoyment:

Thirty five percent of participants in a recent survey believe their company’s highly-sensitive information has been handed over to competitors. This is according to Cyber-Ark Software’s fourth annual “Trust, Security and Passwords” global survey. Thirty-seven percent of the IT professionals surveyed cited ex-employees as the most likely source of this abuse of trust. While perhaps not surprising that disgruntled workers top the list, it’s noteworthy that 28 percent suspected “human error” as the next most likely cause, followed by falling victim to an external hack or loss of a mobile device/laptop, each at 10 percent. The most popular information shared with competitors was the customer database (26 percent) and R&D plans (13 percent).

There was little year-over-year change in the number of respondents who suspected the loss of intellectual property to a competitor, indicating that more needs to be done to protect companies’ most valued assets. Additionally, to address vulnerabilities related to human error that could expose a proprietary database or financial information, organizations must employ additional layers of control such as the ability to grant privileges to sensitive data and systems on-demand. This limits “innocent” mistakes by allowing access to information only when users need it to perform a particular task or query.

Managing tight control of information and compartmentalizing it carefully might seem inconvenient and unnecessarily stringent, but the theft of IP can cost a company millions in lost revenue if it falls into the wrong (read: a competitor's) hands. Learn from their mistakes and be sure your IP auditing and control program is in place and running as advertised.

Market Watch: Here's an interesting take on a patent application: a true cannabis derived remedy. Filed by a company doing business as Marijuana Inc., the patentapplication should both raise eyebrows and get some serious news coverage to boot. Here's the scoop:

Marijuana, Inc. (PINKSHEETS: PCIO) announces the pending application for a true cannabis derived remedy. Marijuana, Inc. intends to file a patent application as the owner of a cannabis-based capsule to be taken orally. This formulation for pain management, one of the integral properties of cannabis, may help those suffering pain from a myriad of diseases. Formulator and inventor Reverend Dr. Douglas Van Dyke stated, "This Shamanistic blend of herbs has shown great promise for pain management treatment among a closed group of patients. The probability of efficacy among a large control group is quite feasible and we welcome the opportunity to prove the formulation." Marijuana Incorporated (http://www.marijuana-incorporated.com) has several other planned patent applications waiting to be filed including a topical lotion.

And with that, you can put on your sunblock and get high all in one fell swoop! Stay tuned to see what the US Patent and Trademark Office thinks of Dr. Van Dyke's Shamanistic magical lotion but for now read the news release entitled Announces the Pending Patent Application for a True Cannabis Derived Remedy.

Bonus IP piece o' the day: Puzzling 9th Circuit Dilution Opinion Over eVisa.com--Visa v. JSL by Eric Goldman.

Chinese Companies Spar Over Intellectual Property Rights To E-books

InformationWeek SMB: A Chinese company specializing in e-books is running into some unexpected trouble due to a copyright dispute over digital versions of a pair of well-respected histories covering the periods before communism. Mike Clendenin reports on this interesting turn of intellectual property events in his related piece, China Copyright Disputes Threaten E-Book Industry. Clendenin writes:

The company, Hanvon, is being sued by the Zhonghua Book Company for alleged copyright infringement of its Twenty-Four Histories and Draft History of the Qing Dynasty. The works are considered authoritative in the field of the nation's pre-communist history. Hanvon said it obtained the legitimate copyright through a deal with the China Written Works Copyright Society, but Zhonghua has nonetheless requested $136,000 in damages.

Though a relatively small amount, the situation highlights a big and growing problem for e-book reader manufacturers in China. It's getting increasingly difficult to obtain legitimate copyrights in what could potentially be the largest e-book market in the world. In some cases, agents purport to represent a collection of content providers, but often overstate the true size of their library, leaving the licensee open to additional claims.

This type of copyright feud is a somewhat new occurence in China and such events are likely to increase in number as Chinese businesses see the value of protecting their innovations. For now Hanvon's case is important because it is a bellwether of things to come and shows that China is slowly taking steps on the path to modern intellectual property enforcement policies. Good stuff, that!

IPWatchdog.com: Gene Quinn always provides an informative and entertaining venue from which to espouse his special kind of intellectual property wisdom and his most recent post, Renewed Congressional Interest for Funding the Patent Office, is no exception to past examples of good writing. Quinn reveals how the United States Patent and Trademark Office (USPTO) is on its way to a brighter future but needs the help of America's most powerful elected officials to get there. Here's a representative section from Quinn's piece:

Eventually the Congress is going to have to listen to the people and the companies that employ the people and the companies and individuals who donate money to them.  I realize that over the last year or more the government hasn’t exactly listened to the people, and perhaps the best thing that can be said is that they have not been governing by public opinion polls.  But over the course of the next several months we might have a unique opportunity, and perhaps the renewed interest in the patent system and the Patent Office showed by Congressman Conyers is just the opportunity to get involved and rally behind what we all know needs to be done — FUND THE PATENT OFFICE!

A great idea, Mr. Quinn. For more on what Quinn thinks will solve the USPTO's woes, be sure to read his complete piece via the link above.

ArsTechnica.com: A recent decision by the 9th District Court concerning the rights of "First Sale" could have unintended consequences for a wide variety of goods. Matthew Lasar's timely story, Can you sell your imported gadgets? Court guts "First Sale" clarifies the court's position on reselling purchased goods that enjoy copyright protection. Here's one of the better quotes from Lasar's work covering Costco's troubles with reselling Omega watches in the States that it procured overseas:

Costco didn't directly buy these logoed watches from Omega. Instead, it purchased them at a bargain price via the so-called "gray market"—from distribution companies authorized to sell the items overseas. A company called ENE Limited  bought them up and sold them to Costco, which put them up for sale at its stores in California. When Omega found out about this activity, it sued Costco for infringement.

Standing in the way of the company's complaint was the Supreme Court's 1998 Quality King Distributors decision, which put limits on this sort of litigation. In that case, California hair care product maker L'anza sued Quality King for illegal distribution of L'anza products. These US-made items came to Quality King via a similarly circuitous route. The company bought them extra cheap from a distributor in Malta, which had purchased them with affixed copyrighted labels from L'anza's United Kingdom wholesale outlet.

L'anza charged that because King bought its products outside the US, Section 109 protections didn't apply. Those protections were said to be overruled by Section 602, which prohibits unauthorized importation of copyrighted works acquired outside of the country. But the High Court saw it otherwise, contending that the First Sale principle "is applicable to imported copies."

This is a change from previous interpretations regarding the resale of purchased goods and could have negative effects for, of all people, librarians. Many books are purchased from foreign sources and are often resold after they have run their course at the local library which puts librarians in a tight spot when they go to recoup some of the cost of said books due to the 9th Circuit Court's ruling.

TechDirt.com: Mike Masnick has Joel Tenenbaum's best interests in mind with his coverage of a massive reduction of the award amount in a court case brought by the holders of various rights to music files that this particular defendant pirate. Join in the fray by checking out Masnick's in-depth coverage in his investigatory Looking More Closely At Judge Gertner's Constitutional Analysis Of Copyright Awards In Tenenbaum Case.

Defenders of both the original Jammie Thomas award and the Joel Tenenbaum award have frequently claimed that the case law (mainly the BMW v. Gore case) doesn't apply since that was not for statutory damages, where the rates are clear and already set. That's going to be a key point made in the inevitable challenge to this ruling. But Gertner aptly explains why it's reasonable to explore whether or not the award is unconstitutionally excessive, even when it's within the statutory rates, and even suggests that both the government and the RIAA are misreading other precedents -- with the key one being the Williams case, which found a damages award acceptable because it fell within statutory rates. Gertner points out that the RIAA and the government are taking that ruling out of context, and only looking at the result, rather than the actual reasoning.

Reasoning and results aside for a moment, Judge Gertner's reduction of the fine by a magnitude of order sends a clear message to the holders of copyrighted materials: the fines and punishments for IP theft need to be fitting and fair and a that pie-in-the-sky, life-crippling numbers are not in keeping with fines levied against other infringers of the corporate variety. Be sure to read Masnick's entire piece for more on this breaking IP-related story.

Bonus IP piece o' the day: Double standard: Unlicensed bar music vs. P2P users by Nate Anderson at ArsTechnica.com.

PatentBaristas.com: The USPTO has published a document in reaction to the recent US Supreme Court ruling on the Bilski patent case that provides guidance to patent examiners until a formal set of rules can be incorporated into the application process. Stephen Albainy-Jenei covers the news release in his related piece entitled USPTO Sends Interim Guidance Memo To Examiners Regarding Bilski Decision. He reports:

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.

The directive also notes that the patent must "be novel, non-obvious, and fully and particularly described" along with meeting the new guidelines under the current post-Bilski interpretations. The USPTO will continue to examine the SCOTUS' Bilski ruling and modify future guidance accordingly.

Policy Innovations: From Australia comes a lengthy interview featuring the opinions of Prof. Matthew Rimmer, a Senior Lecturer at the Australian National University's College of Law, an Associate Director of the Australian Center for Intellectual Property in Agriculture, and a member of the Climate Change Institute at the ANU, on intellectual property and clean tech. From the aptly-titled Clean Tech Intellectual Property we gather some answers from Professor Rimmer:

We hear all the time that technological development is our best hope for transforming the oil economy and mitigating climate change. President Obama just did this in his Oval Office speech about the oil spill. He said that, "scientists and researchers are discovering clean energy technologies that will someday lead to entire new industries." The problem is that "the energy industry only spends a fraction of what the high-tech industry does on research and development."

Intellectual property issues lurk in the background of these public policy questions about energy research and development. If someone develops a fantastic new solar panel, the best choice for the environment would be to give it away as cheaply as possible so that the maximum number of people could get it. But giving a technology away undermines the incentives that private companies have to develop new technologies. If I can't profit, why would I invest in expensive research and development? Here, standard intellectual property rights are in tension with some public goods.

The discussion that follows this introductory segment of the interview roams far and wide across the subject of what exactly constitutes IP and how it plays out in policies and meetings related to the issue of climate change. Also of concern is how best to address global warming while keeping some semblance of IP enforcement for content owners without squashing the hopes of those third-world countries who need inexpensive solutions to their pollution problems. Read all of the interview for Rimmer's ideas on how he thinks a mutually-beneficial arrangement can be agreed upon by all parties.

ArsTechnica - Open Ended: Google's efforts to release the VP8 video codec into the wilds of the Internet unfettered by IP protections or related royalties seems to be gathering steam. Ryan Paul investigates the current status of the VP8 codec as implemented by ffmpeg in his topical piece, FFmpeg gets its own implementation of Google's VP8 codec. Here's more on open source video codecing as envisioned by Developers Ronald Bultje & Co.:

Building on top of FFmpeg will allow them to take advantage of a substantial body of existing code. FFmpeg already supports previous iterations of the codec, such as VP5 and VP6, which share some common characteristics with VP8. According to Bultje, some of the optimizations developed for FFmpeg's H.264 and VP5/6 code can be shared seamlessly with the new VP8 implementation. This approach will lead to a smaller footprint than if the developers were to simply graft Google's code into FFmpeg.

Bultje also believes that he and other developers can produce an FFmpeg-based VP8 decoder that will substantially outperform Google's code. In his blog entry, he points out that this wouldn't be unprecedented because FFmpeg's Theora and Vorbis decoders are widely regarded as superior to the standard reference implementation that is produced by Ogg-backer Xiph.

"It is highly likely that our native VP8 decoder will (once properly optimized) also perform better than Google's libvpx," he wrote. "The pattern here is that since each libXYZ has to reinvent its own wheel, they'll always fall short of reaching the top. FFmpeg comes closer simply because our existing wheels are like what you'd want on your next sports car."

But the developers admit that the strong similarities between Google's VP8 implementation and that of H.264, currently the reigning video codec, might lead to patent disputes in the not-so-distant future. Stay tuned for more developments as they happen...

TechDirt.com: So, you ask, how exactly did the makers of the now mostly irrelevant Encyclopaedia Britannica become the holders of a GPS-related patent? A good question and here's an answer provided by none other than Mike Masnick in his timely post, It Appears That The Encyclopaedia Britannica Entry On Shaking Down GPS Providers With A Bogus Patent Needs Updating. He writes:

Through a series of events, Britannica ended up in possession of a rather infamous patent (5,241,671), originally granted to Compton's back in 1993. That patent was initially used to claim control over... well... pretty much all multimedia, including CD-ROMs and certain aspects of computers and software. The story got so much attention that the USPTO's boss stepped up and directly ordered a re-exam of the patent. All of the claims were struck down, but Compton's (and soon Britannica who took over ownership of the patent, being an investor in Comptons) kept trying. After eight long years of fighting back and forth, the patent with narrower claims was granted, which Britannica decided covered GPS technology.

And with their GPS patent firmly in hand, EB decided to sue a number of other businesses for infringing on their IP crown jewel but, as luck would have it, the patent and related appeals have been "dumped," leaving the company to further molder as its contemplates how it went from one of the premier providers of information in the modern world to a small-print footnote.

National Journal - Tech Daily Dose: Juliana Gruenwald covers the efforts by an organization in charge of the fight against illegal online pharmacies to clamp down on their proliferation by limiting their use domain registrations. From Gruenwald's ICANN Urged To Crack Down On Registrars we gather more bits on LegitScript's John Horton's attack on fake online pharmacy domains:

Horton...called on the Internet Corporation for Assigned Names and Numbers, which manages the Internet's domain name system, to crack down on registrars that violate their accreditation agreements with ICANN, which bars domain names from being used for illegal activities. Citing a recent report from an Internet security research company called KnujOn.com, Horton, who contributed to the report, noted that some registrars have become safe havens for rogue online pharmacies. "Without their [registrars] sponsorship of the illicit transaction structure, the problem would not exist," the report said.

ICANN has not yet responded to Horton's accusations of complicity but you can be sure they will come out with a statement clarifying their position in the fight against illegal, unsanctioned online pharmacies in the coming weeks.

Bonus IP piece o' the day: Bilski Ruling: The Patent Wars Untouched by Steve Lohr at The New York Times BITS column.

The 271 Blog: Peter Zura's recent post, USPTO Close to Agreement With POPA to Overhaul Performance Review for Examiners, highlights what looks to be a successful meeting of the minds between the nation's patent office and the examiners' union. Zura reports:

USPTO management has worked with representatives of the patent examiners union (POPA) to establish a proposal to "better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications." If adopted, the changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

Perhaps this is the first in a series of positive steps on the way to reducing both patent pendency and the number of weak patents polluting the world of high technology. Zura notes that the agreement would allow examiners more leeway in using their own individual, professional discretion during the patent process while at the same time create more transparency in the measurement of patent quality. The proposal will soon come up for a vote by the members of the patent examiners union (POPA) and could be a bellwether of things to come.

Intellectual Property Watch: The maker of one of the most profitable recreational drugs on Earth is struggling to retain its market dominance in a country known for its carnal appetite. Claudia Jurberg has more details of Pfizer's battle against generic imitators in Snag In Early End To Viagra Patent In Brazil. She writes:

The date 20 June will mark the authorised end of Viagra’s patent in Brazil, following a 28 April decision of the Superior Court of Justice. Since the decision, five laboratories have requested registration for drugs that are generic versions of Viagra or similar to it, according to press reports. EMS, the largest generic pharmaceutical company in Brazil, was the first to receive it and announced it would produce Viagra generic on the first day after the end of the patent and pharmacies could sell it a week later.

The snag mentioned in the title of the piece is due to a Brazilian law stating that generics must be priced at least 30 percent less than the trademarked version of a given drug, and because Pfizer recently dropped the price of Viagra by more than half, generic drug manufacturers such as EMS might have to re-calculate their prices and profits more carefully before entering the marketplace.

bnet: Looks like Google's poised to start manufacturing content on demand if a recent patent is an indication of what lies in store for Internet searchers who find themselves coming up empty-handed. Erik Sherman's Google and Demand Media Racing to Patent Automated Content [Update] has additional information for the gentle reader:

Demand Media has made a big name for itself in cheap content by analyzing search queries and commissioning content that addresses the specific interests.

According to a story in the Financial Times, Google (GOOG) recently received a patent that would “replicate one part of what has made Demand’s approach to content so successful”.

The implications are that Google has major plans to publish its own content — and to keep others from using search analysis to create super sites that would pull eyeballs, and ad dollars, away from Google’s own Web properties. But it may have trouble if Demand Media’s own patent applications go through, which could act as barriers to Demand’s profit-maximizing methods.

Both companies are targeting the same audience and have patents granted, or under examination, that would put them at loggerheads and likely result in some kind of legal fracas or maybe even a cross-licensing agreement if everyone's feeling friendly.  And a move by Google to create content to match searches might put it under further scrutiny by the powers that be, who are already breaking out the magnifying glass and fingerprint dust as it is.

PatLit.com: The University of Oxford Press is at it again: this time it's a tome on the topic of patent misconduct. Jeremy Phillips offers a brief synopsis of the book's content in his topical review entitled First the ethics, now the misconduct ...

Just published, and the focus of this note, is Patent-Related Misconduct Issues in U.S. Litigation by Joel Davidow (a partner in IP boutique Kile Goekjian Reed and McManus of Washington, DC). The publisher's blurb claims that this is "the first book of its kind to provide a comprehensive review of misconduct claims and defenses, with reference to existing case law and litigation strategies", pointing out that it is "designed to serve as the first comprehensive review of conduct defenses and counterclaims, with a focus on existing case law and litigation strategies".

Phillips goes on to quote from the book and wonders how such a book has surfaced in the United States and not in Europe where there is surely some similar concerns about patent-related misconduct. Read his complete piece for the rest of the story via the link above.

Bonus IP piece o' the day: USPTO Seeks Change Patent Examiner Performance Standards new release at IPWatchdog.com.