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Archive for April, 2010

San Francisco’s Open Press has announced the results of a new survey from nCircle, a provider of automated security risk and compliance auditing solutions. The survey contacted 257 security professionals, covered a range of security topics in addition to social media, including smartphones and cloud computing. More…

The Georgian Times has reported that local Georgia city and county governments are taking a new look at their policies governing employee social media use.  More…

Recent Updates at the CIPO

Posted by M. Reichel On April 21, 2010

The Canadian Intellectual Property Office (CIPO) recently announced a series of updates for visitors and users of its Web site:

1. The Trade-marks Opposition Board (TMOB) has a new “Decisions” page that provides hyperlinks to final decisions reached in section 45 proceedings along with a new schedule of upcoming hearings (available HERE).

2. A series of new Web pages for intellectual property professionals, including an Industrial Designs Professional page (available HERE), a Trade-marks Professional page (available HERE), and a Patents Professional page (available HERE).

3. As noted by the CIPO (link HERE, under March 30, 2010), its Web site “has added an improved bilingual search capability to help you to conduct searches in both English and French on the Basic Search pages of the Canadian Patents Database, the Canadian Trade-Marks Database and the Canadian Industrial Designs Database. This feature will help to ensure that your search query includes more terms; thereby you should have an increased results list.”

EPO Provides Summary of Recent Rule Changes

Posted by M. Reichel On April 19, 2010

On April 1, 2010, a series of patent practice changes at the European Patent Office (EPO) took effect, including new search and examination rules, as well as new timelines for filing divisional applications. As noted in a recent summary announcement (available HERE), the EPO notes that the changes “relate to the filing of divisional applications, pre-search communication between examiner and applicant, obligatory response to the search opinion prior to entry into substantive examination, a requirement for applicants to identify and indicate the basis for amendments and a clearer restriction of examination only to the subject matter searched.” A summary entitled “Realigning the European patent grant procedure” (available HERE) is also provided by the EPO, as is a Web page with links to each rule change (available HERE) and a Web page entitled “New edition of the EPO Guidelines for Examination” (available HERE) with several embedded links. I personally have received a number of notices from my European agents advising me of these changes. If you manage an international portfolio with pending European applications and have not been advised by your respective agents, consider reaching out to them so that they can advise as to any deadlines or practice changes that may impact your pending portfolio.

On April 7, 2010, the World Intellectual Property Organization (WIPO) announced that its Arbitration and Mediation Center and the Format Recognition and Protection Association (FRAPA) will be combining their efforts to provide “alternative dispute resolution services to address problems of format plagiarism or the unauthorized copying of television (TV) formats, such as those used for game, reality or talent shows and sitcoms.” As noted in the WIPO announcement (available HERE), “the format industry is flourishing and the trade in TV formats is growing, the industry is characterized by fierce competition and frequent disputes,” and that “[t]hese disputes often relate to the unauthorized use of formats owned by third parties and can be difficult to resolve in court because of differences in relevant national laws in this area.” Specifically, the WIPO Arbitration and Mediation Center will take on the existing mediation activity of FRAPA and will administer disputes relating to TV formats filed under the WIPO Mediation and Expedited Arbitration Rules for Film and Media, which were launched this past December and are “tailored to the specific characteristics of disputes arising in the film and media sectors.” Additional information on this new service offering, as well as links to the two organizations and the applicable rules, are available at the link above.

USPTO Offers Guidance to First-Time Trademark Filers

Posted by M. Reichel On April 13, 2010

The U.S. Patent and Trademark Office (USPTO) recently announced that it has initiated the Trademark Information Network (TMIN) to provide information to first-time trademark applicants. The TMIN (USPTO Web site link HERE), currently offers the first of a series of videos relating to trademarks (called “Newsflash: Before You File”), as well as a timeline of trademark processing activities, a transcript of the video, and a list of topics from the video itself. Future “Newsflash” videos will be available on other trademark preparation and prosecution topics, including “Searching,” “Applicant Information,” “Drawing Issues,” “Goods and Services Issues,” “Basis Information,” “Specimen Issues,” “After You File,” and “Post-Registration Issues.” The TMIN Web site also provides a series of useful trademark links, including “Trademark Basics,” “Search Marks,” and View Documents,” to name a few. The first video is available HERE (in .wmv format), with a transcript available HERE (in .doc format).

USPTO Launches Ombudsman Pilot Program

Posted by M. Reichel On April 9, 2010

On Tuesday, April 6th, the USPTO announced that is has launched a new Ombudsman Program “designed to provide patent applicants with more assistance in handling application-processing problems if the normal channels have not been successful.” This announcement (link HERE) identifies this new one-year pilot program as being “intended to provide applicants with additional resources to ensure application-processing problems are handled in a more efficient way, thereby saving applicants and the Agency both time and resources and improving patent quality,” whereby “applicants, attorneys or agents who have application-processing concerns, and haven’t been able to get the assistance they need through normal channels in the Technology Center (TC), can contact the ombudsman representative for the TC through the USPTO Web site.” After contacting an ombudsman representative, the applicant (or his/her agent) will receive a call within one business day to discuss the specifics, whereby the representative will work with TC staff to address the applicant’s concerns “and try to get the application back on track.” Additional information is available at the announcement link above.

Is Facebook Facing a Renewed Patent Challenge?

Posted by M. Reichel On April 8, 2010

In a recent article (link HERE), Facebook, Inc. was identified again as being a potential active defendant in an infringement lawsuit initiated by Cross Atlantic Capital Partners (XACP), who claims to own the rights to a patent for an Internet-based “community for users with common interests to interact in” invented a decade ago. In 2007, XACP filed suit against Facebook regarding U.S. Patent No. 6,519,629 (entitled “System for creating a community of users with common interests to interact in,” available HERE), which lead to an inter partes reexamination of the patent. According to the article, “the [U.S. Patent and Trademark Office] examiners issued a decision that reaffirmed the validity of XACP’s patent. And in late March 2010, the examiners issued a right of appeal notice, effectively finalizing their decision and clearing the way for Facebook to challenge the decision before the Patent Office Board of Patent Appeals.” The patent at issue was filed in February 2000, issued three years later on February 11, 2003, and contains 32 system and method claims. As invalidity defenses are now off the table (according to the article referenced above), counsel for XACP is considering a request to lift the stay and allow the case to proceed to trial, presumably should no settlement be reached between the parties before then. The docket for the 2007 case, including over 175 docket entries, is available HERE via

EMG Technology Attempts to Take Another Bite of the Apple

Posted by M. Reichel On April 7, 2010

By James Pinyerd, Ice Miller LLP

According to a CNET news report on Monday, April 5, 2010, EMG Technology (EMG) added the iPad to its list of infringing products, joining the iPhone (link here).  EMG is asserting that the iPhone and iPad infringe its U.S. Patent No. 7,441,196, which relates to “an apparatus and method of manipulating a region on a wireless device screen for viewing, zooming and scrolling internet content.”  As noted in the CNET news report, the iPhone and iPad are also under fire from Elan Microelectronics.  Elan recently asserted patent infringement by the iPhone and iPad based upon its U.S. Patent No. 5,825,352, which relates to a “contact sensing method for emulating mouse buttons and mouse operations on a touch sensor pad.”  Further information on the Elan case can be found here.

USA Today reports over 300,000 iPads were sold on their first day on the market (link here) and reports show that the iPhone continues to be a popular seller (for example, link here). It will be interesting to see whether Apple Inc. decides to take a license and settle the lawsuits or fight to protect its valuable iPhone and iPad products.

On Friday, April 2nd, the U.S. Patent and Trademark Office (USPTO) announced that it is seeking public comment on its proposal that would effectively provide a 12 month extension period to the current 12 month provisional patent application period. This announcement (available HERE, with a Federal Register excerpt available HERE) states that the proposal “would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period,” noting further that “[t]he proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination.” As noted in the announcement, applicants would be allowed to file a nonprovisional application after the initial 12 month period provisional period, paying the filing fee and submitting an oath or declaration. This application would then be published, and after an additional 12 month period, applicants would pay a surcharge (tied to missing parts practice) and the remaining fees should they wish to proceed with their applications. Comments on this proposal must be received by the USPTO on or before June 1, 2010.

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