Very interesting article. Should we really welcome virus patents? Or are patents only meant for things YOU create (ships, devices, technology, rather than a disease/virus)?

Is this “virus patenting” a danger to scientific communities such as universities which try to share information found about a virus and a mechanism to fight it?

An academic community (involving multiple universities per se) allows many different companies or groups of researchers to attempt to solve a scientific problem rather than centralizing funding to one organizing

(for example, imagine an organization that fights influenza and owns all rights to fighting influenza).

Hope you found this interesting.

Seth

Protonix is a heartburn treatment that was developed and patented by Nycomed which was later purchased by Japan’s Takeda Pharmaceutical Co.  Nycomed had licensed Protonix to Wyeth, which Pfizer subsequently  purchased.

Israel’s Teva Pharmaceutical Industries Ltd. and India’s Sun Pharmaceutical Industries launched at-risk generic versions of Protonix. Teva started selling its generic version of Protonix in December 2007. Sun then launched its own version in early 2008, both before the U.S. patent covering the drug expired in 2011.

back in 2010, a jury decided that the patent protecting Protonix was valid, and the U.S. District Court for the District of New Jersey then upheld that decision. A settlement was reached shortly after the start of a federal trial to determine damages. Under the settlement, Teva Pharmaceutical Industries Ltd. will pay $1.6 billion while India’s Sun Pharmaceutical Industries Ltd. will pay $550 million in infringement damages, for selling their generic equivalents of Protonix before the expiry of the patent protecting the drug. According to Associated Press, Pfizer Inc. will apparently pocket 64% of the settlement.

Gives you heartburn, doesn’t it?

The students in this class came prepared with many questions that impressed me with the depth of thought that they demonstrated. One question, however, posed by Emily Whelan, went right to the heart of a common problem in patent translation: one with dramatic consequences for both prosecution and litigation attorneys.

The class had been assigned the translation of a Belgian patent filed in 1929, which set out to improve on what was at the time a new invention: crepe-rubber shoe soles. While the early versions of this newfangled footwear were waterproof and resistant to wear, they were also so slippery that, when walking on wet ground, it was almost impossible to move forward. The solution proposed in the patent was to provide “dessins à parties saillantes et rentrantes” (patterns having raised and recessed parts) on the bottom of the sole, as shown in the drawings.

Here, the student felt that the literal translation of, “having raised and recessed parts,” made the text somewhat cumbersome. This is where both patent attorneys (who probably didn’t find anything cumbersome about “raised and recessed parts”) and ordinary translators (who probably did) should pay attention. Like all good translators, the student had learned to avoid calques, which is to say, slavish word-by-word copying of the source text, which sounds unnatural in the target language. Examples of this sort of bad translation can be found on some Chinese restaurant menus (“cooked pig with five fragrant”) and signs for tourists (“annoying parking.”) In fact, interpreting and recasting the source text in the words that seem most suitable in the target language (“five-spice roast pork”/”no parking”) is at the center of the translator’s job description. In other words, translators are trained to believe (usually with good reason) that the more they avoid using clunky, awkward phrasing, the better they are doing their jobs. In this case, the student saw the unwieldy phrase, “patterns having raised and recessed parts,” and considered replacing this with the phrase “corrugated patterns.” There is no question that “corrugated patterns” reads more smoothly and, in light of the picture above, it seemed to be fitting. Her concern was that this phrasing was much shorter than the original and might leave out some of the meaning.

The student is to be applauded. Many, if not most, ordinary translators would not have hesitated to render this as “corrugated patterns” but while this rolls nicely off the tongue, it is very far indeed from the original disclosure. The problem is that it does not cover non-corrugated arrangements that nonetheless have raised and recessed parts such as this:

or even this:

.

In fact, even the linear pattern having raised and recessed parts that we first saw

need not be limited to corrugated configurations, as that would exclude jagged sawtooth patterns, or irregularly-stepped linear patterns, for example.

To select an accurate translation, the translator must be aware that the drafting attorney chose claim language that was deliberately broad. Without this awareness, the best practices of non-specialized translators, who want nothing more than a comfortable reading experience for their client, often result in the scope of the description being drastically narrowed. As a result, an attorney reading only the text of the translation could be led to believe that the patent does not disclose non-corrugated patterns.

A great deal of patent language sounds unnatural, verbose and stilted to the uninitiated, and this routinely leads to excessive editorial smoothing in lower-quality patent translations. 

Universities offering courses in patent translation are still relatively rare, but it is good to know that NYU is doing its part in making the word of translations a little safer for attorneys. 

1. Can you submit such a notification in a particular country?
2. Does the country you wish to enforce your IP rights have an IP customs notification system?
3. Does such a country’s national IP customs notification system include the type of IP you wish to protect?
4. What are the particular foreign customs agency’s IP notification requirements?

Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:

Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.

Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).

Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.

Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.

Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.

Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.

Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.

What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.

Below are the IP customs notification submission requirements for some of the worlds’ major markets.

**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.

Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.

Yesterday, SAP claimed a victory at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board over a business method patent around dynamic pricing technology, which Versata claims SAP infringed: the PTAB has now decided that that patent, number 6,553,350 (’350), is unpatentable.

This is the very first case to be tried under the new rules for business method patents, which are part of the America Invents Act. Business method patents are used to describe certain processes, often found in software; the problem is that they often get enforced with what some believe are too-wide interpretations, so the America Invents Act included a clause in it to try to reform this by letting companies appeal to a board over how general the patent in question really is.

SAP literally filed its appeal the day the Act was approved in September 2012, and the success of striking down the business method patent in this particular case could set a precedent for how other companies opposing business method patents may proceed.

The full decision is embedded below, but the background to this particular case centers around the ’350 patent. The case was first filed in 2007 by Versata, which claimed that software that it had created, and patented, to price items based on purchaser and other parameters, was effectively ripped off by SAP.

Versata’s claim was that it had a thriving market for its software, appropriately called Pricer. But then, when much-bigger SAP started to offer a product with similar features, business collapsed.

From its site:

After several stages of the case, with increasing fees levelled against SAP, the final ruling in May 2013 was for SAP to pay $345 million in damages.

That was, however, before this secondary appeal got seen by the PTAB. Erika Arner, a partner at IP law firm Finnegan, representing SAP, notes that the PTAB had determined that the ideas described in the patent were too abstract and general, and without “enough significant meaningful limitations to transform these abstract ideas into patent-eligible applications.” The PTAB, in fact, ruled all of Versata’s challenged claims unpatentable and therefore cancelled.

This, we understand, is just the first step for SAP in its attempt to turn the dispute in its favor. The USPTO is still considering whether to reexamine the patentability of Versata’s ’350 patent in a separate ex-parte reexamination proceeding based on prior art, notes  Arner.

And then comes the much bigger issue: whether SAP will be able to use these rulings to overturn the damages awarded to Versata. That case, before the Court of Appeals for the Federal Circuit Court, is still pending.

Update: we reached out to Versata to ask for a response for this story before we first published but have yet to get a comment. However, in a Bloomberg post, Scott Cole, of Versata’s legal firm McKool Smith, for now is (predictably) saying that success for SAP in the bigger patent case (the $345 million one) is unlikely:

“We can certainly expect an attempt to use this finding to reach from the grave on the case they already lost…There are a variety of reasons why we don’t think that will happen.” One of these is the advanced state of the existing patent suit. An appeal could take the whole case into another year of legal slogging.

Be that as it may, the SAP case, on another level, is the first demonstration of a company taking a business method to task under the new rules, and winning. Although apparently there have only been just over two dozen requests made for business method patent reviews since the rules came into effect, that could set a profile and precedent for more. (Or, it could spur the government to expand the review to cover other kinds of software patents, as Bloomberg notes.)

Business method patents are obviously not just the terrain of older companies, nor of trolls hoping to cash in on an existing, active company’s fortunes. Amazon owns a business method patent on the One-Click shopping cart.

The rules, however, will make it easier for companies who are on the receiving end of those suits to formally question whether those patents are too abstract and therefore unpatentable. That could be a slippery slope, however, for companies that use business method patents legitimately.

“We are supportive of patent reform that stops trolls, etc. but big believers that America needs software patents to protect the small entrepreneur,” one software executive noted to TechCrunch. “Some business method patents have clearly gone too far — One-Click, etc. — but if you actually look at Versata’s patent — saying it is too abstract to patent is tantamount to throwing out all software patents and that would be a mistake.”

There are other efforts being made to also help form more useful patent methodology, such as the combined effort of StackExchange and the USTPO to crowdsource prior art that can be used to determine the validity of patents.

US Patent Number 8,459,078 entitled “System and Method for Forming of Tubular Parts” discloses a method for using propellant driven water. It teaches a method in which a combustion chamber generates a gas to drive water through a tubular part with sufficient force to mold the part into the form provided by the die surrounding the high tensile strength alloy work piece.

This process results in a seamless tubular part of uniform thickness that might be round at one end and oval at the other with perhaps a geometric indentation, or a symmetrical bump in the tube. The process overcomes the deficiencies of hydroforming, which can result in unpredictable wall thinning; and explosive forming, which cannot be used to produce small and precise repeatable parts.

Beginning in 1987 until his untimely death in 2012, Geskin directed the Water Jet Machining Laboratory at NJIT. His innovations included multiples techniques for using water jets to perform precision machining and cleaning procedures.

One mechanism applied water jet technology for the cleaning operations used in the electronics industry, replacing chlorofluorocarbons (CFC) for the precision cleaning required to ensure operation of sensitive electronic devices. Other applications included a chemical-free method for precision cleaning of metals and ceramics as well as a cleaning system for pharmaceutical reactors.

His work received support from federal agencies including several grants from the National Science Foundation to develop “green” water-based machining technology. Manufactured items were “finished” by removing extraneous material with ultra, high-speed water slugs, delivered through a nozzle. The process requires only minimal water consumption and generates little debris and almost no emissions. Other applications that employed his water jet nozzle technology included a method for extinguishing fires by removing oxygen, high speed drilling through underground concrete barriers, and an improved method for building demolition.

Geskin was the author or co-author of more than 50 book chapters. His research interests included non-equilibrium thermodynamics, the information and application of high speed projectile, combustion and steelmaking. He received his doctorate from Moscow Institute of Steel and Alloys and his master’s degree from the Dnepropetrovsk Institute of Metallurgy.

NJIT, New Jersey’s science and technology university, enrolls more than 9,940 students pursuing bachelor’s, master’s and doctoral degrees in 120 programs. The university consists of six colleges: Newark College of Engineering, College of Architecture and Design, College of Science and Liberal Arts, School of Management, College of Computing Sciences and Albert Dorman Honors College. U.S. News & World Report’s 2012 Annual Guide to America’s Best Colleges ranked NJIT in the top tier of national research universities. NJIT is internationally recognized for being at the edge in knowledge in architecture, applied mathematics, wireless communications and networking, solar physics, advanced engineered particulate materials, nanotechnology, neural engineering and e-learning. Many courses and certificate programs, as well as graduate degrees, are available online through the Division of Continuing Professional Education.

Contact: Sheryl Weinstein, director, public relations, Sheryl.m.weinstein@njit.edu, 973-596-3436.

Patents Today

Of the 800 plus classes of patents granted between 2000-2011, class titles included “Geometrical Instruments,” “Textiles: Spinning, Twisting, and Twining” (which is different from “Textiles: Manufacturing” and “Textiles: Fiber Preparation”), “Sugars, Starch, and Carbohydrates,” and “Supports: Racks”, just to name a few.

From October 2012-April 2013, the U.S. Patent and Trademark Office (USPTO) examined 312,472 patent applications. As of April 2013 there were 600,149 applications filed with the office waiting to be reviewed. How do I know? The USPTO office has a neat dashboard that provides a quick overview of the work the office is doing. The applications that the USPTO began processing in April 2013 had been pending (time between application submission and first action by the USPTO) for an average of 18.7 months.

In 2011, the most patents were granted in the class of Multiplex Communications. The five regions granted the most patents (all classes) from 2000 to 2011 were:

1. San Jose-Sunnyvale-Santa Clara, CA
2. New York-Northern New Jersey-Long Island, NY-NJ-PA
3. San Francisco-Oakland-Fremont, CA
4. Los Angeles-Long Beach-Santa Ana, CA
5. Boston-Cambridge-Quincy, MA-NH

The Detroit area was number 10 and the District of Columbia area was number 16.

Why should we care about patents?

Because patents mean invention and invention means higher economic productivity.

In February 2013, the Metropolitan Policy Program at the Brookings Institute released a report on patenting in the U.S. titled “Patenting Prosperity: Invention and Economic Performance in the United States and its Metropolitan Areas” by Jonathan Rothwell, José Lobo, Deborah Strumsky, and Mark Muro. The report looked at U.S. patent data from 1980-2012.

The report found that patenting in the U.S. is doing fairly well. It is at historic levels, but the high numbers of patents filed does not correlate with more poor quality patents being granted.  The report dedicates an entire section to explaining how today’s patents continue to be of good quality.

The Brookings report argues that patents translate to “higher productivity, lower employment rates, and the creation of more publicly-traded companies.” Research universities and scientifically educated workers are major producers of patents. Patents produced with government funding tend to be of high quality.

Here’s the catch, 63% of patents are developed in just 20 metro areas, but those areas are only home to 34% of the U.S. population. Further, 92% of patents are developed in 100 metro areas, home to 59% of the population. You might ask, so what?

Comparing metropolitan areas and controlling for the number of college graduates, population size, industry concentration, housing prices, and other key metro-specific characteristics, Rothwell et. al. found that patenting is associated with higher economic productivity. They found that if metropolitan areas that fall into the bottom quarter for patent production produced as many patents as the metropolitan areas in the top quarter for patent production, they could increase their economic growth by 6.5% over ten years. This boost of 6.5% would translate to $4,300 extra per worker. For the metro areas in the bottom quarter to achieve this, it would require about 960 additional patents per year.

The U.S economy seems to be doing better for the time being. But looking to the future, patenting seems to be another indicator of how important science education and research funding are for our long-term growth and prosperity—scary thoughts in the time of sequester. Apparently it’s hard to see the virtues of research funding and education, even though that research and funding could help everyone in the long run, when there are more immediate problems and additional programs may strain already tight budgets. But, the political climate doesn’t make invention less important. It is possible that a key to sustained and expanded patenting lies in smaller commitments than those of the Federal government.  Perhaps, cities and individuals themselves should not only wonder what types of industries to attract to their region or what businesses to launch, but what ways are available to boost their invention development and patent growth.

I’ve just been to a most enjoyable, informative and stimulating one day mini-conference on 6 June 2013, on the topic of Alternative Dispute Resolution that was hosted by the Hebrew University, in Bet Mayersdorf, on their Mount Scopus campus. The event was cosponsored by WIPO and the Israel Patent Office.

The conference was organized by Dr Guy Pessach, and kicked off with welcome remarks from Professor Yuval Shany, the Dean of the Law Faculty.

The Commissioner, Assa Kling, then spoke. He rather confusingly kept relating to the Patent Office, which seemed a little unfair after all the effort exerted by his predecessor to change the name of the the Israel Patent Office to Israel Patent Agency. Then again, it makes me feel more comfortable since I sometimes make the same mistake in this blog!

We note that both Professor Shany and Dr Pessach were comfortably informal in shirt sleeves, whereas the Commissioner, Assa Kling, wore a suit and tie. His deputy, Ms Jaqueline Bracha and the third arbitrator at the patent office, Ms Yaara Shoshani Caspi both were black pants-suits. I am not sure if the formal dress adopted by the arbitrators of the patent office was indicative of their elevated statuses, or whether academics on their home ground are generally more comfortable.  In shabby contrast to the senior patent office staff, the two male stajers were looking scruffier than even by my standards, wearing rugby shirts, jeans and three days of stubble, so there doesn’t seem to be a patent office uniform, per se.

I’d never actually met the Deputy Commissioner, Ms Jaqueline Bracha before. I found myself sitting next to her, and when the commissioner, Assa Kling, went up to give his words of welcome, quipped that he was going to speak in Klingon. She giggled. When she later swapped smart phone messages with the Commissioner, realized my indiscretion.

The first keynote lecture was given by Mr Johannes Christian Wichard, the Deputy Director General of the Global Issues Sector of WIPO. Mr Wichard gave a very interesting overview of WIPO’s mediation and arbitration mechanisms. He wowed the audience with impressive statistics concerning the number of domain name conflicts WIPO manages to resolve, and then spoke in more detail about what, to me, was the more interesting topic of patent dispute resolution by mediation and arbitration, giving real life examples, but with names of parties withheld, and the costs involved. Of course the costs to WIPO and the mediator are NOT the full costs, as generally the parties are represented by legal counsel.  Nevertheless, the talk provided food for thought as an alternative approach to solving conflicts, particularly where the parties are involved in an ongoing relationship, such as where a patent dispute arises between a supplier and the customer.

After a coffee break, in which food for thought was discussed over danish pastries and a fruit platter, Adv. Dan Or-Hof of PCZL gave a comprehensive review of the Domain Name Dispute Resolution before the organization that administers domain names in Israel. The speed and efficiency of the system seems admirable, with the full procedure taking less than two months. Nevertheless, it appears that ICCOS only hears about 4 cases a year.

I was somewhat surprised that someone from PCZL (Pearl Cohen Zedek Latzer) would advocate alternative dispute resolution. I have a personal dispute with that law office since I was not paid for the work I performed in good faith for their clients during the period I worked there at the beginning of last year. My several and various requests for some sort of arbitration or mediation have been ignored, as have my requests for an explanation of their behaviour. No doubt Mark Cohen – the partner I was working under – and Zeev Pearl have some counter-claims against me, but I don’t know what they are, so cannot address them. Pearl has threatened me not to sue, but doesn’t really leave me much choice. If the Israel Association of Patent Attorneys was more active, perhaps they could arbitrate or mediate in cases like this. As it is, I have no option but to go to court, which will presumably end up more costly for both sides.

The next lecture was given by Adv. Ms Yaara Shoshani-Caspi, a judicial officer of the patent office who spoke about whether mediation or arbitration by the patent office adjudicators could supplement the formal in partes opposition and cancellation procedures. After presenting some background and statistics, she made some very interesting observations and finished with reference to UK Patent Office practice, where mediation and arbitration is more established.

Adv. Shoshani-Caspi preceded here substantive comments with a disclaimer that the views expressed were hers alone, and not representative of the patent office. The conference was conducted in English, and Ms Caspi therefore chose to read her presentation, which she read eloquently and confidently. Nevertheless, the fact that it was a read speech gave it a feeling of it being an official position paper, which perhaps, a more informal slide based presentation would have avoided.  Apart from guest speaker Johannes Christian Wichard, who could have been given the paper to read himself, I think every one else present would have been at least as comfortable listening to the talk in Hebrew.  After the presentation, the commissioner reiterated that the views expressed by Ms Shoshani-Caspi were hers alone and did not reflect patent office policy. This was particularly the case since there was no legal basis for the patent office to meet the parties early on, less formally, to try to determine the actual points of contention and to resolve them more efficiently. We note that he seems less cavalier than his predecessor with regard to making the system more efficient by innovative practices not supported by the regulations.  Hearing the statistics regarding the number of cases the three patent office adjudicators manage each year, I was impressed with their efficiency and workload. I sometimes disagree with the odd decisions, but it is usually a question of nuance.

The fact that Ms Shoshani-Caspi read her talk made it a little more difficult to concentrate, but we note that the audience did seem very attentive. Being easily distracted I noted how much luxurious hair she had, hanging loosely around her face. Whereas she had let her hair down, this contrasted nicely with the distinguishingly balding commissioner who seemed more to be let down by his hair.

I asked Dr Guy Pessach if the lunch was for all participants or just speakers. He said that they were catering for 20, and kindly invited me along. I thus found myself lunching with the opposition, sitting between Commissioner Kling and Ms Shoshani-Caspi, with Deputy Commissioner Jaqueline Bracha and the head of the trademark department Ms Anat Levy sitting opposite.  I would have quite happily paid for my lunch, but leaving Bet Meyersdorf to find a canteen and to find my way back through the rat’s maze of the Mount Scopus campus is daunting. (I did my PhD on the architecturally less interesting but more user friendly Givat Ram campus).  I note that the number of participants in the morning session significantly outnumbered those who returned for the afternoon, and suspect that the catering arrangements contributed to this. The fact that the afternoon session was more copyright and less patent oriented, may, also have resulted in some of the patent attorneys leaving early. Perhaps the solution is to provide a lunch for all participants, for a reasonable fee, which the cost per head in universities and the like, is generally reasonably from my experience organizing similar events, but to provide free tickets to speakers and VIPs?

In the afternoon there were two presentations on collecting societies and alternative dispute resolution.

The first speaker,  Mr Yorik Ben David (No relation to my former partner, Jeremy M Ben-David, as far as I know) is the CEO of Israel Copyright Collecting Society, ACUM, who started his presentation by informing us that he’d just flown in from Washington via New York, was jet-lagged, and therefore apologized in advance if he didn’t recognize any of the somewhat familiar faces in the audience. Alas, Poor Yorik, he knew them well…

It seems that AKUM’s collection strategy is to first invite people to pay a reasonable license, then threaten them, then invite them to arbitration and only as a last resort, to sue. About a decade ago whilst I was working for Seligsohn and Gabrieli, I remember that the firm used to sue copyright infringers left, right and center on behalf of the collecting society, and apparently the change of strategy is due to AKUM being recognized as a monopoly, following their bullying tactics against the Israeli radio station Galei Zahal.

Mr Ben David also described AKUM’s internal arbitration mechanism for dealing with cases of alleged plagiarism, seen as coming under copyright law, and arbitrated by retired Supreme Court Justice Theodore Ohr. He noted that the fee structure used was based on that of the courts – which seemed a little like plagiarism to this blogger…

Adv. Reuven Behar, senior partner of Fischer, Behar, Chen Weil Orion & Co. who had apparently represented Cable provider HOT against AKUM, gave an alternative perspective.  He noted that there was a proliferation of rights collecting societies, some of whom had broken away from others, but all wanted a bigger piece of the pie. He was critical that royalty calculations were generally made on the basis of income rather than profit. We were impressed with Adv. Behar’s presentation, which was fluent and interesting. We were further impressed that, despite him being an attorney, and in flagrant copyright infringement, Adv. Behar was dressed identically to Mr Ben-David, wearing a blue button down shirt over a white teeshirt. It seems that in the interest of comfortableness,  Adv. Behar is willing to forgo the comfort blanket of black suit and tie that other attorneys seem to require as a badge of their profession.

Dr Orna Rabinovich-Einy of Haifa University gave the final lecture. Dr Pessach introduced her as Israel’s leading expert on Alternative Dispute Resolution. Her presentation was very fluent, very animated and very informative. She spoke a lot with her hands and didn’t use slides. The talk was peppered with references to various ADR theorists and models. I didn’t have the background to follow everything she was saying, at the pace she was saying it, and suspect that that was true of others in the audience as well. I was convinced that she was indeed at least one of the leading experts and a competent and experienced lecturer. I would have preferred ideas to be developed a little more. Particularly as the talk was after lunch and to the end of a fairly heavy program.

Alternative Dispute Resolution is becoming more popular. The IP Watchdog has just posted an article on the topic. See here 

Dr Pessach is to be congratulated for organizing a thought provoking and stimulating conference. It is a shame that the turnout was a little low, and we suspect that poor publicity and generally late announcing of the event, was a contributory factor to this. There have also been three other conferences in as many weeks, Bar-Ilan and Colb (which I missed as I was in China but which apparently was also poorly attended), Shaarei Mishpat + patent office on design law, and Kim Lindy’s best practices, which was aimed mostly at in-house counsel, who one would have thought would be an ideal audience for today’s proceedings. Maybe cosponsoring with LES, AIPPI or IPR would be a good way to advertise the event a little more widely?

The days of simple law-enforcement wiretaps for telephone surveillance are gone. Today’s digital networks break conversations into packets for transmission and reassembly at their destination, making them harder for law enforcement agencies to identify and monitor. Compounding the surveillance complexity are Federal laws that specify how and when law enforcement agencies may monitor individuals within of the United States.

James Clapper, the U.S. Director of National Intelligence, recently stated that “the NSA does not voyeuristically pore through U.S. citizens’ e-mails.” But leaks like those of Edward Snowden tend to confirm what many conspiracy theorists fear, that the United States security apparatus has become an ungovernable force. And it has many tools at its disposal.

There are extensive disclosures in patent applications at the U.S. Patent Office. Patent grants over the past decade illustrate a number of crafty surveillance techniques. Below are some of the patents we uncovered (by U.S. patent number):

• 8094791 – Verizon: Comparing keystrokes in order to biometrically authenticate a suspect caller’s identity.
• 8194825 – AT&T Mobility: Authenticating a caller by matching an expected “path delay” and alerting law enforcement.
• 7684547 – IBM: Moving a suspect VoIP call onto a monitorable analog circuit for surveillance by law enforcement.
• 6563797 – AT&T: Sending a distinct alert to law enforcement that differentiates normal incoming calls from surveillance calls.
• 8306190 – AT&T: Forking a voice call simultaneously to law enforcement in addition to connecting the intended endpoint.
• 7155207 – Nextel: Recording voice traffic and forwarding the content to a law enforcement agency whenever certain keywords are detected.
• 7730521 – Juniper Networks: Intercepting network data packets and mirroring them to law enforcement for analysis.
• 7764768 – Alcatel-Lucent: Separating a caller’s video, e-mail, and voice streams for delivery to a lawful monitoring system.
• 8270573 – Ericsson: Intercepting ringback tones, identifying the called party, and routing the tone to law enforcement for analysis.

The patent system advances a somewhat speculative constitutional charter. It allows the public to see the complete inventions in exchange for granting the inventor a limited monopoly. But there are no assurances that the patented inventions will become commercial products — so it’s anyone’s guess whether these patents are actually being used by their creators.

John Koenig is the founder of Compute Media and developer of “The Patent Studio.” You can follow him on Twitter at @johnkoenig. This post originally appeared on his website.

Top photo: Shannon Kringen/Flickr

Podcasting as a concept is one of the most obvious ideas imaginable, so obvious, in fact, that the entire internet in large part uses the same basic format. To use a more abstract example, on facebook, you “subscribe” by friending people and you receive their posts periodically through that subscription. Other services using a similar concept include Youtube (where you subscribe to channels), Stumbledupon (where you subscribe to interests), and many others. Why am I telling you this? Well, recently, a self-styled inventor and entrepreneur has come out of the woodwork claiming to hold the patent on podcasting… because he patented the idea of a subscription service providing customized audio content directly to you… back in the mid-90s. He never managed to make the idea work in practice, but he still got the patent. With it, he is threatening litigation against podcast distributors, but he is also threatening the end user of these systems… podcasters.

Podcasters use podcasting services like itunes to distribute their content freely to subscribers. Though some make no money at all, or raise money only for equipment and bandwidth costs, many are for profit (through ads and donations), because podcasting regularly, or on labor intensive topics is too time consuming to maintain a day job. Or, simply, because they like to get paid for the work they do (no harm in that). Recently, many of these for profit podcasters (Some of whom literally works out of their garages), have received threatening letters asking for an unspecified quantity of cash. Some of them have already paid up, the rest seem confused and scared. Worse still, this is perfectly legal. The inventor, unless something changes or his patent can be proved invalid in court, has every right to royalties and fees, even from end users.

Now, if you know me personally, you may be aware that I was in the process of attempting to start a very labor intensive history podcast, that I had hoped would be a for profit venture. I put that project on hold, but now I may never have the chance to pick it up again. Why? Because it is unclear whether or not being in Canada would save me from litigation by this American patent holder, since legality over the internet is increasingly confusing and undefined by real world borders. I am not going to start putting out any product of this kind unless the situation clears up favorably. This, in a nutshell, is what is wrong with the American patent system. Rather than encouraging innovation (which is the point of a patent system) it scares people away from pursuing their own ventures. It encourages those with small businesses who can’t pay not to innovate, or to sell quickly to a company that can afford any potential litigation. And it encourages those who own patents, especially vague patents, to go after everyone, even the little guy.

Would I ever go into any risky industry in this environment? Not even if I had the best idea that has ever been dreamed up. I wouldn’t touch that with a ten foot pole. Something needs to change.

Thanks for reading,

Emily Strempler

If you want to learn more about the American patent system, I would recommend this informative podcast by the popular radio show This American Life, and if you want to learn more about the case against podcast providers, check out this podcast by Planet Money.

More and more companies are resorting to trade secrets instead of patents to protect their proprietary information.   A trade secret is information that provides you with an economic advantage that derives from keeping it secret and for which you have made reasonable efforts to maintain secrecy.   Your information must not be generally known or, as lawyers like to say, obvious to someone skilled in the art.  Beyond that, it can be almost anything … a manufacturing process, a bit of machinery, a computer program or a customer list.  There is no formal application process for trade secrets, and as long as the conditions that make them trade secrets are met, there is no time limit.  However, reasonable efforts to keep your secret can be quite involved.   You need confidentiality agreements with your employees so they don’t disclose your secrets when they move on to one of your competitors.  You need non-disclosure agreements when you reveal you secret to a potential customer.  And if one of your employees publishes a paper revealing your secret in some obscure journal, it’s no longer a trade secret.   Worse, if a competitor independently comes up with your secret … and can prove it … it is no longer a trade secret.  And here is what astonished me when I first learned it.   If you have a product that uses your secret and a competitor can legally acquire your product, then take it apart to discover your secrets … a process known as reverse engineering … then your secrets are no longer trade secrets.

So, you have a really great idea.  You’ve done your homework and you know how to build it.  Your market research says it will make you millions for 50 years into the future.   Do you apply for a patent to lock up your gizmo for twenty years or do you build it under close industrial security, require confidentiality agreements with all your employees and package your product to be hard to reverse engineer?   Welcome to the world of innovation in the United States of America, where no matter which way you go, you’ll likely end up in court.   Someone will either claim you stole their secret (and often all they want is a cash settlement) … or you’ll find someone’s stolen yours.  Both patent and trade secret litigation are expensive.   Given that, make sure you have good legal counsel specializing in intellectual property matters to help you decide and conduct your business afterwards.  Because a man who is his own intellectual property lawyer not only has a fool for a client … he likely won’t be Keeping Secrets.

You may want to boycott Nestlé. I do. They’re just another Monsanto. Canada—you’ve been targeted, too. If we allow corporations to control the water supply and legislation around that, they have a license to kill.

The directors of Nestle must be breathing a sigh of relief as the world targets Monsanto with a barrage of negative publicity, global protests, and grassroots campaigns. While we’re all distracted by Monsanto’s GMO corruption of the food supply, Nestle is taking steps to profit off of the natural world with patents on breast milk and medicinal plants, and the privatization of water, and giving the seed company a run for the title of The Most Evil Corporation in the World.

Watch the video

Between corporate demons like Nestle and Monsanto, the very right to life itself is becoming a commodity with a price tag as access to food and water become a privilege only available to those who have the means to pay for it.

The potential death toll would be astonishing. Is that the point? A team effort in which the elite make money hand over fist, massive depopulation, and indentured servitude in exchange for the right to eat and drink?

Monsanto and Nestle are firmly on the same team – Nestle donated over $1 million to the campaign against GMO labeling in California and their CEO has claimed that in 15 years of consumption, no one was every harmed by eating GMOs.

While the world’s attention has been on Monsanto’s corruption of the food supply, Nestle has been quietly draining water sources around the globe and marking it up a mind-blowing 53,908,255%, while the rest of us must deal with droughts, regulations on wells and rainwater, and rising prices.

The Nestle website touts the slogan: Good Food, Good Life is the promise we commit to, everyday, everywhere – to enhance lives, throughout life, with good food and beverages. Somehow, it seems that mission statement must have gotten lost in the interoffice email system, because Nestle executives don’t seem to have received that message.

That may sound like a lot of money, but investors had clearly expected more: TiVo’s stock was down 17 percent by Friday afternoon. TiVo’s tanking stock may be the direct result of the company indicating that it would receive a higher payout — Variety reported Friday that TiVo’s own court filings were stating the company was entitled to “billions of dollars” in damages.

But there’s also a bigger lesson here: TiVo may still be developing and selling DVRs, but its core business shifted some years ago from consumer electronics to patents. Turns out that’s bad business, and hard to recover from.

TiVo’s love for patent infringement lawsuits goes all the way back to 2004, when the company sued Dish’s (S DISH) technology partner EchoStar (s SATS) for violating its digital video recording patents. TiVo won in court, and EchoStar / Dish eventually agreed to pay $500 million. TiVo went on to sue other DVR makers as well as pay TV operators deploying these machines, and secured additional settlements from AT&T (s ATT) and Verizon. (s VZ) The total payout so far for TiVo: Around $1.6 billion.

But TiVo’s core business suffered as it was raking in the dough from patent settlements, with subscribers leaving the service for cheaper operator-provided DVRs. TiVo now has about one million consumers left who are directly subscribing to the company’s DVR service, down from 1.7 million five years ago.

In the last two years, TiVo has been making inroads with operator partnerships, which has actually contributed to a turnaround: Overall subscriber numbers are rising again since late 2011, and the company now has 3.4 million total subscribers. That’s up significantly from the less than two million it had two years ago, but not quite back to its all-time best of more than 4.4 million in 2006.

But there’s a problem with that growth: Those customers coming from operator partnerships are bringing in a lot less revenue per user, meaning that the company needs a lot more of them to make up for the folks who used to subscribe to TiVo directly but have been leaving over the last few years. It’s a long game, and those patent settlements helped to keep investors on board.

Except, it looks like many of them didn’t sign up for the possibility of profitability in a few years, but for lots of cash, now. They didn’t buy TiVo for the technology, but for the patents, and that’s now backfiring.

Giant land and seed grabbing monoliths patent the stuff of life and tell us we have to cough up, year on year, if we want to harvest the fruits of our planet. They own the numbers and numbers are everything. If I had a supreme court judge in MY pocket, I’d set up a reality TV show and make him quaff  McNuggets,  saccharine and rectum-burgers til he was sick, and make him sleep in a tent full of genetically modified super-mosquitoes and N’Dubz

5 June 2013

The EPO and the Japan Patent Office (JPO) today announced the launch of the Japanese-English component of the EPO’s automatic translation service Patent Translate. This means more than a million Japanese patent documents available via the EPO’s global patent database Espacenet can now be instantly translated into English free-of-charge at the click of a mouse. This major step offers access to Japanese patents in the full-text version, while Japanese inventors can read European patents in their own language.

“The launch of the Japanese-English machine translation tool is a major step forward for patent information,” said EPO President Benoît Battistelli, at a bilateral meeting of the two offices at the sidelines of the IP5 meeting in Cupertino, California. He continued: “Japanese is one of the leading languages of technology, and a lot of scientific knowledge, or what we call “prior art”, resides in Japanese patents and patent documents, which are now freely available in English to engineers, inventors and scientists around the world. This will further strengthen the competitiveness of European businesses, who will now be able to better target their R&D work by searching Japanese patent documents, while further improving the substance of their patent applications. Patent offices, too, will be able to use the service in their daily work, which will positively impact the quality of the patenting process. The European economy as a whole will benefit from high quality patents.”
JPO Commissioner, Hiroyuki Fukano said, “In terms of the number of patent applications being filed with the JPO and other offices globally, Japan ranks as one of the leading offices in the world, signifying that Japanese patent documents have a high importance. The European market is one of the most important ones for us. Up to now, the JPO has taken a wide variety of initiatives such as enabling the use of machine translation in order to break through the foreign-language barrier and support users when they file international applications and enter overseas markets. Through this new service, users will be able to refer to European patent documents in Japanese, bringing both benefit and value. With the advances being made in the globalisation of intellectual property, the language barrier has been a challenging and longstanding issue. Going forward, the JPO is determined make a solid contribution to providing significant benefits to users in Europe, Japan, and elsewhere around the world through global cooperation such as mutual collaboration between the EPO and the JPO.”

With the addition of Japanese, Patent Translate now enables free on-the-fly-translation of patents from, and into, English for 15 languages including Chinese. Launched in February 2012 and integrated into the Espacenet database, Patent Translate was set up to enable machine translations of patents to be possible in the 28 official languages of the 38 member states of the European Patent Organisation, and also in the most important Asian languages by 2014. The service will then represent the world’s most comprehensive multilingual platform for patent information. Espacenet already contains more than 80 million patent documents from around the world.

The addition of Japanese documents is the latest result of the close co-operation between the EPO and Japan, which goes back more than 30 years. In 1983, the EPO and JPO, together with the United States Patent and Trademark Office ─ the three largest offices at the time ─ established the Trilateral Cooperation to look into ways of solving common automation problems. Thirty years on, this cooperation has intensified, and now includes areas such as documentation, data standards and patent information.

Further information:

Patent Translate

Espacenet global patent database