Evaluation of EU Rules on Databases

Interesting development on database protection tracked by BLOG@IP::JUR EXTERNAL LINKRAPID Database: '[...] The European Commission has published an evaluation of the protection EU law gives to databases. EU law protects databases by copyright if they are sufficiently creative. Other databases, especially those that are compilations of information or commonplace data, such as telephone directories, music charts or football match listings, may benefit from a new form of protection introduced by the 1996 Database Directive. This protection is known as the 'sui generis' database right, i.e. a specific property right for databases that is unrelated to other forms of protection such as copyright. The evaluation focuses on whether the introduction of this right led to an increase in the European database industry's rate of growth and in database production. It also looks at whether the scope of the right targets those areas where Europe needs to encourage innovation. Stakeholders are invited to comment on the evaluation by 12 March 2006. [...]' The evaluation paper is available EXTERNAL LINKhere. Policy options discussed therein are: * Option 1: Repeal the whole Directive; * Option 2: Withdraw the 'sui generis' right; * Option 3: Amend the 'sui generis' provisions; and * Option 4: Maintaining the status quo. '[...] Before deciding on its future policy approach with respect to the 'sui generis' protection for 'non-original' databases, the Commission services deem it appropriate to further consult stakeholders on the four policy options outlined above. Stakeholder consultation should also provide further evidence on the economic impact of 'sui generis' protection in stimulating the production of European databases. Stakeholders are invited to submit their observations by 12 March 2006.'"

Unveiling your masterpiece: Find out how to keep an eye on the competition before showing the world your sales and marketing strategies.

An interesting article on importance of Competitor Intelligence by Richard G Ensman. Worth reading ... enjoy

WTO upholds cheaper drugs waiver

It is a great win for humanity as well as opportunities for pharma companies from developing countries like India, in Generic Market producing Life Saving Drugs. The agreement will extend a 2003 temporary rule World Trade Organization (WTO) members have agreed to uphold a rule that allows poor countries to import cheaper copies of patented medicines. Its general council has agreed to make permanent a 2003 waiver that allows poorer nations to import generic drugs to treat serious diseases such as Aids. The measure would become permanent by 1 December 2007, the WTO said. The current waiver remains until then. WTO boss Pascal Lamy said the agreement showed the body's humanitarian concern. 'Landmark' US Trade Representative Rob Portman added that America was fully behind the move. 'This is a landmark achievement that we hope will help developing countries devastated by HIV/Aids and other public health crises,' he said. The European Union (EU) has also backed the change. 'The EU has worked hard for this outcome and welcomes that others have moved to make this possible,' said EU Trade Commissioner Peter Mandelson. And for the UK, Trade Secretary Alan Johnson said 'this announcement should be an important step in making drugs available in poor countries. 'The lack of access to essential medicines in developing countries is one of the biggest health issues - and one of the gravest injustices - in the world.' Under the rule, poorer nations will be allowed to import the generic drugs for humanitarian reasons and not for commercial purposes. Some of the larger developing countries, like India, hope that they will be able to sell antiretroviral Aids drugs to Africa under the deal. "

Patent for 1.4 lakh medicines soon - Newindpress.com

Patently-O: Patent Law Blog: Including Claims in Provisional Patent Applications?: "Including Claims in Provisional Patent Applications? Curtsy-Patently-O: Patent Law Blog: Including Claims in Provisional Patent Applications? An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications. According to the rules of practice, claims are not required in the provisional application. (MPEP 601). However, there are a few good reasons for including claims in the application. In the wake of Phillips v. AWH, it has become even more important to ensure that a patent?s specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application. Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing. Russ argues that claims in the provisional can only hurt the applicant. I disagree. The claims can be helpful in ensuring adequate disclosure and enablement ? this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget. The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush. As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date. It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted ? this is especially true in the fast-paced area of provisional applications. One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel. However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel ? especially since the nonprovisional is newly-filed rather than simply an amended version. An astute Patently-O reader provided the following comment: I include at least one extremely broad, never likely obtainable claim in a provisional. First under US law, it is true that a provisional need not include one in order to be considered valid. But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won't go foreign. I hear the arguments related to the effect of narrowing by amendment as creating PHE. In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE. Let's face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle. In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many. No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, "A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document." Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out. Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application. So if you present a very broad claim initially, you can amend narrower. But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader. It is for this reason you can include a "claim" that says something like, "I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration." or a "process to [...] comprising any process described, in any order, using any modality, ..."

How to Write a Patent Application-Deconstruction and Rebuilding Approach

Anything Under the Sun Made By Man: How to Write a Patent Application ? Deconstruction and Rebuilding Approach: "How to Write a Patent Application ? Deconstruction and Rebuilding Approach Curtsey --Anything Under the Sun Made By Man: ? There are several different styles of patent applications, each being a certain response to a specific business situation and prosecution strategy. I use a deconstruction and rebuilding approach, detailed below, for applications where the prior art is reasonably well known, a product is reasonably well known or anticipated, and thus the claims can be well tailored. For example, if the inventor knows the art very well and has worked at or near the top of the field for a period of time, I have reasonable confidence that they can distinguish their invention and the prior art. Also, if I have a reliable search done using a draft set of claims, we may be confident enough in the prior art to know what would reasonably be allowed by the Patent Office. The method for drafting the patent application is quite simple: deconstruct the invention down to the claims, then rebuild the description to match the claims. This method results in an application that is very tight and fully supports each element of the claims very well, but it might not have much fat or excess that could be used as backup claims if the original claim set must be significantly altered. These applicati"

US again threatns to suspend patent rights on health hazard grounds..

Apprehension about offering the stringent Product Patent protection to Pharma inventions during the TRIPs negotiations are turning the to be true. Even in developed world, companies holding the key patented medicine were reluctant to offer the medicines to the needy people at the time of community health crises and in order to avoid any catastrophy might govts like US has literally threat to them suspend/ revoke their patent rights over the life saving medicine. Perhaps, most of developing countries are not strong enough to compel any such patent holder to make available the life saving drugs to the public on reasonable prices. We have to ensure that natural human lives are always placed above the profit making motives of legal entities. IPBiz: Washington Post on Tamiflu: U.S. bullies IP owners: "Monday, November 07, 2005 Washington Post on Tamiflu: U.S. bullies IP owners But the U.S. isn't a model of respect for intellectual property, either. Panicked by its own lateness, the Bush administration has bullied Roche into opening a new production operation in the United States; if Roche had refused, the administration was ready to break the patent. Sen. Chuck Schumer has gone further, denouncing Roche for elevating profits above health and demanding that the firm license its technology to other drugmakers or face legislation compelling it to do so. Coming on top of similar bullying four years ago of Bayer, the maker of an anti-anthrax drug, this browbeating sends a clear signal: If you make a drug that turns out to be really important, don't expect patent laws to protect you. <-- by Sebastian Mallaby In the earlier CIPRO confrontation, the 'bullying' pertained to negotiation over price, and there was a related fear that such price negotiation could carry over into a prescription plan for Medicare. See 'Where have you gone, Richard K. Lyon,' Intellectual Property Today, Oct. 2001.

Patent Analysis

Patent Data, Analysis & Visualisation by Juan C. Dürsteler Patents are extremely important when configuring the business strategy of technological companies. There are more and more tools that allow you to download and analyse patents in one way or another. Visualisation is a key tool for the analysis and detection of opportunities that is still used shyly. One of the less usual applications of information visualisation is patent visualisation. In fact visualising patent information is just a part of text or document visualisation. In the end, a patent is just text with a certain structure and with a specific objective. Patents encompass several aspects that have, nonetheless, great importance.: * they are a way to protect intellectual property rights o our own rights, allowing us to produce without being copied with inpunity o the other's rights, preventing us of using alien developments. For these reasons patents constitute a very important source of information about the competitors. This makes them the main tool for technological and business intelligence. On the other hand, knowing which patents are enforced in the market is vital before deciding to make a new development or product, with the important investment it means, that could be finally blocked by an existing patent. Many patent offices already allow to freely download abstracts and complete text of their patents. Among them the USPTO from United States or the EPO from Europe, and many others you can find, for example, in the PatentLawLinks.com list. In particular Esp@cenet, the download service of the European Patent Office has become a very popular source of information in this field. Based on the many possibilities of search that all this offers, there have been appearing in the market different systems allowing you to search, download and analyse patents automatically. Many of them are present in the Patent Information Users Group (PIUG) vendors list. Although downloading, classificating, clustering and finding the relationship between patents of similar contents has become quite widespread, even making use of text mining tools, the visualisation of those resuts is not so usual. Anacubis, patent division of the i2 inc group, has some visualisation demos that use i2 inc Analyst's Notebook visualisation tool. Unfortunately some problem with the demo has prevented me from executing it properly, so I can't report on it. Spore.inc provides two main types of visualisations: Patent matrix diagram. Diagrams that represent the substance and hierachical relationships of the claims of a patent. This way, reading and understanding of a patent's claims is much easier. Source: Diagram as can be seen at Spore Inc website. Spore diagram. It produces graphs of patent groups that allow you to see how are they related, identifying trends and detecting development opportunities related to "gaps" in some areas of the patent scope of a product portfolio. Source: Diagram as can be seen at Spore Inc website. But maybe Mathéo Software represents one of the easiest to use systems (you can download a free demo) that incorporates four main types of visualisation that can be produced with many combinations of the different variables that identify a patent. We'll focus on MatheoPatent 6.1. This program allows you to launch a search on different sources according to keywords, inventors, etc. With the downloaded results you can get the following types of visualisation. MatheoPatent 6.1 MatheoPatLista2.gif (182879 bytes) MatheoPatPDate.gif (68024 bytes) Table: Presentation in form of a table where you can see the results of the search. To the left, a list of inventors with their nationalities and number of patents granted. To the right, the list of patents. Below lies the summary of particular patent of the list. Source: Screenshot by the author of the program in execution. Click on the image to enlarge it. Bar chart: Here you can see a bar chart of the number of patents present per year. MatheoPatent allows you to select different variables (inventor, family, date, etc) building bar charts accordingly. Source: Screenshot by the author of the program in execution. Click on the image to enlarge it. MatheoMatrix1.gif (146436 bytes) MatheoGrafo1.gif (82098 bytes) Matrix: By crossing the different variables MatheoPatent allows you to select (inventor, family, date, etc), you can obtain this matrix chart. In this particular case we cross inventors against inventors. The coloured squares in the diagonal indicate the patents of a particular inventor. Big squares indicate groups of inventors acting together. If they are out of the diagonal it means that some inventors or groups participate in patents with other groups. It's possible to cross other variables to detect different patterns Source: Screenshot by the author of the program in execution. Click on the image to enlarge it. Networks: In this case we represent the relationships between inventors and companies by means of a force directed graph where dragging a company you can drag also the inventors related to it as if they were linked by rubber bands. Again we can select different variables to see the networking between them. Source: Screenshot by the author of the program in execution. Click on the image to enlarge it. ¿Do you remember ThemeScape and newsmaps? (see number 93). Finally this technology, renamed as Aureka!, has become the patent visualisation of MicroPatent. This way, this extraordinary form of visualisation has seen its incorporation to the world of patents. Let's recall that ThemeScape allows you to represent a document corpus as a topographic map where the "mountains" are associated with frequent terms (predominant "themes") that are as close as their concepts are similar. Aureka! The patent version of ThemeScape represents as a topographic map the explored document space. Dots depict particular documents (patents) . The closer they are, the most related the patent topics. You can access the documents by clicking on them. Fuente: Image of Aureka! as can be seen at MicroPatent's website in Internet. Patent visualisation is just one more within the possibilities of text mining. Nevertheless, as anyone working in R+D knows, detecting the patents that can prevent us to follow a research line or finding a "hole" where there's nothing patented can be fundamental for the business strategy of a company. Visualisation is vital to open a way through the web of legal text, [sometimes obscure] claims, and the large amount of data that represent the world of patents. We are still an a very preliminar stage in this field. Links of this issue: http://www.uspto.gov/ United States Patent Office (USPTO) http://www.european-patent-office.org/ European Patent Office (EPO) http://www.patentlawlinks.com/patoff.htm PatentLawLinks website http://ep.espacenet.com/ Espacenet EPO download center http://www.piug.org/ Patent Information Users Group web site. http://www.piug.org/vendor.html Patent Information Users Group vendors list. http://www.anacubis.com/ Anacubis website http://www.i2inc.com/Products/Analysts_Notebook/default.asp i2 inc. Analyst's Notebook http://www.sporeusa.com/home/ Spore website http://www.matheo-software.com/ Mathéo Software website http://www.infovis.net/printMag.php?num=93〈=2 Num 93 Two years later http://www.micropatent.com/ Micro Patent website

Patent Analysis: Data Analysis & Result Visualisation

Patent Analysis
by Juan C. Dürsteler




One of the less usual applications of information visualisation is patent visualisation. In fact visualising  patent information is just a part of text or document visualisation. In the end, a patent is just text with a certain structure and with a specific objective. 
Patents encompass several aspects that have, nonetheless, great importance.:

• they are a way to protect intellectual property rights


• our own rights, allowing us to produce without being copied with inpunity


• the other's rights, preventing us of using alien developments. 

For these reasons patents constitute a very important source of information about the competitors. This makes them the main tool for technological and business intelligence. On the other hand, knowing which patents are enforced in the market is vital before deciding to make a new development or product, with the important investment it means, that could be finally blocked by an existing patent.
Many patent offices already allow to freely download abstracts and complete text of their patents. Among them the USPTO from United States or the EPO from Europe, and many others you can find, for example, in the PatentLawLinks.com list. In particular Esp@cenet, the download service of the European Patent Office has become a very popular source of information in this field.  
Based on the many possibilities of search that all this offers, there have been appearing in the market different systems allowing you to search, download and analyse patents automatically. Many of them are present in the Patent Information Users Group (PIUG) vendors list. Although downloading, classificating, clustering and finding the relationship between patents of similar contents has become quite widespread, even making use of text mining tools, the visualisation of those resuts is not so usual.
Anacubis, patent division of the i2 inc group, has some visualisation demos that use  i2 inc Analyst's Notebook visualisation tool. Unfortunately some problem with the demo has prevented me from executing it properly, so I can't report on it.
Spore.inc provides two main types of visualisations: 
(image placeholder)
(image placeholder)

Spore Inc
Spore Inc

But maybe Mathéo Software represents one of the easiest to use systems (you can download a free demo) that incorporates four main types of visualisation that can be produced with many combinations of the different variables that identify a patent. We'll focus on MatheoPatent 6.1. This program allows you to launch a search on different sources according to keywords, inventors, etc. With the downloaded results you can get the following types of visualisation.














¿Do you remember ThemeScape and newsmaps? (see number 93). Finally this technology, renamed as Aureka!, has become the patent visualisation of MicroPatent. This way, this extraordinary form of visualisation has seen its incorporation to the world of patents. Let's recall that ThemeScape allows you to represent a document corpus as a topographic map where the "mountains" are associated with frequent terms (predominant "themes") that are as close as their concepts are similar.
(image placeholder)
(image placeholder)

MicroPatent

Patent visualisation is just one more within the possibilities of text mining. Nevertheless, as anyone working in R+D knows, detecting the patents that can prevent us to follow a research line or finding a "hole" where there's nothing patented can be fundamental for the business strategy of a company. Visualisation is vital to open a way through the web of legal text, [sometimes obscure] claims, and the large amount of data that represent the world of patents. We are still an a very preliminar stage in this field.
Links of this issue:
http://www.uspto.gov/



http://www.european-patent-office.org/



http://www.patentlawlinks.com/patoff.htm



http://ep.espacenet.com/



http://www.piug.org/



http://www.piug.org/vendor.html



http://www.anacubis.com/



http://www.i2inc.com/Products/Analysts_Notebook/default.asp



http://www.sporeusa.com/home/



http://www.matheo-software.com/



http://www.infovis.net/printMag.php?num=93〈=2



http://www.micropatent.com/

LawMemeVindicated by DNA

Vindicated by DNA Posted by Rebecca Bolin on Monday, August 01 @ 16:09:32 EDT News A friend volunteering for the Innocence Project at Cardozo School of Law sent me this article (typo of Cardoza seems to be AP's) about a man released from prison following a DNA test after serving eighteen years of a wrongful rape conviction. The Innocence Project write-up has some different details than the AP version. My friend was really happy about this. "Isn't this great?!" My feelings are more mixed. It's rather sobering that this can happen in the first place and that a few little mistakes can cost a man with small children so much of his life. I wonder how the victim feels, even if she honestly thought that was the right guy. So, I suppose it's great that science finally showed the truth, but those eighteen years are still lost.

Six Easy Steps to Highly Effective Patent Searching

Six Easy Steps to Highly Effective Patent Searching You can speed up your design cycle time by mining patents for information. Here, a skilled patent attorney shares his secrets to faster and better searches. Craig Fieschko -- Design News, June 6, 2005 A patent is often described as a monopoly (generally limited to 17-20 years) granted to the inventor of a new and useful machine, process, or other invention in exchange for the inventor's complete written description of how to make and use the invention in a patent application. These details can be highly useful to design engineers, who can use patents to learn how others have approached similar problems, what design strategies have and have not worked in the past, and to get a handle on what is state-of-the-art in their field. But with almost 7 million U.S. patents covering virtually every field of technology, it can be a lot like trying to find a needle in a haystack to locate the patents that are most relevant to your design problem. In this article, I share some of the basic search strategies I use as a patent lawyer (and former engineer) to sift through the clutter. This article assumes that you're using the search engines of the U.S. Patent and Trademark Office (USPTO). First a Few Basics on Patent Searching Some of my favorite patent-searching resources on the Web are listed in the sidebar, and the following discussion will assume that you're using the search engine of the United States Patent and Trademark Office (USPTO), the government agency that administers the U.S. patent system. While you can simply enter a string of terms into the search engine and obtain all the patents or published applications that contain these terms, the USPTO's search engines, like most patent search engines, helpfully allow "fielded" searching. Terms can be entered in certain fields, such as Title, Abstract, Assignee (Owner), etc., to locate patents or published patent applications having the entered terms in the specified fields (in the specified sections of the patents or applications). The USPTO also allows strings of fielded search terms to be connected with Boolean terms such as AND, OR, and ANDNOT, and parentheses can be used to order the connected terms (see a sample search on page 80). Additionally, the ends of search terms can be truncated and the "wildcard" symbol $ can be substituted to search for variants of the term. For example, "circuit$" will search for the terms circuit, circuits, circuitry, etc. (Note that a term may not be truncated to less than four characters.) Search terms can also be combined in strings by using quotation marks. For example, entering the term "circuit board" (in quotes) will search for the adjacent words "circuit" and "board," in that order. It might seem that a good way of locating relevant patents is to search in the Abstract (ABST) and/or Title (TTL) fields. Unfortunately, this is rarely the case. Titles are usually vaguely worded because patent attorneys fear the potential ramifications of a specifically worded title. The same is true of most Abstracts, which poorly represent the contents of their documents. So it's no surprise, then, that an Abstract and/or Title search should never be regarded as complete and accurate. A Specification (SPEC) search, which extends to the detailed bodies of the patents or applications, is far more complete. Nevertheless, if a search strategy results in a very large number of hits, it may be preferable to begin a search by limiting it to the Title (TTL) or Abstract (ABST) fields. Other useful search fields include the Assignee (AN) field, which may list the owner of the patent, and/or the Inventor (IN) field. You may be able to find relevant patents by searching for those that name a company and/or inventor who has expertise in your field of interest. Nevertheless, while the use of fields, Boolean connectors, and wildcards can help you locate relevant patents and applications faster, many people still find it difficult to generate relevant search results. All patents and patent applications are assigned "class numbers" by the USPTO codes that classify the patent or application into one or more very particular fields of technology, similar to the Dewey Decimal System. So if you can identify the classes of your problem or technology of interest, and then use the USPTO search engines to search documents in these classes, you'll often find relevant documents much faster. To identify U.S. classes for particular fields of technology, you can access the Manual of U.S. Patent Classification at www.uspto.gov/web/classification/. Unfortunately, most users find the manual confusing and difficult to use, and it usually takes significant experience before one can quickly and accurately locate the appropriate class(es) relating to a technology in question. By following the six easy steps I have outlined on page 80, you can bypass the manual almost entirely (or at least minimize its use) and get superior search results immediately. Now What? Once you're done, you can then use the search results in your research and design efforts. In some cases, you may even be able to adopt a patented invention as an "off-the-shelf" solution. You're usually free to use matter described in a patent so long as: (1) The matter is not secured by this (or another) patent (i.e., the matter is not defined by the "claims" set forth at the end of a patent); or (2) Even if the matter is covered by the claims, if the patent's expired. Usually, patents have terms lasting 20 years from their patent application filing date, or 20 years from the date of patent issuance, whichever date is later. Both of these dates are shown on the first page of a patent. However, patents can (and often do) expire earlier for failure to pay periodic maintenance fees to the USPTO. You can check this out at the USPTO website at https://ramps.uspto.gov/eram/. Nevertheless, if you have questions about whether and how you can use certain matter, you really should get the assistance of a patent attorney. As the old saying goes, "anyone who serves as his own attorney has a fool for a client." Craig Fieschko has a BSME and MSME and worked for several years as an R&D engineer. He is a registered patent attorney at the DeWitt Ross & Stevens law firm, and he also teaches intellectual property law at the University of Wisconsin Law School. Request a more detailed version of the article by contacting Fieschko at cf@dewittross.com, or at (608) 828-0722. Step-by-Step Guide to Patent Searching In this example, we look for patents related to handheld, ultrasonic surgical cutting tools On the USPTO's "Advanced Search" page, different fields are searchable by typing in a field code followed by a forward slash. The USPTO also provides a "Quick Search" page (not shown here), where a limited number of fields can be chosen from drop-down boxes. Clicking "Search" will return the patent numbers and titles (or published patent applications) that match the specified terms in the specified fields. You can access the full text of a selected item by clicking on the document number or title. Once you access the full text of a patent or application, you can get an "Image Copy" of the actual document (with drawings, etc.) either by using the "Add to Cart" option and paying to have it sent to you. On the front page of a patent are relevant patent classes at the headings "U.S. Cl." (U.S. Classification), listing the classes of the patent [51] and [52], and "Field of Search," or related classes reviewed by the USPTO when granting the patent [58]. The USPTO Manual of Classification can be searched by entering terms of interest (at right) and then reviewing the resulting classes. Alternatively, you can enter a particular class (at left) and then review its description to see if it’s relevant (see figure below). This is the "Class Schedule" resulting from entry of Class 604/22 in Figure (5), showing a description of Class 604/22 and its surrounding classes. Clicking the icon to the left of each class number will return a list of all patents in the class. 1. IDENTIFY A FEW STARTING PATENTS Use fielded searching in the USPTO Issued Patent search engine (not the Published Application search engine) to locate one or more "starting patents" that have strong relevance to your technology of interest. You only need one (or a handful) of starting patents. See figures above, showing an exemplary search for a handheld, ultrasonic surgical cutting tool. 2. FIND UPSTREAM PATENTS "Upstream patents" are prior patents that the USPTO regarded to be technologically relevant to the starting patents. These are listed on the first pages of the starting patents under the heading "References Cited;" see the list in Figure 4 under "U.S. Patent Documents," or in Figure 3, where the patent numbers of the upstream patents are provided as links, which allow you to quickly access their texts. Review the upstream patents and add any that are relevant to your list of starting patents. Note that only a few upstream patents are usually relevant to what you're looking for; the remainder were cited by the USPTO because they're relevant to some subcomponent or small feature of the starting patents. 3. FIND DOWNSTREAM PATENTS "Downstream patents" are later patents having USPTO citations to the starting patents because the USPTO regarded the starting patents to be technologically relevant. If you're viewing the text of a patent, you can access downstream patents by clicking the "Referenced By" link. Alternatively, you can access the search engine query box and search in the Cited References (REF) field by entering "REF/" followed by the patent number of a starting patent. Review the downstream patents, and if any are relevant, add them to your list of starting patents. 4. ITERATE A search for further upstream and downstream patents—by returning to the second step above—can often prove fruitful. By following this process, you're effectively building the "family tree" for the starting patents by locating patents cited in, or citing to, the growing list of starting patents. 5. IDENTIFY COMMON CLASSES Look at your collected starting patents and identify which classes are cited most frequently on the first page. You can then get a list of all patents in a particular class by accessing the search engine query box and searching in the U.S. Classification (CCL) field. Then review these patents and save those that are of interest (and add them to your starting patents and return to the second step above, if desired). It may also be helpful to now access the Manual of Classification and look at the descriptions of your classes of interest, as well as adjacent classes, to verify that the classes seem relevant to the technology you're seeking. 6. SEARCH ON CLASSES Take your classes of interest (as well as any search strings you used for fielded searching, etc.) and search for relevant published patent applications in the USPTO Patent Application search engine. To reduce frustration, note that some fields in the USPTO Patent Search Engine are different from those in the USPTO Patent Application Search Engine, and some seemingly identical fields behave differently (with the USPTO's "Help" link providing tips for usage). Patent Lawyer Craig Fieschko's Bookmarked Sites USPTO www.uspto.gov The USPTO provides a database of issued patents, and a separate database of published patent applications. (Since it generally takes over 18 months for an application to reach issuance, published applications provide a preview of soon-to-come patents). The site allows users to search the full texts of patents from 1976 onward and patent applications from 2001 onward, and limited searching of earlier patents. Drawback: While the full texts of patents and applications are available, image copies are only printable/downloadable one page at a time unless you pay for e-mail or postal delivery of image copies. Freepatentsonline www.freepatentsonline.com Pat2PDF www.pat2pdf.org These two websites compile full PDF image copies of U.S. patents for free, making them far easier to print and download (and Freepatentsonline allows searching as well). Or, access www.pat2pdf.com (not affiliated with the .org site) to pay for full PDF's of both U.S. and European patents. Freshpatents www.freshpatents.com Enter a search query, and you'll be sent regular updates of corresponding newly published U.S. patent applications. European Patent Office http://ep.espacenet.com The EPO's esp@cenet patent database allows free access to the patents of most major patenting countries, though searching is crude and image copies are printable/downloadable only one page at a time. However, by accessing "Online Public File Inspection" at http://my.epoline.org/portal/public under the Products and Services menu, you can download full PDF copies of European patents, provided you have the publication/application number. Delphion www.delphion.com One of the oldest and most powerful patent search engines, Delphion allows multiple databases (basically, all those noted above, and more) to be searched simultaneously. Disadvantage: Formerly free, now it's pay to play.

European Commission Proposes New I/P Directive

I/P Updates: European Commission Proposes New I/P Directive: "European Commission Proposes New I/P Directive On 12 July 2005, the European Commission proposed a new directive on 'criminal measures aimed at ensuring the enforcement of intellectual property rights.' Under the proposed directive, all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements are treated as criminal offences. The proposal for a framework decision also sets a threshold for criminal penalties including at least four years' imprisonment if the offence involves a criminal organisation or if it jeopardises public health and safety. The applicable fine must be at least EUR 100 000 to EUR 300 000 for cases involving criminal organisations or posing a risk to public health and safety. However, the proposal allows Member States to apply tougher penalties. According to the press release by the EC, 'the Commission hopes that this clear political signal reflecting the determination to combat piracy and counterfeiting will be supported by concerted, long-term information campaigns by national and regional authorities and other interested parties to raise awareness, not only among key players in the fight against counterfeiting and piracy but also amongst the wider public as a whole.' Click here for a primer on European Union law."

Patent Searching an Effective Tool for Competitive Intelligence

Patent Searching an Effective Tool for Competitive Intelligence Article by Vinod Singh A lot of valuable information is now available of the industries in different databases in the web. Among all those patents the most important and easily available. Patent searching can give insights into the state of the art across any technical field. It can provide a platform to monitor the competitors activities by revealing which companies are involved in a field of technology of your interest. Patent searching data can also reveal the technological road map to a particular invention, the science or logic behind the invention, and its intended application. However the legal nature of patents makes them an uncompromisingly formal style. They are written in a language sometimes so abstruse that it does more to obscure the nature of the invention than to elucidate it. Also the millions of patents exited are distributed across different databases and in each case coded and grouped according to one of several classification systems. The family patent information is also varied from various databases. The skilled patent search requires in-depth knowledge of an array of software tools, search commands, searching techniques and classification systems. That’s why patent searching is an expert's job. In the recent few years the demand for a professional patent searcher has increased. Main benefits of free-access Web databases are that they provide a low-cost means of doing initial background searches. The problem is that they suffer serious drawbacks for more crucial searches. For example: free databases generally come from the patent issuing authorities (usually national patent offices) so their content is restricted to those patents granted by that particular authority. There is no universal structure, so the same fields may not necessarily be searchable across different databases. There is no 'added value' - such as readable abstracts in plain English, which has given patent information-provider Thomson Derwent its enviable reputation. There are rarely any patent analysis technologies. And they do not provide the option of sophisticated, command driven, Boolean searches as offered by powerful tools from host companies such as Dialog, Delphion, Questel-Orbit, MicoPat and STN - which also allow parallel searches across several (commercial and free) databases at once. More importantly, a quick and easy search on a free site is extremely unlikely to uncover 'stealth patents' or "hidden patents"- one of the latest IP protection tricks. The authors of these patents deliberately choose obfuscating keywords and try to have their patents inappropriately classified in order that others' searches do not throw them up. Whereas commercial patent database providers provide access to patent collections throughout the world, along with value-added patent information, various analytical tools and other technologies. A number of these commercial providers have recently released innovative new functionalities alongside the search function Why Conduct a Patent Search? 1. Patent searches are conducted for many purposes. Among them are to: 1. Determine if a particular invention is unique 2. Identify potential features for new product 3. Identify other possible uses for a new product 4. Determine independent inventors or companies currently or historically obtaining patents in a particular area 5. Find the patent(s) for a particular invention 6. Determine the state of the art in a particular area 7. Identify patents in a specific field for generating citation maps (a tool in determining the relative importance/value of a specific invention 8. Study the rate of innovation in a particular area 9. Determine the patent portfolio of a specific company 10. Determine if an invention infringes upon the intellectual property rights of others 11. Learn about an industry or a specific company 12. Search for potential solutions to design or safety problems 13. Identify potential licensees 14. To identify additional reference materials (journal articles, books, product literature) of use to those working in this area. Patents often list printed reference materials. 15. Identify inventors working in a certain field. Patent search Procedure: 1. The Steps 1. Search the web to get the up to date information about the area of work and select the specific keywords describing the area of interest and identify the control patents. To start with by searching for any specific patents be aware of in this area, patents of companies work in this field, patents invented by inventors in this field, etc. This step is called "shoot from the tip". 2. Try a few relevant words in the word search engine and see what turns up. If turned up any patents in the "shoot from the hip" step above, examine them for possible search words. Record the search words on a page in a project notebook and add other words as they come to mind or encounter them in other patents. Usually the word list becomes separated into groups of words covering different aspects of the invention. 3. Access the Classification Index. In paper it is about the size of a small town phone book. Look up your topic and you will find a class number. The area you are interested in may have several class numbers (for example marine propulsion and propellers (impellers) are in two different classes). 4. Access the Manual of Classification (in paper it is a large 3 volume set of ring binders). Turn to or click to the class you are interested in and identify the specific subclass's best relating to your topic. You may need some assistance in understanding the hierarchial listing of subclasses. Many are subclasses of subclasses. 5. Access the Classification Definitions. It used to be on microfiche, but now you can access it online. Look up the specific class and subclass under study. Make sure you are really hunting for items resembling the definition of this class/subclass. Often additional hints are given for other places to look, including classes no longer existing. 6. Keep cycling through the three tools (Classification Index, Manual of Classification and Classification Definitions) until you identify the appropriate classes and subclasses. 7. Search the database to identify patents in the classes/subclasses identified. 8. Examine the ABSTRACT & IMAGE of these patents to identify those resembling your device. Make copies of the drawings, abstract and description of patents closely resembling your invention and of inventions serving the same purpose. After completing Steps 1 to 7, examine the patents for: 1. Companies frequently appearing as assignees (patents assigned to them). Search for other patents assigned to these companies in an attempt to identify more patents in the area of interest. 2. Inventors frequently appearing on the patents (both independents and those working for companies). Search for other patents listing these individuals as inventors in an attempt to identify more patents in the area of interest. 3. Look for words and combinations of words in the patents of interest. Sort the words into groups. Some will describe one aspect of the invention and some will describe another. Record the search words on the list started earlier. Search for other patents containing these words in an attempt to identify more patents in the area of interest. Be aware of what portion of the patent you are searching (some search abstract only, front page only, full texts). 4. Examine the patents cited as reference by the patents of interest to see if some of them are of interest as well. 5. Examine the class and subclass info of the patents of interest in an attempt to identify other classes and subclasses that may contain patents of interest. Search these new classes/subclasses for additional patents of interest. 9. Keep cycling through steps 1 to 8 over and over until no more patents of interest are identified. Conclusion The patent search has become an effective tool for the mining of the patent data, which help in the competitive analysis. A throughout knowledge of the different patent database, their classification system is required for a in depth patent search. Patent search is crucial for the patentability, validity, infringement analysis etc. Thus a skilled patent search professional must know the various search procedures, databases limitations and technical tools and software to reveal a good search result.

Intellectual property as an economic asset: key issues in valuation

Intellectual property as an economic asset: key issues in valuation and exploitation Background and Issues http://academy.epo.org/schedule/2005/e02/background_report.pdf

Best resources in intellectual property and asset management 

http://www.ipambestpractices.com/Info/BPLibraryIndex.html
Intellectual Property Best Practices Library:  Summaries

http://www.ipmenu.com/
IP Menu – Global Intellectual Property

http://www.providersedge.com/docs/km_articles/Managing_Knowledge_for_Advantage_-_Technologies.pdf
Managing Knowledge for Advantage: Content & Collaboration Technologies

http://www.kmmag.com/articles/default.asp?ArticleID=655
Making Knowledge Pay
Companies find that their intellectual processes and assets, if
properly packaged and sold, can yield surprising top-line revenues

http://www.internetcapital.com/news/partners/061702b.html
Delphion to Deliver Enterprise Software for Generating Corporate Value
from Intellectual Assets

Open Source isn't just for code anymore... What do fashion, yoga, and libraries have in common? All are dealing with the issues of "intellectual property" and "open source." The fashion industry has a long history of valuing creativity and accepting the sharing and "remixing" of fashion ideas. Meanwhile, a teacher of the 5000 year old practice of yoga has copyrighted his methods and poses and is being opposed by an "open source yoga" movement. And, at the recent O'reilly Emerging Technology Conference, the theme was "Remix your world" and included Lawrence Lessig speaking about copyright, and Cory Doctorow spelling out the dangers of Digital Rights Management, and a fascinating presentation by Clay Shirky on Ontologies. Read on... * Ready to Share On January 29, 2005, the Norman Lear Center held a landmark event on fashion and the ownership of creativity. The event had an incredible variety of participants including John Seely Brown (former Chief Scientist of Xerox Corporation), musician and producer T Bone Burnett, Danger Mouse (creator of the Grey Album), and Siva Vaidhyanathan (Professor of Culture and Communication at New York University). More than any other industry, fashion treats a far larger portion of its creative output as a commons - shared resources that can be freely reused and transformed by other creators. Ready to Share is funded in part by a generous gift from the Center for the Public Domain. For lots more information see the press coverage and press releases page. For a quick overview of the issues, see the opinion piece, Control of creativity? Fashion's secret By David Bollier and Laurie Racine. Christian Science Monitor, September 09, 2003. * Bikram goes to the mat, By Hilary E. MacGregor. Los Angles Times, March 21, 2005. After he sued an Orange County yoga studio for copyright and trademark infringement in 2002, a small group of yogis went on the counterattack. Taking a page from the "open source" movement in the computer software world, they called themselves "Open Source Yoga Unity." * O'Reilly Emerging Technology Conference, March 2005, San Diego, Ca. o press coverage o Doctorow: All Complex Ecosystems Have Parasites by Cory Doctorow, For the O'Reilly Emerging Technology Conference. San Diego, California, 16 March 2005. Likewise, DRM has exacted a punishing toll wherever it has come into play, costing us innovation, free speech, research and the public's rights in copyright. And likewise, DRM has not stopped infringement: today, infringement is more widespread than ever. All those costs borne by society in the name of protecting artists and stopping infringement, and not a penny put into an artist's pocket, not a single DRM-restricted file that can't be downloaded for free and without encumbrance from a P2P network. o Lessig: Re:MixMe. Audio (MP3) of presentation by Lawrence Lessig, Professor of Law, Stanford Law School, Thursday, March 17. o Shirky: Ontology is Overrated: Links, Tags, and Post-hoc Metadata. Abstract of presentation by Clay Shirky, Wednesday, March 16. Ontology, far from being an ideal high-order tool, is a 300-year-old hack, now nearing the end of its useful life. The problem ontology solves is not how to organize ideas but how to organize things--the Library of Congress's classification scheme exists not because concepts require consistent hierarchical placement, but because books do.

Pillsbury Winthrop Shaw Pittman LLP - United States - Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq

Pillsbury Winthrop Shaw Pittman LLP - United States - Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq: "20 April 2005 Article by John R. Wetherell, Ph.D. and Michelle Mehok Companies understand that in order to protect their technology from competitors, the company must have a strong patent portfolio. However, achieving this goal is requiring greater levels of drafting sophistication and strategy. It has become increasingly clear, by the recent case ruling in Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., just how important it is to have a well drafted patent document that has clearly defined claim terms. At issue in the Merck case was the meaning of the apparently simple term "about" in the claims and what the patentee asserted was the meaning of this term as defined in the specification. The Federal Circuit’s ruling on the legally operative meaning of this term emphasizes the critical need for the patentee to exercise caution in drafting patent applications where a term in the claim is redefined from its common meaning. Numerous court decisions have held that claim construction requires terms used in the claims to be given their "ordinary", "accustomed", or "dictionary" meaning unless the patentee has chosen to otherwise clearly define the terms in the patent specification or prosecution history. It is well settled that a patentee can act as his own lexicographer by choosing his own definition of a term and using it as he wishes so long as he remains consistent in its use and makes the meaning clear. The law provides the patentee with this opportunity because the public may not be schooled in the terminology of the technical art or there may be more than one way to interpret the structure or concept that is being claimed. However, the lexicographer privilege has recently come under criticism by some courts that have viewed it as imposing on the interpreter of the claims the burden of determining, through study of the patent’s specification or prosecution history, whether the patent gives an unconventional meaning to a term that otherwise has an established meaning. Most recently, courts have questioned what sources should be consulted during the claim construction process to determine the legally operative meaning of the words in a claim. In a recent decision, the Federal Circuit reversed an August 2003 district court ruling thereby invalidating Merck’s patent on Fosamax, an osteoporosis treatment that was Merck's second-best-selling drug. In a statement to the press after the verdict, Merck said that it disagreed with the court's ruling "and is considering its options, including a request for reconsideration by the court of appeals." Thus, Merck is considering asking the Supreme Court to review the ruling. It is doubtful that the Supreme Court would do so, because it rarely accepts patent cases. The district court held that Merck had acted as its own lexicographer and in the specification had redefined the ordinary meaning of the term "about". Merck had taken the position that it acted as its own lexicographer and that the claim term "about 70 mg of alendronate monosodium trihydrate on an alendronic acid base" should mean exactly 70 mg of alendronic acid. Ordinarily, of course, the term "about" would mean "approximately", but the district court sided with Merck and ruled that the term "about" meant "exactly". Relying on this latter construction of the term "about", the district court found the prior art cited against the patent to be insufficient to invalidate the patent based on anticipation or obviousness. Teva’s allegations that the claims at issue were invalid was based on (1) anticipation by a July 1996 Lunar News article and (2) obviousness in light of an April 1996 Lunar News article combined with the July 1996 article. However, the district court found the patent valid and infringed by Teva’s Abbreviated New Drug Application ("ANDA"), effectively delaying Teva’s FDA approval of the ANDA until the Merck patent expires. On appeal, the Federal Circuit addressed claim construction and obviousness. The Federal Circuit opined that when construing a claim term, the court must first consider the intrinsic evidence, starting with the language of the claims. "General claim terms should be construed consistently with their ordinary and customary meanings, as determined by those of ordinary skill in the art." In this regard, the specification is reviewed to determine whether the patentee acted as his own lexicographer of a term that already has an ordinary meaning. However, any "statement in the specification must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claims term." Merck’s position was that the following passage from the specification redefined "about" to mean "exactly": Because of the mixed nomenclature currently in use by those or [sic] ordinary skill in the art, reference to a specific weight or percentage of bisphosphonate compound in the present invention is on an active weight basis unless otherwise indicated herein. For example, the phrase "about 70 mg of a bone resorption inhibiting bisphosphonate selected from the group consisting of alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof, on an alendronic acid active weight basis" means that the amount of the bisphosphonate compound selected is calculated based on 70 mg of alendronic acid. The Federal Circuit disagreed and held Merck’s definition of "about" is ambiguous in that this passage was not clear enough to put one of skill in the art on notice that the ordinary meaning of "about" was redefined. The term "about" was amenable to two interpretations. The Federal Circuit stated that, under Merck’s construction, the phase "about 70 (or 35) mg" means that one should administer approximately 70 (or 35) mg of the derivative compound, such that the end result would be that the patient received exactly 70 (or 35) mg of active compound. In other words, the phrase "about 70 (or 35) mg" modifies the quantity of the derivative compound rather than the resulting active compound. However, according to Teva, the phrase could also be construed to mean that "about 70 (or 35) mg" refers to the amount of resulting active compound rather than the amount of the derivative compound administered. The term "about" would then serve to modify the quantity of the active compound in a way consistent with its ordinary meaning of "approximately". Given that the passage was agreeable to both interpretations, the Federal Circuit held that Merck did not clearly set out its own definition of "about". The Federal Circuit further decided the invention was obvious in light of earlier published articles. In short, the Federal Circuit opined that the district court clearly erred in not (1) distinguishing the claimed invention from the two Lunar News articles, (2) ascertaining the required motivation to combine references to achieve the claimed invention which clearly suggested the dosages described in the articles, (3) determining the probative value of the articles, and (4) weighing the secondary considerations or Merck’s commercial success. Judge Rader wrote a dissent in which he made two specific points: (i) that the majority erred in its analysis of the lexicographer doctrine and (ii) that the majority should have given some deference to the lower court's decision. The Merck decision warns the patentee to be clear when defining claim terms. It is hoped that another case pending before the Federal Circuit will provide additional clarification regarding the process of defining terms used in the claims. In Phillips v. AWH Corp., which was heard en banc on February 8, 2005, the Federal Circuit prudently chose to re-examine and consider seven issues: (1) how and to what extent various types of evidence, particularly the specification and dictionaries, serve the public notice function of patent claims; (2) how the specification should be used to interpret claims without impermissibly importing limitations into the claims; (3) how and to what extent various types of evidence, particularly the specification and dictionaries, should be used for claim construction; (4) whether the two approaches (dictionary and specification) should be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks; (5) when, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112; (6) what role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms; and (7) what deference, if any, the Federal Circuit should give to a district court's claim construction. Thus, this decision is expected to provide additional guidance on the proper approach to construing patent claims. In light of the fact that it is not uncommon for the patentee to use a word to mean something different than its dictionary definition and because a patent’s specification can be ambiguous, it is advisable that the patentee and his counsel work closely together to clearly define claim terms having technical, scientific, or multiple meanings. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Responding to Restriction Requirements

Anything Under the Sun Made By Man: Responding to Restriction Requirements: "Responding to Restriction Requirements I recently had a three way restriction requirement from the US PTO on an application. The examiner had restricted the invention three ways: 1. An apparatus with features possibly usable outside the client’s business. 2. A special instance of the apparatus directly relating to a product being developed by the client. 3. A method for using either invention 1 or 2. The business situation of the client is this: they are in the process of developing a technology that could be widely deployed in 3-5 years. Right now, any potential infringers/licensees are very small players and do not pose a business threat. The client is feverishly working to deploy some product and prove that it works. If their trials are successful, the market is much bigger than they can supply right now. They may raise capital and expand to meet the market, or they may license the technology to one or more existing players in the market. The question is: how to respond to the restriction? My suggestion is to elect the first invention, the one which does not necessarily directed at the client’s product. Rather than filing divisional applications right away, I would wait and file a divisional on the method claim, then file a divisional on the invention directed specifically at the client’s product. There are several reasons for this. Looking at the invention directed specifically at an embodiment like the client’s product, if we pursue it now, we will get a patent based on today’s understanding of what we think is the important features of the invention. We would rather make that definition as far into the development cycle as possible. There is always the possibility that technology or market considerations may cause certain parts to be more important than we can see at this point. This is one reason why I want to do this embodiment last. Another reason is that there are no potential infringers that need to be dealt with immediately. If we did have a patent issue protecting the client’s product, we would do little with it, except hang a plaque on the wall. Having a patent issue on invention #1, the apparatus outside the client’s business, the client will have a bargaining chip or a potential licensing stream outside the core business. The client could negotiate such a patent away without losing coverage on the core product. Looking at the method inventions, the potential infringers may be customers who buy the product. However, because the product is not widely deployed and thoroughly shaken out, there may be some changes to the methods that we may wish to make to the application with a continuation-in-part application. Taking all of this into consideration, I suggest taking the generic invention first, the methods second, and the actual client device third. I also suggest doing them as serially as possible, filing a divisional as late as possible and on paper, and keeping the application alive. There are a couple situations that may change the strategy. The first is if the client feels like the product has matured and stabilized and that there is a potential licensee. In such a case, I would suggest pursuing the product invention as quickly as possible. Another situation is if another player in the market looks like they will infringe. In that case, I suggest beginning to tailor the claims to match the potentially infringing product so that a licensing deal can be reached quickly and amicably, or so the infringer be shut down fast. Because we have no knowledge of the merits of the case from the examiner, we cannot use the merits as a basis for evaluating one invention over the other in the restriction requirement. In summary, the business considerations of the client, including their ultimate potential business strategies, can be the key to deciding which step to take in this case. The patent attorney who does not have the ability to appreciate the client’s business interests and operate with those in mind does his client a gross disservice.

Anything Under the Sun Made By Man: Vagueness in the Written Description

Anything Under the Sun Made By Man: Vagueness in the Written Description: "April 07, 2005 Vagueness in the Written Description One of the biggest challenges in writing the written description is that it is almost impossible to guess how the invention might be used over the next twenty years, which is the life of the patent. Especially in developing technologies, what makes sense today may be turned on its ear by changes in technology or the market. However, reading that crystal ball is essential for good patent protection. There are a number of cases where limitations from the specification are read into the claims by the courts. In the Phillips v. AWH Corporation case before the Federal Circuit, the lower courts read a limitation into a claim because the drafter described ‘the’ advantage of the invention had a special feature. The drafter seemed to me to be describing only ‘an’ advantage of a particular embodiment. However, the applied the feature to all the claims. If the drafter had used ‘an advantage’ rather than ‘the advantage’, it is likely that the case would not be in front of an en banc Federal Circuit and would have been settled a long time ago. The best way to deal with this situation is to eliminate any mandatory language from the written description. Use terms like ‘may’ and ‘could’ rather than ‘must’ and ‘should.’ Give every alternative embodiment that can be imagined, and especially examples at the outlying extremes of the invention. Many times, the inventors see their specific embodiment as the most logical and rational of the possibilities. What is an optimal embodiment today may be obsolete in three years. I see the invention as a combination of several elements, regardless of the embodiment. When writing the written description, I try to take each element to its logical extreme and cover every possibility for that element. After going through each element in as much detail as possible with as many examples as possible, the entire field of various embodiments should be covered. Remember, the purpose of the written description is not only to support the claims, but to give as much breadth and scope to the claims as possible. Additionally, a broad written description effectively keeps other inventors from attempting to patent a close invention, one that may turn out to be even better than the inventor’s optimized embodiment of today.

Prism Legal Consulting, Inc.

Prism Legal Consulting, Inc.: "Outsourced Legal Services print Introduction and Explanation Outsourced Legal Services print Introduction and Explanation List of Outsourced Legal Services Outsourced Legal Services - Background This list of selected legal outsourcing activity was compiled and is maintained by Joy London, author of the blog excited utterances and Ron Friedmann, President of Prism Legal Consulting, Inc and author of the blog Strategic Legal Technology. We have observed with interest a recent trend by US law firms and law departments to outsource some legal work overseas. As bloggers, we have informally tracked legal offshoring activity and wanted to consolidate our observations in a single list. We hope that readers will offer updates, corrections, and comments as appropriate. The primary focus of our list is offshore outsourcing by US firms and corporations of certain substantive and administrative legal functions, specifically # Document drafting by lawyers # Legal research # IP legal work, substantive or administrative # Review of discovery documents # Paralegal services # Administrative and secretarial support services, excluding digital dictation The list does not include offshore litigation support coding or vendor-provided technology services. Nor does it include offshore vendors whose business does not focus primarily on the legal market. A secondary focus of the list is selected outsourcing by US law firms or vendors within the United States. The inclusion criteria are loose but exclude outsourcing to US-based vendors of technology support, legal research, and copy/mail-room services. This type of outsourcing has occurred for years and is thus of less interest to us. Our list is neither complete nor comprehensive. We assembled it based on web research, articles we have read, and people we have met. Each entry includes a source, either a web site or article. For web sites, we list the URL; for articles, we provide a citation. We checked URLs at the time we assembled the list. Where the source is an article, we have no way to track possible changes since the publication date. We welcome comments, suggestions, and corrections from readers. We reserve the right to post reader comments at excited utterances and/or Strategic Legal Technology unless requested otherwise. If we receive corrections and/or suggestions for new entries, we will include them in periodic updates to the list. List of Outsourced Legal Services Organization Organization Type Services Location Source | Notes Date Added Accenture Corporation Law dept. support (contracts) Mauritius Corporate Legal Times, Sep 2004, reports company has set up owned and operated office in Mauritius for company legal work. Mar 05 Andrew Corp Corporation Law dept. support (patents) NZ See Outsourcing Reaches Corporate Counsel, The Recorder, 8/25/04 Mar 05 General Electric Corporation Law dept. support (contracts) India See Outsourcing Reaches Corporate Counsel, The Recorder, 8/25/04 Mar 05 General Mills Corporation Patent work NZ and Australia See Corporate Legal Times article, July 2003 Mar 05 Microsoft Corporation Patent work India See Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 Baker & McKenzie Law Firm Network ops & doc production Philippines See http://www.lwk.co.uk/ViewItem.asp?id=16509 Mar 05 Bickel & Brewer Law Firm Litigation Support India See also Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 Orrick Herrington Law Firm Tech, finance, admin US (Wheeling, WV) See http://www.orrick.com/offices/goc/ Mar 05 Atlas Legal Research Vendor Legal research India See Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 CBF Group Vendor Secretarial & admin support US (Fargo, ND) Mar 05 Docuserve Vendor Reception, telephone & fax services, mail-room, printing & reprographics & hospitality functions Scotland See http://news.scotsman.com/index.cfm?id=199662005 Mar 05 Evalueserve Vendor IP work & market research India Mar 05 Intellevate LLC Vendor Paralegal, docketing, technical research, proofreading, bookkeeping India See http://www.practicesource.com/ale/blog/pivot/entry.php?uid=standard-532 Mar 05 Intercom India Vendor Legal transcription, legal coding India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 Law Abroad Vendor Legal work S. Africa and UK Not clear if operational yet (see http://www.lawabroad.com/outsourcing.php) Mar 05 Lawwave Vendor Legal research, IP analytics, doc review, back office India See also India Abroad article Jan 04 Mar 05 Lexadigm Vendor Legal research India Mar 05 http://www.lexwerx.com/ Vendor Legal research India Specializes in insurance and re-insurance; has a UK office Mar 05 Manthan Services Vendor Case management, legal transcription, data digitization & archiving India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 Mindcrest Vendor Legal process outsourcing, legal research & business research services India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 http://www.officetiger.com/ Vendor Document processing, legal research, professional support, finance & accounting services India See http://www.hildebrandt.com/Documents.aspx?Doc_ID=1802 Mar 05 QuisLex Vendor Legal support services India Web site does not specify services Mar 05

law.com - Article

law.com - Article: "Briefed in Bangalore Briefed in Bangalore Legal services are moving offshore -- will India's lawyers help reshape the U.S. legal market? Helen Coster The American Lawyer 11-01-2004 In recent months Microsoft Corp. began using Indian professionals to search for prior art -- written information about an invention -- in preparation for filing patent applications. Other Fortune 500 companies, such as Oracle Corp., have considered it. And law firms, which often follow the lead of their clients on new initiatives, are finally catching on. Outsourcing may be a dirty word in this year's presidential campaign. But in the real world -- where costs and competitiveness matter -- lawyers, like other professionals, have started to recognize the value of tapping into the highly educated, English-speaking Indian workforce to carry out tasks that would typically be performed by junior-level employees. Several outsourcing companies are courting the U.S. legal market, using Indian lawyers, scientists, and other trained professionals in cities like Hyderabad, Bangalore, and Noida. There are a few different emerging models. Vendors like Lexadigm Solutions and Lawwave.com rely exclusively on Indian lawyers to conduct low-level legal work and analysis. Others, like OfficeTiger, use a mix of lawyers and trained professionals to handle legal and nonlegal tasks such as managing conflicts databases and document management and review. A few vendors specialize. Intellevate has hired an Indian staff of lawyers and Ph.D.s to conduct patent research and other IP work. The company has a dedicated team devoted just to Microsoft's patent work. Smaller law firms are taking advantage of the range of services offered by these companies. Document review is the most popular task to outsource. In most cases a vendor scans and uploads the documents onto a secure Intranet site. Lawyers in India access the documents, identify responsive and privileged documents, and, when complete, upload their findings back onto the Intranet. The process varies slightly for lawyers who outsource IP prosecution work, rather than just discovery. "A large company will send us an invention description," says Intellevate chief executive Leon Steinberg, who oversees 72 Indian employees and offices in Bangalore and Noida, a suburb of New Delhi. "We would have a computer science expert, or some other kind of trained specialist, do research and determine whether the invention can be patented. They use proprietary databases and online tools to conduct research. Then they post their search result on a Web site that only our client can access." Some law firms and legal departments have opened their own offices staffed by Indian employees, rather than outsourcing their work to a third-party vendor. This is called offshoring. In 2001 General Electric Co. established a legal team in Gurgaon, India, with lawyers and paralegals who draft documents like contracts. Bickel & Brewer, a 34-lawyer Dallas litigation firm, opened a facility in Hyderabad, India, in 1995. Several hundred Indian employees -- both lawyers and nonlawyers -- scan, code, index, and abstract documents. Bickel & Brewer's offshore practice has been so successful, says partner William Brewer, that the firm spun it off as a standalone company. While cost might be the most obvious incentive for outsourcing legal work to India, lawyers cite a number of other motivating factors. One is the 9-to-13-hour time difference between the United States and India, which gives U.S. lawyers the sense of operating on a 24-hour-basis. "When I go home at six I can have them do the grunt work, research, and proofreading that I would otherwise have other people do," says Solan Schwab, a New York-based solo practitioner who outsources research projects like analyzing state-by-state insurance regulations with QuisLex, which has 12 lawyers in Hyderabad. "Then when I come in in the morning, I receive a beautiful e-mail with research done exactly how I like it." Schwab sees outsourcing as the answer to the age-old dilemma facing solo practitioners: an erratic work flow that doesn't justify the overhead of a full-time staff. He estimates that by outsourcing legal work, he spends about one-third to one-half of what he would spend on hiring a full-time associate. He adds that because he has the manpower to take on new business, he has been able to generate about $50,000-$60,000 in new revenue. "I usually bill the clients a certain hourly rate and pay these folks a portion of that rate." Schwab says that the markup depends on whether the client is an individual or a corporation. Even with the occasional markup, lawyers say that the financial incentive of outsourcing legal work is the factor that most impresses their clients. "None of my clients have opposed it because it saves them money," says Noah Henry Simpson, of five-lawyer Simpson, Woolley, McConachie of Dallas. "It probably saves them at least half of what they would usually pay." Vendors charge an hourly rate or on a per-project basis. Lexadigm charges $60 per lawyer per hour, Atlas Legal Research charges $80, and OfficeTiger will not disclose its fees. (London's Allen & Overy is currently outsourcing word processing to 74 OfficeTiger employees, a practice that the firm says saves "a seven-figure sum.") Quislex gives clients the option of being billed by the hour or project. Intellevate offers three pricing mechanisms: a seat license, which can range from $1,200 to $4,500 per month; a straight hourly rate, which varies from $12 to $65 per hour based on experience; and a flat fee for a particular activity, such as $390 for seven hours of prior arts searching. The lure of inexpensive labor, however, isn't enough to convince many lawyers that outsourcing legal work to India is a good idea. Their primary concern is security, and how to deal with issues of attorney-client privilege. "If I'm one firm and I'm outsourcing work in India, then I don't know that another firm isn't using the same lawyers," says G. Hopkins Guy, an IP partner in the Silicon Valley office of Orrick, Herrington & Sutcliffe. Proponents of outsourcing explain that outsourcing work to India is no different from outsourcing scanning and coding of litigation documents to a vendor or legal work to a temporary lawyer. But Guy and others are not convinced. "We need to tightly manage conflicts," he says. "I've heard of instances where just by sending documents out to a place like Kinko's, lawyers have had problems with conflicts." Guy adds that while Orrick routinely uses outside vendors to do document imaging and processing, he prefers that those vendors be located fairly close to his office and within easy access to manage the quality of the end product. Orrick also hires temporary, or contract, lawyers. The difference, says Guy, is the hands-on way that Orrick manages and integrates these lawyers. "We'll put a group of contract attorneys with Orrick lawyers in a room with eight computer terminals," Guy says. "[While reviewing documents] someone will often have a question, like 'I see this here. Is this important?' and they can ask a supervising attorney. But if I have a contract attorney who is by himself, in India, what do they do with that question? Maybe he can send an e-mail and get a reply a day later. But quite naturally you would think that they would say it's not important and move on. And I want that question immediately answered. That's why I don't see outsourcing of this type working." Many lawyers feel uncomfortable with the idea of outsourcing work to professionals whom they've never trained, let alone met, yet whose work reflects the quality of the firm. "I would be concerned about the absence of quality assurance," says Matthew Powers, the head of patent litigation in the Silicon Valley office of New York's Weil, Gotshal & Manges. "If you ship work to India and there's a problem and the judge says, 'How did this happen?' and you say, 'I don't know,' then there's an abdication of responsibility." Powers says that he'd be nervous to rely on legal research completed by someone he doesn't know. "We invest a lot of time in training and managing our people to ensure that we get a high-quality work product. I'd rather find efficiencies in other forms." Other lawyers question the wisdom of outsourcing, citing the time needed to review the work done by Indian professionals or to manage the flow of information. Oracle, for example, decided it wanted its patent professionals closer to the business units. Yet proponents of outsourcing say that the practice becomes increasingly efficient with time. H. Wynne James III, a partner in 250-lawyer Louisville, Ky.-based Stites & Harbison, is realistic about the management required to outsource legal work to India. His firm has outsourced legal research and pieces of M&A transaction and is currently considering forming an alliance with outsourcing vendors and Indian firms. "If I think that I am going to get a high quality from the first day, I'm kidding myself," he says. "I think that this is not without its real challenges. One is efficiently managing Indians and American lawyers in the same engagement. I think that the internal mechanics of a lot of firms are not structured to handle that very well." Lawyers were reluctant to use temporary lawyers when the service started nearly two decades ago. Small firms were the first to embrace the concept. Today, they are present in firms of all sizes. But as some lawyers have found, this kind of universal acceptance doesn't happen overnight. As James says, "One of my partners said, 'I thought you were crazy when I thought you meant Indiana.'" THE INSIDE SCOOP ON LEGAL OUTSOURCERS Company Web site Personnel Most popular outsourcing requests: Atlas Legal Research atlaslegal.com 3 lawyers in Bangalore legal research and brief writing Intellevate intellevate.com 72 employees in Bangalore and New Delhi patent proofreading, prior arts searches, and paralegal functions Lawwave.com lawwave.com 8 lawyers working on an as-needed basis in Chennai document review and legal research Lexadigm Solutions lexadigm.com 6 lawyers in Gurgaon research memos, briefs, and surveys of state law OfficeTiger officetiger.com Declined to say how many lawyers and nonlawyers in Chennai word processing and legal research Quislex quislex.com 11 lawyers in Hyderabad research and document review The 2004 Global 100 Database is now available in an electronic spreadsheet. These definitive rankings of the world's largest international law firms can be sorted, searched and imported into an active database. The rankings include gross revenue for FY 2003, number of lawyers, average revenue per lawyer, profit per equity partner, number of countries in which the firm has offices, percentage of lawyers outside the firm's home country, key marketing contacts and more.

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It is proper to limit the scope of the claims according to the specification By Dennis Crouch PatentlyOImage022Rhodia Chimie v. PPG Industries Inc., (Fed. Cir. 2005) By Baltazar Gomez, Ph.D. Rhodia is an international chemical company and the assignee of U.S. Pat. No. 6,013,234 ("the '234 patent"). The patent discloses and claims certain essentially spheroidal precipitated silica particulates. Rhodia markets “Micropearl” which is a silica particulate covered by the patent. PPG also makes three silica products, namely, Hi-Sil SC60M, SC72 and SC72C. Rhodia alleges that these products infringe claim 1 of the '234 patent. The district court granted summary judgment for noninfringement in favor of PPG. On appeal, Rhodia argued that the district court erred in interpreting claim 1. The CAFC, however, affirmed the district court’s construction. Claim 1 of the '234 patent partly reads as follows: Dry, dust-free and non-dusting, solid and homogeneous atomized precipitated silica particulates essentially spheroidal in geometrical configuration… (emphasis added) In addition, the specification included examples tested both for flowability and dusting properties. Flowablity tests were performed by a pour test which compared the flowability of Micropearl with the prior art. The dusting tests were measured by the German DIN 53 583 standard (the "DIN test"). During the district court’s claim construction hearing, PPG asserted that the phrase "dust-free and non-dusting" should be interpreted literally to mean "no dust cloud whatsoever." Conversely, Rhodia argued that such a meaning was improper in view of the results of the pour test that showed production of some dust. Accordingly, Rhodia advocated construing "dust-free and non-dusting" to mean "very low dust." The district court was concerned, however, that Rhodia's proposed definition of the phrase was relative and that such a definition would not meet the statutory requirement that the claims particularly point out and distinctly claim the invention. Thus, to resolve the perceived ambiguity of the phrase, the district court adopted a construction based upon the only meaningful guidance provided in the patent, namely the DIN test. On appeal, Rhodia argued that the DIN test was not the only means by which to assess the amount of dust produced by the invention. Rhodia asserted that the pour test could also be used to determine the level of dustiness, and therefore, it is inappropriate for the district court to limit the phrase "dust-free and non-dusting" to the DIN test. Further, Rhodia cited statements made during prosecution of the ‘234 patent explaining that the pour test could be used to show the non-dusting and free-flowing properties of the ‘234 patent. In affirming the district court's construing of "dust-free and non-dusting", CAFC noted that although the pour test may also provide evidence of dustiness, the results of the pour tests presented in the '234 patent were only identified as evidence of the products' flowability. The CAFC further noted that there is no language in either the claims or the written description that taught the application of the pour test to determine the level of dustiness. Finally, CAFC stated that Rhodia's statements made during prosecution cannot serve to fill such a gap. Thus, the CAFC concluded that the district court did not erred in limiting the scope of the claims by defining the phrase "dust-free and non-dusting" to the only disclosure in the patent. Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University. File Attachment: Chimie v. PPG.pdf (98 KB)