Sunday, January 11, 2009

New Year, New Blog Site

This blog is moving. This will be my last posting on this site.

Our new address is:

http://ipattorneyfirm.com/blog/

Looking forward to seeing you there!

If you get to this page by clicking on a link from any page of www.ipattorneyfirm.com, please copy the referring page's URL and email me with the linking URL in the body of your email. I will fix it as quickly as I can after receiving your email.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Thursday, January 08, 2009

What to do??

The economy is continuing to melt down. The holidays were dismal for retailers, the Congressional Budget Office tells us that the current deficit is $1.2 TRillion (TRillion...that's a billion times a billion), China is souring on holding notes from the US, the stock market seems to have forgotten that "up" is a direction in which stocks can go, banks are cutting interest rates, and the news just keeps spiraling down.

What to do??

President-Elect Obama is, as I write this, speaking at George Mason University, spreading the message that we have to do something. We HAVE to do something. The recession is already eating into our jobs — unemployment is already at 7% and expected to rise to 9% by the end of 2009 — and it could affect our ability to afford college for our children, assets like homes for ourselves, and could send the country into a decades-long tailspin.

“We could lose a generation of potential and promise, as more young Americans are forced to forgo dreams of college or the chance to train for the jobs of the future,” Mr. Obama plans to say in his speech at George Mason. “And our nation could lose the competitive edge that has served as a foundation for our strength and standing in the world. In short, a bad situation could become dramatically worse.”

We have to do something.

I don't know whether the economic stimulus package proposed by Mr. Obama will work, but it will create jobs (many in the public sector, true, and therefore paid for with tax dollars), thereby providing more families with the security of employment, which will enable at least those people who might otherwise be unemployed, to keep their homes, send their kids to college, and stave off economic disaster for one more day. It does so at the price of increasing our national debt load ... you can't add to spending and cut taxes without going into more debt ... but somehow I have confidence that things will improve. I see Mr. Obama surrounding himself with some smart people, and doing so with little respect for party alliances. I see this as a ray of hope in these dark economic times.

Source: NYTimes, 8 January 2009

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Saturday, December 27, 2008

Holiday Greetings

I have been remiss in offering holiday greetings this year. So, for all you fellow Scrooges, Bah Humbug. For all of you merrymakers, Happy Holidays.

The world has changed in 2008. The economy melted and will likely take a long time to resolidify; the US elected our first non-white president and about time too, the war in Iraq continues to drone on despite the demands of the world, and the US Supreme Court has continued on its conservative course.

Delain Law Office regained its original name when Glenn Liebert left to join the Warren County Public Defender in on July 1. Also on July 1, we opened at our new offices in Schenectady, NY, leaving the exhorbitant rent of Clifton Park behind.

We look forward to a happy, healthy and hopefully prosperous 2009, and wish the same for you.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Monday, December 22, 2008

Requiem for Custard II

Our 15-year-old black cat, Custard II, died today at home. He was old and had gotten sick enough for us to begin thinking about putting him down yesterday; today, he was much worse. His death was gentle, and he was surrounded by His People as he passed. He was named for Custard the Cowardly Dragon (a poem by Ogden Nash) by my then-three-year-old daughter.

We are glad that he is out of pain and we miss him terribly. He was a one-of-a-kind cat; he nursemaided my daughter when she was growing up, he had Definite Opinions which he Expressed, and he frequently gave me the gift of a "silent meow".

RIP, Custard. You're the best cat in the universe still.

Nancy

Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Tuesday, November 04, 2008

Election '08

The results are not yet all in, but at this point it looks like the Obama family will soon be moving to 1600 Pennsylvania Avenue, Washington, D.C. 20500-0001 (yes, that's the real address, including the real zip code, for the US President; the First Lady is 20500-0002). Mr. Obama, as I write this, has 333 electoral votes (270 are needed to win the election).

I congratulate Mr. Obama and wish him well. Condolences to Mr. McCain.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Monday, November 03, 2008

Volume I, Issue I of the DLO Gazette is Published

The title of this post about says it. See my website's newsletter page to read this magnum opus. It's all of 3 pages long.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

In re: Bilski: Clarification of the 35 U.S.C. 101 Standard

The US Court of Appeals for the Federal Circuit ("CAFC") has gone and done it now. They have finally given some guidance on business method and software patent claims, and it's about time they did, too.

An en banc panel of the Federal Circuit on 30 October 2008 clarified the standards applicable in determining whether a claimed method constitutes a statutory "process" under 35 USC § 101. This is a long-awaited clarification, and is welcomed by at least my part of the patent community.

The seminal case for the patentability of business methods is State Street Bank v. Signature Financial Group. That's where we start.

The US Supreme Court has held that "...the meaning of "process" as used in § 101 is narrower than its ordinary meaning. ... Specifically, the Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." They have also held, however, that "while a claim drawn to a fundamental principle is unpatentable, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." The Court thus distinguished between claims that "seek to pre-empt the use of" a fundamental principle, on the one hand, and claims that seek only to foreclose others from using a particular "application" of that fundamental principle, on the other.

The question before the CAFC in Bilski is a question that causes the judges to ask just how one is supposed to determine whether a given claim would pre-empt all uses of a particular principle. As it turns out, the US Supreme Court has provided a test: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court believed that "A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article." The CAFC "reaffirm[s] that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101. Note, though, that whether a claimed process is novel or non-obvious is irrelevant to the § 101 analysis. These considerations are governed by §§ 102 and 103 and present different hurdles for the claims to overcome.

Another test for 101 patentability, the Freeman-Walter-Abele test "... in its final form, had two steps: (1) determining whether the claim recites an "algorithm" within the meaning of Benson, then (2) determining whether that algorithm is "applied in any manner to physical elements or process steps." The CAFC in Bilski concludes that the Freeman-Walter-Abele test is "...inadequate. Indeed, we have already recognized that a claim failing that test may nonetheless be patent-eligible." Rather, they hold that the machine-or-transformation test is the applicable test for patent-eligible subject matter.

The CAFC also revists the "useful, concrete, and tangible result" language associated with State Street. The Supreme Court explains that "certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application." They hold that while looking for "a useful, concrete and tangible result" may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Wednesday, October 08, 2008

USPTO has announced the annual trademark expo

Do you want your mark be part of the USPTO's 2009 Trademark Expo? The Expo will be held in early May, 2009.

The information for signing up for this annual event, to be held at the USPTO's offices in Alexandria, VA, is now to be found on their website. This is a direct link to the sign up form.

The USPTO has some pictures posted of last year's event; it looks like a good and productive time for trademark owners.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Sunday, October 05, 2008

Library System

My local library, the Schenectady County Public Library in Schenectady, NY, has a whizbang techno-geek system in place. They have downloadable books, CDs, movies and other A-V materials that are downloaded by the borrower through a wireless interface and the downloaded copy and all copies made from that downloaded copy expire after x number of days, x being defined by a license between the library and the distributor of the materials (a subscription-based service for libraries).

This system seems to me to be a fine, practical answer to the thorny copyright mess that the GOOGLE library project engenders. The public has access to the materials as we do to any hard-copy library materials, which promotes the free dissemination of information and ideas; this whole system is licensed, so the authors get paid a royalty; and the file, which is conveniently located on the borrower's computer or MP3 player, self-destructs after a finite period of time, "disappearing in a puff of logic" as my daughter would say, leaving no permanent footprint of its ever having existed. Any copies made of the file, onto an MP3 player or even a CD or DVD, for example, disappear at the same time as the original file.

Nancy
Delain Law Office, PLLC

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Saturday, October 04, 2008

Two Posts From the US Patent & Trademark Office...

Post Number One:

Remember the new rules that the PTO was supposed to have in place awhile back? The ones that got enjoined by the court? Well, they're ba-a-ck; here's the latest update from the PTO's website:

USPTO Identifies New Applicability Date of Certain Provisions in "Claims and Continuations" Final Rule (8/4/2008)



Post Number Two:

I join with the nation in congratulating the winners of the 2007 National Medals of Technology and Innovation.

President Bush Presents 2007 National Medals of Technology and Innovation (9/30/2008)



THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Thursday, September 25, 2008

Hari Puttar

No, that's not a misspelling. An Indian (as in the country, not the Native Americans) film company has produced and will soon distribute a film called Hari Puttar. Time-Warner lost their infringement suit against the film in the Indian courts. This ruling, of course, flies in the face of the copyright infringement suit won by Time-Warner and JK Rowling in the US District Court for the Southern District of New York against the publishers of the Harry Potter Lexicon.

Just goes to show the difference between countries in interpretation of copyright....

For more info, see the WSJ Law Blog.

Nancy

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Tuesday, September 23, 2008

Egyptian Goddess, Inc. et al. v. SWISA, Inc. et al.: Appropriate Legal Standard for Assessing Claims of Design Patent Infringement

The Federal Circuit Court of Appeals has today (9/22/08) addressed the appropriate legal standard to be used in assessing claims of design patent infringement.

The questions asked by the en banc panel are:

"...whether the “point of novelty” test should continue to be used as a test for infringement of a design patent; whether the court should adopt the “non-trivial advance test” as a means of determining whether a particular design feature qualifies as a point of novelty; how the point of novelty test should be administered, particularly when numerous features of the design differ from certain prior art designs; and whether district courts should perform formal claim construction in design patent cases."

Find the Court's answer to these questions here.

Nancy

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Monday, September 08, 2008

The USPTO is using me...

The USPTO is using my services to review their new Continuing Education Program ("CEP") pilot. They are considering a new mandatory requirement for patent practitioners to have something similar to state-based CLE, and I am reviewing their pilot programs. They've got some good stuff (some of it needs some changes...).

At this point, patent practitioners in the US have to pass the patent bar, and then they're let loose on the world as registered attorneys or agents forevermore. A mandatory CEP requirement would make sure that practitioners stay at least minimally up to date. Patent law changes ever-more quickly in the US, so it is therefore in the inventor's best interest to have a mandatory CEP requirement in place. I'm proud to be one of the approximately 850 (out of over 60,000 patent practitioners total) evaluators for this important new program.

Nancy

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Monday, July 07, 2008

Copyright expiration chart

I was poking around on the New England School of Law website (of all places) and found a link to a very useful chart. This chart, developed by Lolly Gasaway of the University of North Carolina, provides a quick-and-easy reference for dates when works developed at various times enter the public domain. Since that's one of the more common questions I get, I shall make a note of this link in my browser's bookmarks and shall use it often.

Nancy

PS: A colleague, IP/patent attorney Olen York, has pointed me toward a far more complete chart, listing just about every situation in the copyright expiration scenario. Many thanks!

Wednesday, April 16, 2008

Another nugget from the US Patent & Trademark Office's website

"On April 3, U.S. Secretary of Commerce Carlos M. Gutierrez sent a letter to members of the U.S. Senate to share the Administration’s thoughts on key aspects of the Patent Reform Act (S. 1145), including the Applicant Quality Submissions (AQS) provision, which he cites as 'the strongest step toward improved patent quality.'

"The Administration strongly supports the AQS provision in the bill in its current form, and believes enacting AQS will reduce the number of poor quality and imprecise applications, thus dramatically reducing patent pendency and backlog, as well as the likelihood of excessive litigation.

"In addition to AQS, the letter addresses numerous elements of the bill including inequitable conduct reform, damages, post-grant review and others.

"To access the letter in its entirety, go to: S1145 Letter. To access the Administration’s views letter from February 4, 2008, go to: Administration Views Letter."

==============

I'm not sure yet what I think of the Patent Reform Act. It has its plusses (for example, patents of high quality are worth more than are patents of low quality), but it also has its minuses (for example, small inventors, who now have many patents pending before the USPTO, might be seen automatically as "patents of low quality" and thus may lose reasonably easy access to the patent system).

What do you think?

Nancy

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Monday, March 31, 2008

From the US Patent & Trademark Office

From the USPTO's website:

"The National Trademark Expo next Thursday through Saturday (4/10-12/2008). The Expo is free and open to the public from 10 a.m. to 6 p.m. at the USPTO’s Madison Building atrium, 600 Dulany Street, Alexandria, VA.

"Trademarks are also important to small businesses, and they will be represented at the Expo by Starmaker Products®--a California-based cosmetic company founded by Anson Williams, who played “Potsie” on the popular 1970s TV series Happy Days. Williams will explain the importance of registered federal trademarks to his company, and will sign autographs."

Nancy

Wednesday, February 13, 2008

Oh, dear, we ARE in trouble...

New Line Cinemas made three movies that came out in 2001, 2002 and 2003. These films were based on JRR Tolkien's "Lord of the Rings" trilogy and were hugely successful. You may have seen them. New Line had a contract with Tolkien's estate in which it agreed to pay a royalty of 7.5% of gross receipts for all movie ticket sales, DVD sales and merchandising sales based on these three films.

Seems the Tolkien Estate thinks that New Line hasn't lived up to its agreement. The Tolkien estate has sued them for breach of contract and damages in Los Angeles; suit was filed on 12 February 2008.

This is evidently not the first time that New Line has gotten the boot applied to its backside over money generated from these films.

You can read the AP story at FindLaw.com.

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Wednesday, January 30, 2008

Digital Libraries

GOOGLE has a great idea. Its internet library project wants to put all the printed words in the world on the internet and give everyone access to everything. Yahoo and MSN are engaging in the same activity, as is the website for the Open Content Alliance.

This project has been in the works since at least 2004, and has been the subject of copyright litigation in the Southern District of NY, where both the publishing industry and the Authors' Guild sued GOOGLE, Inc. in 2004 to enjoin the scanning and placing of library materials on the internet. That litigation remains active.

But, you say, why would anyone object to the free dissemination of information? After all, you can visit the brick-and-mortar library and take the hard copy out for free, without purchasing the book. Why should the digital library be any different?

This presents a question of copyright. Library hard copies were sold at one point (they may have been donated to the library, but the donor purchased them), thus giving a reward to the copyright holder (since the books were presumably sold under an agreement whereby the sale would generate a royalty). The library copy is one discrete copy of the book. This one discrete copy on which the author's royalty is based is meaningless in the digital world; a file, when distributed, is, by definition copied, which is one of the activities reserved by the US Copyright Act to the copyright holder.

So what's a library to do? While it's true that William Shakespeare can't complain about the downloading of the text of his works (and the text of his works are freely available on the internet), J.K. Rowling certainly can ... and very likely would (and rightly so).

There are several options here that I can see right off the top of my head. First, and obviously, the digital libraries can limit their collections to those works where copyright has expired: William Shakespeare, Thomas Malory, Mark Twain, even some 20th Century authors. That would circumvent the copyright problem altogether.

Second, the library might "lend" the file to the user, just as libraries lend hardcopy books to their brick-and-mortar patrons: this would require that the file expire and self-delete from the client's machine after a certain amount of time has passed since its download, and the library could even limit the number of times any one client can download that file without paying anything.

Third, the digital libraries could be used as scholarly or research repositories and not made available for any other use. Scholarly uses are an exception to the copyright law's prohibition on copying in the USA.

These are just a few thoughts on how to reconcile copyright with digital libraries. Both exist, both must learn to coexist in an ever-shrinking and ever-more-connected and digital world.

Nancy

Tuesday, December 04, 2007

From the US Court of Appeals for the Federal Circuit...

The website for the US Court of Appeals for the Federal Circuit, the appellate court of exclusive jurisdiction in patent matters, is now found at http://www.cafc.uscourts.gov; they changed their URL (from www.fedcir.gov) to conform with the standard URL format used by every other federal court in the US.

Nancy

Thursday, November 22, 2007

Happy Thanksgiving

In the IP world, the US Patent & Trademark Office thinks its reviews of patents and trademarks have improved substantially; see their press release. The Copyright Office has posted the updated version of Title 17 (the US Copyright Laws) on its website; see that here.

Life in the office continues at a rapid pace: we're mostly working on two patent applications and a couple of pieces of copyright litigation at this point. We successfully settled a case for a homeowner who was being sued by an architect for copyright infringement, and we're gearing up for litigation where we represent an artist whose work has been taken by a large corporation without permission.

From our firm to you, Happy Thanksgiving. Please travel safely if traveling you are this holiday weekend. Remember not to tailgate, not to cut truckers off, not to be rude on the road. Have patience with the airline security systems; remember, they are in place to protect you. Enjoy your time with family and friends.

Nancy

Friday, November 02, 2007

The USPTO Rules are NOT in effect...

From www.uspto.gov, 11/2/2007:

The United States Patent and Trademark Office (USPTO) published a final rule notice in the Federal Register to revise the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. See Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46716 (Aug. 21, 2007)(Claims and Continuations Final Rule). The final rule notice published in the Federal Register indicates that the effective date for the changes to the rules of practice in the Claims and Continuations Final Rule is November 1, 2007.

On October 31, 2007, the United States District Court for the Eastern District Court of Virginia issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule. Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule will not go into effect on November 1, 2007.

USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.

This website will be updated and USPTO customers should monitor this Web site for any updated information.

End of www.uspto.gov notice.

Well. Isn't that interesting. They get everyone into a dead panic and the court enjoins the new rules. Gotta love the patent law. Stay tuned.

Nancy

Saturday, October 27, 2007

USPTO hosts 2-day free seminar 11/7-8/2007 in San Jose re: Protecting against IP theft from China

The United States Patent and Trademark Office (USPTO) will host a free, two-day, seminar for businesses on November 7-8 in San Jose, California, to help them learn about how to protect against intellectual property (IP) theft from China. China was the number one source of counterfeit products seized by U.S. Customs and Border Protection in 2006, accounting for 81 percent of all seizures.

These two-day intensive seminars include presentations on protecting and enforcing trademarks, patents and copyrights in China, case studies illustrating these principles in practice, and real world stories and practical tips from companies on the frontline of IP rights protection and enforcement in China. USPTO China Road Show/San Jose will highlight copyright issues in China and will include speakers from the International Intellectual Property Alliance, the Art Copyright Coalition, and a practitioner representing U.S. musicians touring in China. The program also will include comprehensive coverage of enforcement strategies against IP theft from China, including presentations by representatives from U.S. Customs and Border Protection (CBP) and U.S. Immigration and Customs Enforcement (ICE). An electronics industry panel and coverage of technology transfer issues will round out this comprehensive program.

The program is for any company that wants to learn about protecting its products from counterfeiting and piracy - even those companies that have no plans to sell or manufacture their products in China. USPTO China Road Show/San Jose is the latest in a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting - which cost the American economy approximately $250 billion annually.

The seminar is free and open to all, but registration is required to attend. For more information and to register, go here.

Nancy

Wednesday, October 24, 2007

USPTO hosting Inventor Information Live Online Chat 10/25/07 2-3 p.m. EST

From the USPTO website:

"Senior officials of the United State Patent and Trademark Office will be available live on-line this Thursday, October 25, from 2 to 3 PM (EST). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the on-line chat will be posted on the home page of the USPTO web site at 10 AM (EST) next Thursday. Inventors can begin logging on for the chat at 1:30 PM.

"The independent inventor on-line chat is part of the USPTO's continuing efforts to promote and protect America's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies."

As a patent attorney, I recommend that my clients attend these public sessions with the USPTO. They are generally informative and useful.

Nancy

Sunday, October 07, 2007

Copyright Caselaw

I'm in the process of writing a review of the caselaw from the US Courts of Appeal and the US Supreme Court for the last few years. Quite the undertaking: since 2003, there have been over ten copyright cases decided in each of the First, Second, Sixth, Ninth Circuits (covering (1) New England, (2) New York, (6) Kentucky, Michigan, Ohio, Tennessee, (9) California, Alaska, Arizona, Nevada, Oregon, Washington State, Idaho, Montana, and Hawaii). I have my work cut out for me....Thank goodness for the Third and Fourth Circuits (covering (3) Pennsylvania, New Jersey, Delaware, Virgin Islands, (4) Maryland, Virginia, West Virginia, North and South Carolina), which have decided only two cases each.

The Second and Ninth Circuits are the main places that copyright gets decided, and that makes sense: the Second Circuit is the home of the publishing industry (NYC) and the Ninth Circuit of the movie industry (Hollywood, CA). It surprises me, though, that the Sixth Circuit has been more active than has the Seventh (which includes a minor mecca called Chicago).

More on the content of the review as it develops....

Nancy

Friday, September 21, 2007

USPTO to host a trademark expo

You have to register for the expo to display your registered mark....

This link will take you to the page on the USPTO's site where you can get more info.

Nancy

Thursday, September 06, 2007

Re: Russia and ROMS

The following is from the Director of the Copyright Alliance. Note that I post his response with permission.

Nancy

>Dear Ms. Delain,
>
>I came across your post about A****.com (thanks for not typing
>the full name). As you're probably aware, the reason the copyright
>holders don't agree with the verdict is that ROMS, this alleged
>licensing agency, may get money from the web site and its successor,
>but it never pays out any royalties to copyright owners, at least
>not non-Russian ones. I also understand that ROMS is run by one of
>Putin's cabinet members, which explains a lot.
>
>The fact is, most people seem to feel that the way Russian law is
>written, it's entirely possible that this activity is "legal."
>However, those laws are wrong because Russia is a signatory to
>international treaties that obligate it to respect international
>copyrights, which its law is not doing. Domestic law is supposed to
>change to comply with international treaties; we did that with the
>Digital Millennium Copyright Act, which brought us into compliance
>with two WIPO treaties. You're right about WTO being a part of this,
>it's hard to imagine why copyright owners should believe any
>promises made by the Russian government in the WTO process when they
>are choosing openly to defy other, related treaties.
>
>Best,
>
>Patrick
>
>
>Patrick Ross, Executive Director
>The Copyright Alliance
>601 13th St. NW, Suite 250N
>Washington, DC 20005
>www.copyrightalliance.org
>
-----Original Message-----
From: "Nancy Baum Delain, Esq."
To: "Patrick Ross"
Sent: 8/27/07 8:35 AM
Subject: Re: Russia and ROMS

Dear Mr. Ross,

Thanks very much for your email. May I post your response in the blog?

Best regards,
Nancy


From: "Patrick Ross"
Subject: RE: Russia and ROMS
Date: Mon, 27 Aug 2007 08:49:25 -0400
To: "Nancy Baum Delain, Esq."

Yes, please do.

Cheers,

Patrick

Saturday, September 01, 2007

Educator Training in Intellectual Property

We have developed the first in what we hope will be a series of educator training modules.

The two-hour training session deals with copyright fair use in the classroom: what clearly constitutes fair use, what is in the (vast) gray area, and what is clearly infringement. We are marketing the module to individual school districts, the NYS Teachers' Union and other education-related entities.

Future modules are still in the planning stage, but their development is contingent upon the response we receive to our first module.

Nancy

Sunday, August 26, 2007

Russia and Copyright

There's copyright trouble brewing in Russia.

The owner of a music download site called a****mp3.com (sorry, folks, you won't get its full name from me) has been on trial in Russia for copyright infringement. The owner has evidently been charging way less for downloads than the copyright holders think is appropriate; EMI Group Plc, NBC Universal and Time Warner Inc., all music copyright holders, pressed for and got criminal prosecution in Russia of Denis Kvasov, head of the company that owns the site.

Quoting from an article found on CNN's website:

"Kvasov always said he was within the law because the site paid part of its income to ROMS, a Russian organisation which collects and distributes fees for copyright holders.

"The judge [Yekaterina Sharapova] agreed with his defence."


Russian president Vladimir Putin would very much like Russia to join the World Trade Organization (WTO); however the easy and cheap availability of pirated copies of copyrighted materials through Russian sources has been a real stumbling block (WTO countries want better enforcement than Russia traditionally provides). This case has been seen as a test of the Russian copyright system, and the copyright holders feel that the verdict is incorrect; they plan to appeal the verdict.

The site in question has closed down, but its successor site, owned by the same company, has opened up.

And so the world goes 'round....

Nancy

Tuesday, August 21, 2007

FREE Webinar from the USPTO offered 8/23/07, 1 p.m. EDT

From the USPTO's website:

"Clarity Moves Innovation: A USPTO Webinar on the New Rules for Claims and Continuations


"The U.S. Patent and Trademark Office (USPTO) will hold a special webinar on Thursday, August 23, 2007, at 1:00 p.m. EDT on new claims and continuations rules ... that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions. The new rules will be published in the Federal Register August 21 and will be effective on November 1, 2007.


During this live, two-hour webinar, USPTO officials will explain the new rules and answer questions. The presentation and audio for this event will be streamed over the Internet. All participants need is a computer with an Internet connection, sound card, speakers and the ability to view Windows Media presentations."

See the USPTO's website to sign up for the FREE webinar; it's sure to be loaded with good info.

Nancy

Sunday, August 12, 2007

From the US Copyright Office...

The following information is taken directly from the US Copyright Office's website.

"What Is Copyright

"Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

"To reproduce the work in copies or phonorecords;

"To prepare derivative works based upon the work;

"To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

"To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;

"To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and

"In the case of sound recordings*, to perform the work publicly by means of a digital audio transmission.

"In addition, certain authors of works of visual art have the rights of attribution and integrity as described in section 106A of the 1976 Copyright Act. For further information, request Circular 40, Copyright Registration for Works of the Visual Arts.

"It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. Sections 107 through 121 of the 1976 Copyright Act establish limitations on these rights. In some cases, these limitations are specified exemptions from copyright liability. One major limitation is the doctrine of “fair use,” which is given a statutory basis in section 107 of the 1976 Copyright Act. In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions. For further information about the limitations of any of these rights, consult the copyright law or write to the Copyright Office.

"*Note: Sound recordings are defined in the law as “works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.” Common examples include recordings of music, drama, or lectures. A sound recording is not the same as a phonorecord. A phonorecord is the physical object in which works of authorship are embodied. The word “phonorecord” includes cassette tapes, CDs, LPs, 45 r.p.m. disks, as well as other formats."

This information is posted here for your information. Copyright does not attach to government publications.

Nancy

Saturday, August 11, 2007

Delain Law Office, PLLC has become Delain & Liebert, PLLC...and back to Delain Law Office, PLLC

UPDATE: Glenn left this firm on 30 June 2008 to take a "real" job with the Warren County (NY) Public Defender's Office. I wish him well. With his leaving the name of the firm reverted to Delain Law Office, PLLC.

On 1 July 2008, I opened my new offices in Schenectady, NY, in the historic Stockade. The Stockade was one of the first areas settled by the colonists in the 1600s, and you still see houses in this section of town dating from that time.

That's the last time I'm changing the name of this firm.

=======================================================================
Please join me in welcoming new attorney member Glenn B. Liebert, Esq. to Delain Law Office. Glenn's arrival is the occasion for our re-naming the firm: Delain Law Office, PLLC is now renamed Delain & Liebert, PLLC.

Glenn is a 2005 alumnus of Franklin Pierce Law Center with a concentration in intellectual property law, and a 2002 alumnus of the State University of New York at Albany with a major in Computer Science. He is admitted to practice in the state courts in New York, and in the US District Court for the Northern District of New York.

We continue to practice in intellectual property and business areas. Glenn brings us added experience with consumer protection and identity theft issues, which he plans to continue on a limited basis. He plans to focus his practice in the trademark and copyright arenas.

Nancy

Friday, August 10, 2007

From the USPTO...

"USPTO Proposes New Measure to Improve Patent Quality and Reduce Pendency

"The Department of Commerce’s United States Patent and Trademark Office (USPTO) is proposing new rules in the Federal Register that will improve an examiner’s ability to focus the examination process for claims that contain more than one independent and distinct invention.

“We believe such a rule change will lead to a more focused examination process that will effectively promote innovation,” noted Commissioner for Patents John Doll.

"The proposed rules focus on the current practice of listing multiple inventions in the alternative in a single claim. Such “multi-invention alternative” claims are especially prevalent in the pharmaceutical, chemical, and biotechnology fields. The USPTO is proposing rules that would require applicants to identify, with more specificity, the claimed invention to be examined, thus promoting examination quality.

"These proposed rules are in addition to the final rules pertaining to claims and continuations, which are expected to be published in the Federal Register later this month and are part of the USPTO’s ongoing effort to ensure patent quality, foster the examination process, and reduce pendency.

"The USPTO welcomes comments on the proposed rules, as well as further suggestions for changes that would improve the examination of such claims. To be considered, written comments must be received on or before October 9, 2007. No public hearing will be held.

"The proposed rules are available in the Federal Register today (8/10/2007)."

Thursday, August 09, 2007

From the US Copyright Office...

This posting is taken directly from the US Copyright Office's website.

"Improved Copyright Search System to Replace Current Search Systems in Mid August

"In mid August, the Copyright Office will launch a powerful new records search system that accesses more than 20 million digital records of registrations and recorded documents from 1978 to the present. The new system allows searching by title, name, keyword, and registration or document number. Through a command keyword search, elements of any or all fields can be combined to search the records.

"Users can also search by type of work, such as sound recordings, dramas, motion pictures, visual materials, or preregistrations. The search method combines three separate databases that previously permitted only limited searching. The search tool uses Voyager software, the same system used by the Library of Congress Online Catalog."

And I say, It's About Time!

Nancy

PS: They have a tutorial on how to use the new system, too.

Business Forms

I've found that business and IP issues intersect with great regularity, so some information about business law in an IP law blog is only slightly off-topic.

AN OVERVIEW:

DBA is the abbreviation for "Doing Business As." It is a county-based designation in NY. Its taxes are relatively simple. DBAs are the least formal business form -- just run the business in a legal way. However, this business form is just the owner doing business, and accepting for his own personal self all the risks of doing business.

An LLC is an unincorporated entity that is registered with the Department of State. It is a very, very new business form in the law (NY LLC law went into effect in 1994; the earliest LLC law was, I believe, Wyoming, which came into existence in the late 1980s), and the LLC does not cross state lines well; the form is simply too new, and the states do not have uniform LLC laws. If a business owner is planning on doing business across state lines, the LLC, while fashionable, may not be the best selection.

An LLC is taxed like a sole proprietorship if it is a single-member LLC (a "member" is similar to a corporation's "shareholder") and like a partnership if it has 2 or more members. Most states collect an annual franchise tax from the LLC, but the IRS essentially ignores the existence of the LLC as long as there is only one member.

An LLC drops what's called the "corporate veil": the business form separates the owner's personal assets from liabilities that the business incurs as long as the owner complies with proper business practice and as long as owner does not make any personal guarantys to creditors (creditors generally require personal guarantys from new businesses of any form). LLCs require some corporate-type formalities to run.

Partnerships (other than marriage) are not worth considering for an individual, so I omit a discussion of partnership law here; the laws in NY and other states that govern general partnership are absolutely draconian. Very few individuals end up in a general partnership for this reason. Businesses form general partnerships with good legal counsel and a lot of due diligence.

Corporations come in two flavors: the C-corp is what most people think of when they think of a corporation. It is the form that is publicly traded, and it is the more flexible of the two: any legal entity can hold shares and any number of shareholders can hold shares. The price of its flexibility is that it is taxed as a completely separate entity from its owner(s) -- the "double taxation" that you hear about (but the tax rates are dramatically different between the corporation and the individual, so "double" is not necessarily true). S-corporations are taxed as partnerships (that is, the profits and losses of the business are passed through to the individual shareholders and reported on their tax returns in proportion to the number of shares held), but they can have only up to a particular number of natural persons as shareholders (in NY that particular number is 75). Also, an S-corp has to have a darn good reason to have a fiscal year that does not end on 12/31, whereas a C-corp can pick its own fiscal year. S-corp designation requires that a corporation elect the designation on both the federal and state level. All corps are C-corps until they elect S-corp designation. States generally require a franchise tax of all corporations; the feds do not ignore even single-member corporations. Corporations are formal entities and the formalities needed to run them can be complex.

There is rarely a good reason to go out of state to form a small business. By going out of state to form a business, the owner sets up for unnecessarily complex tax issues, for an out-of-state LLC not operating as would one formed in the owner's home state (especially in court), and for liability for lawsuit in the LLC's state of formation.

Business owners -- even sole proprietors -- need an employer ID number (EIN) from the IRS.

Thursday, June 28, 2007

Federal Circuit upholds discipline by the USPTO for a patent attorney associated with Invention Promotion company

From the USPTO's website, 6/28/07:

Recently the United States Court of Appeals for the Federal Circuit (CAFC), affirmed disciplinary action taken by the USPTO against a registered patent attorney, who became involved in the activities of one invention promotion company and represented more than one thousand inventors. This important decision lends critical support to the USPTO's efforts to protect unsuspecting inventors from unscrupulous invention promoters. If you have questions please call Harry Moatz, Director of the Office of Enrollment and Discipline, 571-272-6069. The USPTO urges all independent inventors to read the court's decision. You'll need Adobe Acrobat Reader to view it. It's a free download.

END OF USPTO TEXT

And I, for one, am DELIGHTED to read this!!!!!!!!! Reputable patent attorneys have long complained about the unscrupulous tactics used by these companies to bilk clients out of $thousands.

Wednesday, June 20, 2007

Issued Patent

Patent No. 7,232,519 issued on 19 June 2007 to our client, Philip Bluteau. The patent teaches "A fish tank powerhead holding device ..., the device comprising a first magnetic assembly with a first permanent strong magnet and a non-stick surface adhered to one side, a second magnetic assembly with a second permanent strong magnet that is magnetically attracted to the first magnetic assembly and a non-stick surface adhered to one side, and a commercially available powerhead that is permanently affixed to said first magnetic assembly opposite from said non-stick surface such that the powerhead can be positioned to effectively aerate a fish tank."

Congratulations, Phil! -Nancy

Registered Trademark

Nearly a year after filing the application, the registration for Delain Law Office's logo was registered as a trademark on the Principal Register in the USA. See our website to see the logo.

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From the US Patent & Trademark Office....

The following was taken directly, verbatim, from the US Patent and Trademark Office's official website on 6/20/2007. -Nancy

"U.S. Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas, together with the U.S. Chamber of Commerce and Senator Carl Levin (D-MI), on Monday educated Michigan business people about the growing threats of counterfeiting and piracy and encouraged them to make protecting their intellectual property an integral part of their business plan.

"Under Secretary Dudas noted that small businesses make up 98 percent of all employer firms in Michigan.* In addition, last year, Michigan exported more than $40 billion worth of products.** Dudas said, “Because small businesses are a big part of Michigan’s economy, and growing globally, we want to make sure they understand their options when it comes to protecting their intellectual property assets both in the U.S. and abroad.”

"Detroit business leaders also heard from representatives of the U.S. Chamber of Commerce’s Anti-Counterfeiting and Piracy Initiative, Ford Motor Company, and U.S. Immigration and Customs Enforcement.

"Over the past two years, the USPTO has conducted seminars around the country to educate businesses on how they can protect themselves against counterfeiting and piracy. This year, the agency is working with the U.S. Chamber for a multi-city educational tour. Today’s seminar in Detroit is the second in the series. Upcoming stops include San Antonio, Texas, Seattle, Wash., Portland, Ore. and Burlington, Vt.

"While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they may lack the knowledge and personnel to combat it, and theft of their intellectual property overseas can go undetected.

"The Detroit seminar represents one of the USPTO's many efforts to educate small businesses about IP protection. The USPTO also has a Web site specifically for small businesses that provides information on the risks of counterfeiting and piracy and illustrates how small businesses can mitigate those risks by making IP protection a priority. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness.

"The seminars and Web site are part of a much larger initiative ... called Strategy Targeting Organized Piracy (STOP!). The STOP initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the USPTO maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

"For more information about the U.S. government's efforts to educate American businesses about intellectual property rights, visit www.stopfakes.gov.

*SBA Small Business Profile
**DOC Tradestats Express"

Tuesday, June 12, 2007

The law is changing....

Viacom has filed suit against YouTube.

Evidently, people have been posting pirated movies on YouTube, and this upsets the income stream for Viacom. On 13 March 2007, Viacom filed a copyright infringement suit against YouTube and Google (which owns YouTube), alleging more than 150,000 unauthorized clips of Viacom visual media exist on the YouTube site, and 1.5 billion views of those clips. Viacom seeks a minimum of $1Billion in damages and an injunction to force YouTube to stop or limit further infringement.

Ramifications:

(1) If YouTube wins, the rights of copyright owners will be severely imperiled; the ability of copyright holders to control and profit from their works online will be much, much less.

(2) If Viacom wins, the Digital Millenium Copyright Act's ("DMCA") safe-harbor provision for ISPs goes pretty much out the window, jeopardizing the advent of new, innovative ways to deliver online content.

As a backdrop to this, the Second Circuit Court of Appeals has made rulings recently to broaden protection for copyright holders.

Stay tuned....

Update: The US District Court for the Southern District of New York (where the case was brought) has ruled that no punitive damages will be awarded in the Viacom v. YouTube case. This is as it should be; YouTube is the conduit for the postings of millions and cannot reasonably be held willfully liable for infringing material, especially if the person uploading that material clicks the button that says that yes, absolutely, they have the right to disseminate the material.

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Sunday, May 27, 2007

Download music without paying for it = COPYRIGHT INFRINGEMENT

...but you know that.

If, though, your children download music on your computer, that can cause you problems, too. Kids, for the most part, are remarkably insensitive to copyright infringement and to their parents' wallets. You are responsible for all use of your internet account, whether you know what's going on or not (another reason to monitor your kids' online activities). A few clients of mine have had kids who downloaded over a thousand songs sans payment. The music industry is...um...unhappy with that and generally files suit, but we usually manage to settle the case for more than my client wanted to pay but for a fair price considering the number of illicit downloads and they drop the suit. Those clients' kids are working hard to repay the parents for that one. It's a sharp lesson in copyright rights for everyone involved, but usually the kids don't repeat the offense.

I see a lot of people in that situation; dealing with the music industry's lawyers seems to have become a minor concentration of my copyright practice, and not by my design. Perhaps I'll start advertising the service....

My kid has no expectation of privacy on the internet. I'm always over her shoulder, asking what she's doing, who she's chatting with, etc. She hates it, but hey...that's what moms are for.

Nancy

Saturday, May 26, 2007

Online Patent & Trademark Info in the USA

When I file a patent or a trademark, I invariably do so using the USPatent & Trademark Office's online filing systems. The Office encourages this by giving my clients a break on filing fees because I filed electronically, which is good.

The Trademark filing system is actually quite straightforward; I simply click on the Trademarks link, then click on File Online and select the form I need to file and I'm off and running.

The Patent filing system -- PAIR -- comes in two flavors, private and public. Public PAIR puts on the internet, available for all to see, the prosecution history of all published applications and issued patents. You can view your application in Public PAIR by visiting the Public PAIR portal, clicking on the Public PAIR link and entering at least one of the requested bits of information about the patent or application in one of the appropriate fields and click on SUBMIT.

You can retrieve prosecution history for both patents and trademarks in Public PAIR.

Happy searching!

Nancy

Thursday, May 24, 2007

A Day In The Life...

My life has gotten busy. I'm working on several patents, trademarks and copyrights in various stages of prosecution; I'm still getting a few bankruptcy clients, and (here's the exciting news) I'm buying a bulding into which will go tenants. It's a 4-unit building in Troy, NY, and it's in really quite good shape (needs a little masonry work done, so if anyone knows a good mason in/near Troy, NY...). I didn't broker the deal myself, but I will next time (just paid the dues for a real estate broker's license).

In the IP world, the Federal Circuit Court of Appeals handed down McKesson Information Solutions, Inc. v. Bridge Medical (Docket No. 2006-1517) in May. In this precedential opinion the Court stated "The issues of materiality and intent are fact-driven. With regard to the issue of intent, the law recognizes that deceptive intent is virtually never shown or disproved by direct evidence. Instead, the ultimate fact finding on the issue depends on assessment of all the inferences, favorable and unfavorable, that can be drawn from pertinent evidence. To prevail on appeal, McKesson must demonstrate that the district court's findings of fact are clearly erroneous." This is a clear statement of the standard against which inequitable conduct in patent prosecution is measured, and is much appreciated by this patent attorney.

The Second Circuit Court of Appeals was active in the copyright arena in April, handing down a decision that construes the statute governing copyright in restored works, 17 USC 104A.

In Troll Co. v. Uneeda Doll Co. (Docket No. 05-6487-cv), the Court construes for the first time the revised statute governing copyright in restored works, 17 USC 104A. In the decision, the Court construes the following statute:

(A) [any person who,] with respect to a particular work,
engages in acts, before the source country of that work
becomes an eligible country, which would have violated
section 106 if the restored work had been subject to
copyright protection, and who, after the source country
becomes an eligible country, continues to engage in such
acts;
(B) [any person who,] before the source country of a
particular work becomes an eligible country, makes or
acquires 1 or more copies . . . of that work; or
(C) [any person who,] as the result of the sale or other
disposition of . . . significant assets of a person
described in subparagraph (A) or (B), is a successor,
assignee, or licensee of that person.
17 U.S.C. § 104A(h)(4).

It determines that subsections (A) and (B) make the status of a "reliance party" turn on whether a person took certain actions with respect to a work prior to the date that the source country of that work became an eligible country. And, for purposes of subsections (A) and (B), a source country that was a member of the Berne Convention when the URAA was enacted became an eligible country on the date of the URAA’s enactment, December 8, 1994, NOT on the date of copyright restoration. An owner of a restored copyright may not enforce its copyright against a reliance party without first giving notice, either constructive or actual, of its intent to enforce the copyright.

Until January 1, 1998, an owner of a restored copyright could file a notice of intent to enforce its copyright with the Copyright Office, thereby putting all reliance parties on constructive notice of its intent. Alternatively, at any time, a copyright owner may serve a notice of intent directly on a reliance party. Troll Co. served a notice of intent on Uneeda on October 18, 2005. After receiving actual or constructive notice of intent to enforce, a reliance party must cease making copies of the protected work. However, the reliance party is entitled to a twelve-month grace period in which to sell off its already existing copies.

Because subsection 104A(h)(4)(A) confers reliance party status on a person who “continues” to engage in infringing acts after December 8, 1994, Uneeda’s subsection (A) contention requires us to construe the term “continues,” which is, as far as we are aware, a task courts have not previously undertaken.11 Troll Co. argues that the provision contains a “continuing acts requirement” and that resuming sales after nine or ten years, as Uneeda did, does not satisfy this requirement. Uneeda responds that the language of subsection (A) does not require the infringing activity to be uninterrupted and that the periodic renewal of cyclical exploitation “continues” such exploitation.

Since the language of the statute can support either position, the Court looks to the legislative history of the statute. The Chairman of the House Subcommittee on Intellectual Property and Judicial Administration stated:

"A key to the reliance party status under this provision is
the requirement that the person have continued to engage in
the described conduct. This requirement incorporates the
continuing infringement doctrine and is also relevant to
section 104A(4) concerning statutory damages and attorney’s
fees.[12] Under this doctrine and section 104A, the
defendant must have engaged in an ongoing series of acts.
Cessation of that activity for an appreciable period of time
will deprive one of reliance party status."
140 Cong. Rec. E2263, E2264 (Oct. 8, 1994) (statement of Rep. Hughes).

The Chairman’s reference to statutory damages and attorney’s fees indicates that he understood the “continuing infringement doctrine” as the principle that “infringement ‘commences’ for the purposes of [determining whether infringement commences before a copyright’s registration] when the first act in a series of acts constituting continuing infringement occurs.” Johnson v. Jones, 149 F.3d 494, 506 (6th Cir. 1998).

Courts have held under the remedies for copyright statutes (specifically, 17 USC 412) that a plaintiff cannot recover damages or attorney’s fees for any infringement “commenced” before the effective date of a copyright’s registration. The courts have held, based on the provision’s text, legislative history, and purpose, that a plaintiff may not recover statutory damages and attorney’s fees for infringement occurring after registration if that infringement is part of an ongoing series of infringing acts and the first act occurred before registration. However, the legislative history of section 104A suggests that Congress
understood section 412 to mean that a post-registration act of infringement will not be deemed to have commenced before registration if the infringing activity ceased for an appreciable period of time.

Here, the infringing activity had ceased for approximately 10 years; this, the Court decides, falls squarely into the definition of "an appreciable period of time." Therefore, the claim by Uneeda to be a "reliance party" fails.

Nancy

Wednesday, May 23, 2007

USPTO to Hold Small Business Seminar in Raleigh, NC, 13 June 2007

The USPTO is holding a free conference on counterfeiting and piracy on Wednesday, 13 June 2007 from 9:30 a.m. to 4 p.m. at the McKinnon Center on the campus of North Carolina State University in Raleigh. Speakers include:

* Jon Dudas, Under Secretary of Commerce for Intellectual Property
* Elaine Marshall, North Carolina Secretary of State ,
* Ron Calia, Senior Manager Global Anti-Counterfeiting and Piracy Initiative, U.S. Chamber of Commerce

Counterfeiting and piracy cost the U.S. economy between $200 and $250 billion per year in lost sales. It is responsible for the loss of 750,000 American jobs and poses a real threat to health and safety. The trade in illicit goods steals North Carolina jobs, North Carolina tax dollars, and threatens the lives of North Carolina citizens. Seminar attendees will learn what state and government resources are available to protect brands, how they can work with law enforcement to safeguard intellectual property, how to protect the supply chain here and abroad, and what the USPTO and Chamber are doing to defend American business as a whole.

Other speakers on the agenda include: Brian Monks, Vice President, Anti-Counterfeiting Operations, Underwriters Laboratorie,Christina Garner, Associate Licensing Counsel, NASCAR and Del Richburg, Supervisory Special Agent, Assistant Special Agent in Charge, Charlotte Office, Immigration and Customs Enforcement

There is no charge for the seminar and lunch will be provided. Registration is required.

>> Register now at http://ncsoskb.com (Use REGISTRATION CODE: June 13)

From the USPTO's web page.

Nancy

Saturday, April 07, 2007

USPTO unveils its 5-year strategic plan

You can find the full Plan by clicking here.

The Department of Commerce’s United States Patent and Trademark Office (USPTO) released the agency’s “2007-2012 Strategic Plan,” which lays out goals and objectives to guide the agency in accomplishing its mission of fostering innovation and competitiveness by providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy and delivering intellectual property information worldwide.

The plan builds upon the record-breaking progress the USPTO made during fiscal year 2006 in the areas of quality production, electronic filing and processing, teleworking and hiring.

The Strategic Plan has three complementary strategic goals: (1) optimizing patent quality and timeliness; (2) optimizing trademark quality, and (3) improving intellectual property protection and enforcement domestically and abroad. The plan outlines approaches toward attaining these goals, articulates underlying challenges and opportunities, and identifies steps that can be taken toward implementation. It provides a framework for continuing to make measurable quality improvements, reducing patent application pendency, increasing the percentage of patent applications filed electronically and improving worldwide intellectual property expertise.

The five-year plan also has a management goal of achieving organizational excellence. As part of this goal, the agency will strive to become an employer of choice with a culture of high performance and to enhance organizational communication, prerequisites to achieving the strategic goals focused on the agency’s core mission.

The plan is the outcome of a collaborative process that included input from the public, stakeholders and employees. A draft Strategic Plan was released in September 2006 and comments were solicited. Through public comment, employee focus sessions and the input of the Patent Public Advisory Committee and the Trademark Public Advisory Committee, the plan’s ambitious goals are more clearly stated. Further, the final plan seeks to outline transformational strategies that balance the short-term needs of today’s applicants with strategic changes needed to deal the increasing complexity and numbers of patent applications.

Nancy Delain

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Sunday, April 01, 2007

Copyright Office Appropriations Request

Click here to view the Statement of the United States Copyright Office
before the Subcommittee on Legislative Branch, Committee on Appropriations Fiscal Year 2008 Budget Request.

Nancy Delain, Esq., Delain Law Office, PLLC

Tuesday, March 06, 2007

Inadvertent Filesharing Threatens Personal, Government and Corporate Data

This update to the USPTO's website is worth paying attention to. The full text of the article is:

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has released a report that concludes that the distributors of five popular filesharing programs repeatedly deployed features that they knew or should have known could cause users to share files inadvertently. The report, Filesharing Programs and “Technological Features to Induce Users to Share,” identifies five features in recent versions of five popular filesharing programs that could cause users to inadvertently distribute to others downloaded files or their own proprietary or sensitive files.

“Computer programs that can cause unintended filesharing contribute to copyright infringement, and they threaten the security of personal, corporate, and governmental data,” noted Jon Dudas, under secretary of commerce for intellectual property—the Bush Administration’s point person on copyright policy.

The report shows that distributors of filesharing programs deployed features that could cause inadvertent sharing even after repeated warnings that these features could facilitate identity theft and breaches of personal and national security. For example, in 2003, two Congressional hearings were prompted by research indicating inadvertent sharing could be caused by search-wizard and share-folder features. After the hearings, many distributors adopted a Code of Conduct that prohibited use of these features. Nevertheless, in 2004 and 2005, many of these same distributors kept deploying more aggressive versions of search-wizard or share-folder features. Many distributors also deployed other features, like partial-uninstall and coerced-sharing features, that also had a known or obvious potential to cause inadvertent sharing.

The report also shows that inadvertent sharing has had severe consequences for governments, corporations and individuals. In a 2005 Information Bulletin, the Department of Homeland Security warned that inadvertent filesharing could compromise national security: “There are documented incidents of P2P file sharing where Department of Defense sensitive documents have been found on non-US computers with no protection against hostile intelligence.”

Individuals have also been affected. On November 30, 2006, the Denver District Attorney indicted a gang of identity thieves who had used the program LimeWire “to access names and account information from personal and business accounts across the country, and then use that information to open new bank accounts in the Denver area.” The indictment alleges, “The group’s common goal was to obtain and use methamphetamine as well as steal money and merchandise for personal use.”

“A decade ago, no one would have thought that copyright infringement could threaten personal or national security,” continued Dudas. “Today, that threat is a reality; we need to understand its causes and find solutions.”

Copies of the report have been forwarded to the Department of Justice, the Federal Trade Commission and the National Association of Attorneys General.” A copy of the report can be found here.

Sunday, January 28, 2007

USPTO Begins New Electronic Priority Document Exchange Program

Taken from the USPTO's website:

"On January 16, 2007, the United States Patent and Trademark Office, along with the European Patent Office (EPO), implemented a new service to allow certified copies of patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. The new service, which is free of charge to applicants, is the result of a 2005 agreement between the USPTO and the European Patent Office. Priority document exchange will get underway between the USPTO and the Japan Patent Office (JPO) later this year. Information on how to use the system can be found below.

"Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants' global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service allows the USPTO and EPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

"This electronic exchange of copies of priority documents promotes sharing of information between the intellectual property offices and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems."

Nancy

Saturday, January 13, 2007

1 million electronic trademark applications filed

From the From the USPTO's Website: Donald Junck, an entrepreneur from Sioux Falls, SD, filed the one-millionth electronic trademark application in November 2006 to protect his trademark, BAIT CRAFT, which is used for fishing tackle boxes.

Nancy

Monday, January 08, 2007

The US Copyright Office says...

From the US Copyright Office's Website....


"Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a copy or phonorecord for the first time. “Copies” are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. “Phonorecords” are material objects embodying fixations of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs. Thus, for example, a song (the “work”) can be fixed in sheet music (“copies”) or in phonograph disks (“phonorecords”), or both. If a work is prepared over a period of time, the part of the work that is fixed on a particular date constitutes the created work as of that date."

Nancy

New Web Design

Have you seen our new website design? Many thanks to Melissa Ward of NewWard Development, LLC for putting together such a professional site!

Nancy

Saturday, January 06, 2007

Delain Law Office, PLLC will (I hope) have a registered mark soon

The USPTO has been examining our logo for trademark registration. The notice went up in mid-December that the logo will be published for opposition (no date for publication is yet given). If the mark is unopposed, it will be entered on the principal trademark register in the USA.

I'm excited....

Nancy

Tuesday, January 02, 2007

President Ford

Delain Law Office joins the rest of the country in mourning the death of Former President Gerald Ford.

Nancy

Saturday, December 30, 2006

Copyright Christmas Present

Beginning 1 January, 2007, the profits gained by composers selling their song catalogues will be taxed as CAPITAL GAINS, not as ordinary income. The top tax rate will be 15%.

For more info, click here.

Nancy

Thursday, December 28, 2006

Accelerated Examination of Patent Applications

According to the USPTO's website, the USPTO has established procedures under which the examination of a patent application may be accelerated. Under one of these procedures, the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program. The USPTO is similarly revising the procedures for other petitions to make special, except those based on applicant’s health or age or the PPH pilot program. Other petitions to make special (i.e., based on: manufacture, infringement, environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, and biotechnology applications filed by small entities MPEP § 708.02) will be processed using the revised procedure for accelerated examination. Thus, petitions to make special, except those based on applicant’s health, age, or the PPH pilot program, will be required to comply with the requirements for petitions to make special under the accelerated examination program as set forth in this notice.

The effective date for this change in practice is : 25 August 2006.

Nancy

Sunday, December 24, 2006

Making Files Available for Download ==> Distribution in the sense of copyright infringement

Federal Judge Aiken recently ruled that making a file available for download is "distribution" for purposes of copyright infringement.

As written, US copyright law explicitly says that in order to “distribute” a copyrighted work, an actual, physical exchange of a material object must take place. Various groups urge the courts to define “distribution” as necessitating involving physical objects, even though most would agree that the iTunes Store and other online music services selling purely digital goods engage in the authorized distribution of copyrighted works. Online users may be responsible for what others do, should they make it possible for others to get access to copyrighted materials.In her order, the judge noted that in a copyright infringement case, the plaintiff needs to do two things: demonstrate ownership of the material and show that the party accused of infringement “violated at least one exclusive right granted to copyright holders under 17 U.S.C. § 106.” According to Judge Aiken, making songs available for download fulfills the second requirement.

For more information, click here.

Nancy

Tuesday, December 19, 2006

Law Guru

I occasionally answer questions posted by the general public about intellectual property law, business law and bankruptcy law on the Law Guru website. You can read my answers by clicking here.

Nancy

DELETED POST

THIS POST HAS BEEN DELETED.

NANCY

Monday, December 18, 2006

PTO has new video tour

The USPTO has a new video that they're touting as a visit to the USPTO without leaving your home. The video is entitled "Promoting Innovation: Today's USPTO" and discusses the agency's history, what it does, how it works, and why it exists at all.


You can view the video online by visiting the USPTO's website.


Nancy
IP-law

Thursday, December 14, 2006

Moot Court judge

I'm judging the National Appellate Advocacy Competition Moot Court arguments for the northeastern region in NYC in early March. The question involves the 4th Amendment (that's the one that deals with search & seizure: "The right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated, and no Warrants shall issue, but upon probable cause, supported by Oath or affirmation, and particularly describing the place to be searched, and the persons or things to be seized."), which should be interesting for an IP/business lawyer! The arguments will take place in NYC in early March '07; I'm looking forward to it!

Nancy

Trade Secret Law article

Check out this link for a good update on trade secret law. If the link doesn't load, copy & paste the following into your browser locator:

http://www.ipfrontline.com/depts/article.asp?id=13607&deptid=4

I do heartily recommend ipFrontline as a good IP news filter. As you go to the site, it will pop up with a signup window, so getting on their email list is quite easy.

Nancy Delain

Patent came back with ALL claims accepted on 1st Office Action

A patent I wrote and filed came back recently with all claims accepted. I was frankly astounded.

Nancy

Monday, October 16, 2006

New Patent Filing System

I've filed several applications using the new patent online filing system in the US. The new system is actually almost maneuverable now. I only spent 10-15 minutes on the phone with a USPTO helpdesk person (who are absolute LIFESAVERS) the first time I filed, vs. the 4 hours I spent on the phone with a helpdesk person under the klugey, klunky old online filing mechanism. If anyone is still filing by paper because they're nervous about online filing (having heard the well-deserved horror stories from the old system), there really is very little reason to continue to use paper. The USPTO encourages online filing by reducing the filing fee for patent applications filed online.

Happy patent e-filing!

Nancy

2006 Report on Coordination of IP Enforcement & Protection

The 2006 Report to the President and Congress on Coordination of Intellectual Property Enforcement and Protection is available here.

Nancy

Thursday, June 29, 2006

Accelerated Patent Applications, starting 8/25/2006

This entry is cut and pasted from the Federal Register, 6/26/2006.


[Federal Register: June 26, 2006 (Volume 71, Number 122)]
[Notices]

SUMMARY: The United States Patent and Trademark Office (USPTO) has established procedures under which the examination of a patent application may be accelerated. Under one of these procedures, the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program. The USPTO is revising its procedures for applications made special under the accelerated examination program with the goal of completing examination within twelve months of the filing date of the application. The USPTO is similarly revising the procedures for other petitions to make special, except those based on applicant's health or age or the recently announced Patent Prosecution Highway (PPH) pilot program between the USPTO and the Japan Patent Office.

DATES: Effective Date: The change in practice in this notice applies to petitions to make special filed on or after August 25, 2006.

For the full Federal Register notice, see the official notice.

Nancy