APLF IP Law Bugle

APLF IP Law Bugle: IP Law, IP Business, International IP News & Upcoming APLF Events
November 30th, 2010

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Quick links to this issue’s stories…


Recap Of Day One Of The APLF 2010 Annual Meeting

I attended the Association of Patent Law Firm’s (APLF) Annual Meeting at the Hyatt Regency hotel in Chicago, IL the last week of September. The APLF is currently in it’s 13th year of existence and was formed as a result of IP litigation increasingly going to big firms rather than smaller boutique firms. The organization decided to add discussions on Social Media to this year’s annual meeting agenda. Those that follow me on IPWatchdog know that I write on business related topics including Brand Building, How to Build Credibility and Share Your Expertise, Increasing Website Traffic and the Importance of Social Networking for Small Business. Because of my expertise on Social Media, I was invited to speak on the topic as it pertains to the IP Attorney. I opted to speak on using social media to demonstrate expertise and build credibility. Because so many interesting topics were covered, following is a recap of day one of the event. Subsequently, the second half of the event, including my presentation will constitute part 2 of this series.

While attending the conference, I had the distinct pleasure of meeting some of the most interesting people within the IP community including the President of the APLF, Todd A Van Thomme, a Partner with Price, Heneveld, Cooper, DeWitt & Litton, LLP, Chief Counsel at Invista, David Berdan, Senior Counsel at Whirlpool Corporation, Kirk Goodwin and Principal at Innovate Marketing, Inc. along with others from all around the world including Australia, the UK and Germany. Unfortunately I missed the initial round tables as my plane did not land until after 7:00 am. by the time I got to the location of the conference it was already 8:30 AM, the round tables were ending their discussions and continental breakfast was well underway.

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Using Social Media To Show Expertise And Build Credibility

Those of you who follow IPWatchdog.com and have read my articles, know that my favorite topics to write about are Brand Building, Marketing Strategies, Having a Web Presence and Social Networking. Recently I had the distinct pleasure of speaking at the APLF Annual Meeting in Chicago as an expert on Social Media. Topics on day two of the event included Round Tables on Law Firm Operations Basics and Standing Out From the Ordinary, as well as Value Matrix for IP Work and the Implications of Patent Reform and ended with Social Networking for the IP Lawyer; For Profit or Pleasure? So how can attorneys use Social Media to their benefits? Following are ways in which attorneys and other professionals can show expertise, build credibility and ultimately enhance their overall business strategies using Social Media.

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APLF Webinar – Business Method Patents – Is Canada Leading The Way? Amazon’s One Click Appeal

On October 14, 2010 the Canadian Federal Court opened the door to a modern interpretation of what is a new and useful art or process. In doing so, the Court rejected the Canadian Patent Office’s four-step test for patentable subject matter, categorical exclusion of business methods, and restrictive definition of patentable art. What are the limits of patentable subject matter in Canada under this new decision? Do business methods have broader protection in Canada than in the U.S.?

This webinar will provide an overview of this recent decision and its implications for prosecuting your patent applications in Canada today. Register now to find out how Canada is leading the way in the analysis of patentable subject matter and business method patents.

Presenters:     Russell P. Latham, Ridout & Maybee LLP, Robert H. Wilkes, Ridout & Maybee LLP

Date:                  Wednesday, November 17, 2010
Time:                 12:30 p.m. to 1:30 p.m. Eastern Standard Time
Duration:          1.0 Hour (Dial In Presentation)
         Will be e-mailed in the week of November 15, 2010

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IP Law Updates

Expansion and Extension Of The Green Technology Pilot Program
Effective Date: November 10, 2010.
Duration: The Green Technology Pilot Program will run until December 31, 2011, except that the USPTO will accept only the first 3,000 grantable petitions to make special under the Green Technology Pilot Program in unexamined applications irrespective of the filing date of the application.


For IP Practitioners — Notes and Comments on Improving Practice Skills

Be Clear On How Your Case Is Settled
Frank Plati, Sughrue Mion, PLLC – fplati@sughrue.com

In the present case, the patentee, Roberts, an inventor and founder of Sky WindPower Corporation (”SWPC”), entered into a partnership with Resnick, a venture capitalist and CEO of Baseload Energy, Inc. (”Baseload”), to develop and produce flying wind turbines based on U.S. Patent No. 6,781,254 (”the ‘254 patent”) owned by Roberts. Resnick and Roberts formed a joint venture, Sky Power, LLC, to develop the technology. When their business deal ultimately soured, breach of contract litigation ensued and was subsequently settled in accordance with a Settlement Agreement which is the subject of this case.

The Settlement Agreement, at paragraph 3, included a release provision directed to Resnick, i.e., “the Resnick Parties ,” which stated, inter alia, that Roberts, i.e., “the SWPC Parties ,” were forever released and discharged “from any and all losses, liabilities, claims, expenses, demands and causes of action of every kind and nature … arising or occurring prior to and including the date of this Agreement, … that arise from or relate in any way … [to] any plan or effort to research or develop a flying electric generator (”FEG”).” The Settlement Agreement, at paragraph 4, included an identical release provision directed to the SWPC Parties.

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Administrative Enforcement Of Patents
Stephen Yang, Peksung Intellectual Property – yyong@peksung.com

Administrative enforcement of IP rights has long been a characteristic of the Chinese IP enforcement system.

Following the amendment to the Chinese Patent Law and its implementing regulations, the State Intellectual Property Office (SIPO) published Amendments to the Rules on Administrative Enforcement of Patent Rights (Draft for Comments) on September 1, 2010. The public consultation period closed on September 30, 2010.

The rules elaborate the role and power of administrative bodies to govern enforcement of patent rights, including handling patent infringements, mediation of disputes over patent rights and handling patent passing-off cases. In the draft amendment, the current rules (dating from 2001) were amended to be consistent with the new law and regulations.

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New Requirements At The EPO Regarding Earlier Search Reports
Thomas Leonard, Kilburn & Strode – tleonard@kstrode.co.uk


The EPO recently announced new requirements coming into effect from 1 January 2011 regarding the filing of earlier search results drawn up in connection with applications from which a European application claims priority.

The original EPO notice can be found here:

What is the change?

Current Rule 141 EPC states the EPO may invite an applicant to provide information on prior art taken into consideration in the examination of corresponding applications elsewhere in the world.

The EPO is now amending this rule to specify that, if an applicant has had a search carried out by a national patent office or an International Searching Authority (ISA) in respect of an application from which the EP application claims priority, the results of this search must be provided to the EPO (new Rule 141(1) EPC).

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The Detriment Of Hindsight – Sylvan Browne Suggests A Way To Deal With The Problem Of Hindsight Bias When Assessing The Obviousness Of A Patent Application
Sylvan Browne, FB Rice & Co – sbrowne@fbrice.com.au

One-minute read

So-called hindsight bias can affect the assessment of the obviousness of novel inventions during examination or litigation. This bias can be unfair to patentees or patent applicants in a way that runs contrary to current public policy objectives. This article focuses on the situation in Europe, Australia and the US and suggests attempting to re-order certain aspects of how questions of obviousness are addressed by decision makers. It also proposes one possible change that could be made in litigation involving jury trials and recommends a possible change to search and examining procedures during prosecution.

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Amazon.com: Business Methods Are Patentable In Canada

by J.-F. Journault & A. Mizera

On October 14, 2010, the Federal Court of Canada issued its decision in the Amazon.com case related to its online “one-click” technology. The Federal Court overturned a previous decision by the Commissioner of Patents confirming the analysis of the Patent Appeal Board reviewing the final rejection issued by the Examiner in charge, and stated that Amazon.com’s patent application constitutes statutory subject matter in accordance with the Patent Act.

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Member Firms in the News

Synthesis And Pharmacological Evaluation Of Novel Heteroaromatic Ligands Of The A1 Adenosine Receptor – Gemma Ferguson

  • People at F B rice & Co

    FB Rice & Co is delighted to congratulate Chemistry Trainee Attorney Dr Gemma Ferguson on the conferment of her PhD from Monash University. The title of Gemma’s thesis is ‘Synthesis and Pharmacological Evaluation of Novel Heteroaromatic Ligands of the A1 Adenosine Receptor’.

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The Association Of Patent Law Firms Welcome New Member

  • APLF welcomes a new APLF firm member, de Chalains Patent and Trade Mark Attorney. de Chalains is based in South Africa. You can visit their website at http://www.dechalains.co.za/index.asp.

APLF Members

1 Place Patent Attorneys + Solicitors · Backström & Co. Attorneys · Berken IP S.R.L. · Boyle Fredrickson S.C. · Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. · Castro & Pal Abogados · Cikato Lawyers – Intellectual Property · Cook Alex Ltd. · de Chalains Patent and Trade Mark Attorney · Dumont Bergman, Bider & Co, S.C. · Estudio Colmenares & Associates · FB Rice & Co. · Fernandez Secco & Asociados · Guerra Advogados Associados · Hepworth Browne · Hovey Williams LLP · Kilburn & Strode LLP · Law Office of Noah V. Malgeri · Maiwald Patentanwalts GmbH · Martinez & Moura Barreto · MBM Intellectual Property Law · McAndrews Held & Malloy, Ltd · McDonnell Boehnen Hulbert & Berghoff LLP · Millen, White, Zelano & Branigan P.C. · Ostrolenk Faber LLP · Pakistan Law · Peksung Intellectual Property Ltd. · Price, Heneveld, Cooper, DeWitt & Litton · Ridout & Maybee LLP · Robic, LLP · Rothwell, Figg, Ernst & Manbeck, P.C. · Sughrue Mion, PLLC · Thomas, Kayden, Horstemeyer & Risley, L.L.P. · Trung Thuc JSC · Valadares Law Group LLP