Wednesday Whiskers

Miracles do happen, it seems. Despite several hurdles and a legislative calendar that was drowning in debt-related issues, the long-awaited US patent reform legislation passed the Senate vote on Monday. The Leahy-Smith America Invents Act (AIA) was passed unamended by the US Senate with a 89-9 vote (see previous AmeriKat and IPKat posts here). Once signed into law by President Obama, the bill will introduce several changes to the US patent system including harmonizing its first-to-invent system to a first-to-file system and ending fee diversion. AIA has been criticized by many as being overly burdensome to small independent inventors, will increase the number of provisional applications being made to the USPTO and would allow the Appropriations Committee to unduly control the fees generated by the USPTO. USPTO Director David Kappos heralded the passage of the bill, claiming that it will "...drive down the backlog of patent applications, and expedite the issuance of high quality patents - all without adding a dime to the deficit." Director Kappos proceeded to then walk on water.... Joking aside, the AmeriKat is excited about this new act and will be back on Sunday to report on the fall-out and commentary surrounding its passage.



The Rolls Building is nearing its opening day. For those IP litigators, like this Kat, the new £300 million Rolls Building will soon become a home-away-from-home as the Patents Court moves from the resplendent Royal Courts of Justice to its new home. You needn't spend long in the RCJ chambers and filing offices to hear comments about the new building - a mixture of views mostly punctuated by comments of how small the court rooms are, how some are being dragged across to Fetter Lane kicking and screaming and how no one will know where anything is [cue wandering judges and barristers looking for their lost court rooms, Merpel remarks cattily]. Then there is the elevator problem - only 3 public lifts (i.e. fitting only one clerk with the first set of disclosure bundles for your standard Chancery case - promises of e-filing be damned). The AmeriKat is more worried that, as with many new buildings, the air conditioning system will be out of control and set on a level that only pacing barristers can endure. There are rumors floating around about who will be the first IP case to grace the Rolls Building, but no concrete word until the doors first open this fall. The IPKat says that whoever gets there first should give the rest of us tips about managing the new building - flaws, free wi-fi, and all!


8+3 =11 big problems for HathiTurst, a partnership of research libraries and universities, including the University of Michigan . On Monday, the 11 strong contingent of authors' groups and individual authors including the Authors Guild filed a copyright infringement suit in the Southern District of New York against the libraries and universities claiming that their initiative to digitize millions of books without authorization constituted copyright infringement and posting the books online. The claim also objects to the partnership self-designating works as "orphan works" and thus self-permitting the digitization and use of those works. So far 9.5 million books and journals have already been digitized with around 30% of those works being in the public domain. The twist in the story is that the executive director of the partnership, John Wilkin, stated that the digitized works were provided by Google. IPKat readers will remember that last March, Judge Denny Chin rejected the proposed settlement in the Google Books litigation (more here) in a similar dispute. A hearing is schedule for tomorrow in the Google Books case.


On Tuesday, IPR2, better known as the EU-China Project for the Protection of Intellectual Property Rights, between the European Commission, EPO, OHIM and the Ambassador of the People's Republic of China to the EU formally came to a close. The closing ceremony of IPR2 comes at the end of a four-year 16 million Euro joint project. Under IPR2 European and Chinese officials, judges, legislators, experts and academics implemented technical assistance and training activities across China. The parties have agreed to continue their cooperation [what else would you expect?, says Merpel] Would you like to see the what 4 years and 16 million Euros can get you? Well you can't, at least not yet... But while the database is being built, there is a collection of a hodge-podge of documents from the project here.

Many of the IPKat's beloved readers will be in or journeying to Baveno, Italy for this year's annual MARQUES conference (Kat Jeremy is currently stalking the Italian venue.) Today's MARQUES conference agenda, for those Kats and readers who are not so lucky to travel to Italy this week, is premised on "Reality Checks" - reality check on costs, reality check on trends and reality checks on function. The last check is a topic being discussed after lunch entitled "Reality Function" and is promoted as an "update on legal analysis on the trade mark function." For those attendees whose brain activity does not decrescendo following a hearty pasta and foccacia lunch, please let the Kat know what panel suggest is "the trade mark function" in European trade mark law.

USPTO/AIPLA Roundtable Report: Chinese utility models and design patents

While the AmeriKat had her whiskers in a pile of papers (picture, left) last Monday, the United States Patent & Trademark Office (USPTO) and the American Intellectual Property Law Association (AIPLA) was busy hosting a travelling roundtable discussion on China’s system for the procurement and enforcement of utility model and design patents. The aim of the roundtable was to afford US lawyers, companies and the public understanding about how China’s utility model and design patent system. The AmeriKat and IPKat's good friend, Michael Lin, of Marks & Clerk (Hong Kong) was there reporting on the key issues discussed at the event:

The USPTO's Elaine Wu started off the roundtable, and key note speeches by the USPTO's Dave Kappos and AIPLA's President, David Hill, (picture right) emphasized the growing importance of understanding IP in China via actual discussion with on-the-ground experts vs. the reliance on hearsay. To this end, the AIPLA and USPTO are jointly sponsoring this traveling roundtable discussion program with subsequent events being planned in the US and China.

Microsoft's Director of International IP Policy Mark Cohen laid out the background and framework of Utility Models ("UMs") and Design Patents in China and their alternative as a cheap and fast form of IP protection. Mark also showed some interesting statistics that it is overwhelmingly Chinese entities who are filing and using UMs and Designs Patents. Discussion followed as to the root causes of this, and why relatively few foreign entities apply for Chinese Designs, and particularly UMs. US practitioners are typically unfamiliar with UMs because they are not available in the US, although some other countries (Germany, Japan, etc.) do have them. While many countries have Designs Patents, few foreigners file their Designs Patents in China, as their scope is generally regarded as being quite narrow as dotted-lines (i.e., partial designs) are not allowed.

Elaine chaired the first panel discussion with Thomas Moga (Shook, Hardy & Bacon) (picture, right) explaining his interesting uses for Design Patents in China beyond what is typically allowed in the US. Meanwhile, Toby Mak (Tee & Howe) explained that the subject matter of UMs in China is limited to physical objects whose novel element is related to the shape or construction thereof. Thus, protection of chemical compositions, methods of use, etc. are not allowed via UMs. Toby also discussed the procedure for concurrently filing for both Invention Patents (i.e., US-style Utility Patents) and UMs in China. Toby also explained that by filing for both a UM and an invention patent in China, you can obtain both short-term protection as well as long-term protection; once the invention patent is ready to grant, then the Examiner may ask you to elect to keep either the UM or the Invention patent and abandon the other one in order to avoid double-patenting. IBM's Associate General Counsel for IP, Manny Schecter explained that IBM does not file for such IP in China (or elsewhere) as they are not subject to substantive examination and therefore their enforceability is highly suspect, even when granted. It seems that IBM, for one, simply wishes to have greater assurance that any of its granted patents are actually ultimately enforceable.

Skip Fisher (Perkins Coie) (picture, left) then chaired the panel discussion about enforceability of UMs and Design Patents. Michael Lin (Marks&Clerk, Hong Kong) led off the discussion about enforcement via China-specific administrative routes such as at Customs, local raids, seizures, and at trade shows. Ultimately, Michael believes that UM and Design Patent enforcement is possible in trade fairs, especially for exact copies. However, enforcement via customs and other administrative routes are more difficult than, for example, trade mark enforcement. Ping Gu (Unitalen) discussed the many complicated issues involved with legal enforcement of IP via the Chinese court system. Geoffrey Lin (Hogan Lovells) described his personal involvement with the Chint v. Schneider case which resulted in the largest ever IP judgment in China of 330 Million CNY ( about US $44 Million). Although IP litigation in the courts is increasing and the judges are getting better, evidence collection, forum shopping, local court regulations, political factors, etc. may all greatly affect the result of first-instance litigation. However, the availability of appeals to a higher court may in some ways mitigate these effects. As China has virtually no "discovery" available to plaintiffs, all panelists agreed that the collection of court-acceptable evidence prior to initiating litigation is essential and remains a serious problem in China.

The roundtable concluded with USPTO's Albert Tramposch heading an open discussion with all participants identifying issues (e.g., susceptibility of UMs and Designs Patents for abuse by NPEs, lack of a duty of disclosure, lack of substantive examination before grant, etc.) and discussing potential future actions, law changes, administrative, changes, etc. to address some of the issues. Participants hope that China will pay special attention to legal and administrative transparency and further improve equal treatment under the law.

Overall, it was a highly informative roundtable with excellent questions and observations from both the audience, presenters and panellists.

The AmeriKat thanks Michael for reporting and AIPLA and USPTO for organizing this roundtable. She is often surprised daily about how many UK IP lawyers do not take action in China or are unaware of what is available to them and their clients in China. Does anyone know if the UK IPO has planned or will be planning something similar for the UK audience?

AIPLA-USPTO roundtable here.
Round pool table here.
A famous Round Table here.

A round robin here.

PCT applications fall 2009, Chinese PCT applications soar

International patent filings under the Patent Cooperation Treaty (PCT) fell by 4.5% in 2009 with sharper than average declines experienced by some industrialized countries and growth in a number of East Asian countries, the WIPO announced today. Provisional data indicates that 155,900 international patent applications were filed in 2009 as compared to the nearly 164,000 applications filed in 2008.

The drop-off in Germany and the USA was about 11%, while PCT filings from China increased by nearly 30%. China became the fifth largest PCT user.

The USA maintained its top ranking, filing just under a third of all international applications in 2009 (45,790), followed by Japan (+3.6%, 29,827 applications), Germany (-11.2% or 16,736 applications), South Korea (+2.1%, 8,066 applications), and China (29.7%, 7,946 applications).

The IPKat is now going back to study.

WIPO press release here.

Image by Felipe Navarro, Creative Commons licensed.