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So you want to monitor a patent- August 20, 2004

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So you want to monitor a patent%3F %7C IP News Blog: “So you want to monitor a paten -Submitted by Carey.

35 U.S.C.  The folks at Varchars have come up with a neat little perl hack that allows you to keep track of a patent at the USPTO. Set this up as a cronjob  and you have an automatic and easy way to keep track of applications as they pass through the patent process. Very neat. Thanks to ResearchBuzz for the link.”

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ANDA filing doesn’t constitute Willful patent infringement August 16, 2004

Posted by mais in Drugs, Litigation, Patent, USA.
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Glaxo Group Limited v. Apotex, Inc., 2004 U.S. App. LEXIS 15489 (Fed. Cir., July 27, 2004)
Apotex, Inc. (‘Apotex’) appeals the judgment of the United States District Court for the Northern District of Illinois, which found that Apotex’s filing of an Abbreviated New Drug Application (‘ANDA’) for a generic version of the antibiotic CEFTIN willfully infringed U.S. Patent No. 4,562,181 (the ”181 patent’) and U.S. Patent No. 4,820,833 (the ”833 patent’) owned by Glaxo Group Limited and SmithKline Beecham Corp. (collectively ‘Glaxo’). The Federal Circuit affirmed the district court’s determination that Apotex’s ANDA infringes both the ‘181 and ‘833 patents pursuant to 35 U.S.C. � 271(e)(2), and also affirmed that the patents at issue are not invalid. The Federal Circuit, however, reversed the district court’s finding that Apotex’s ANDA filing constituted willful infringement. The Federal Circuit held that the mere filing of an ANDA cannot constitute an act of willful infringement compensable by attorney’s fees under the Drug Price Competition and Patent Term Restoration Act of 1984, also known as the Hatch-Waxman Act. The Federal Circuit explained that 35 U.S.C. � 271(e)(2) and 35 U.S.C. � 271(e)(4) create only an ‘artificial’ act of infringement for a ‘very limited and technical purpose that relates only to certain drug applications.’ This purpose is to permit patent holders to bring suit against generic companies despite the fact that the generic companies have not yet infringed the patents at issue. The Federal Circuit eloquently wrapped up its analysis by saying: ‘[t]he district court therefore erred in hanging a finding of willfulness on such a special-purpose peg.'”

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WAR FOR DRUGS…….. August 16, 2004

Posted by mais in Drugs, Patent.
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Drug Wars: six lawyers discussing genrics Vs big Pharma drug war
In our roundtable, pharma lawyers dissect the changes in Hatch-Waxman, the costs of patent litigation, and the blurring line between generic and branded drug companies.
IP Law & Business/August 2004 ”

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Profiting from Patents–anyway-whether ethical or …. August 16, 2004

Posted by mais in Patent.
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“Submarine Patents Sunk:
One of the frequent criticisms I hear of the U.S. patent system in particular is the existence of ‘submarine’ patents. This term refers to patents that issue very long after their filing. So a company or organization that has been happily proceeding along a path of commercialization of their product is blind-sided by a patent issuance, the existance of which was secret.
For several reasons, the number of submarine patents is diminishing: the U.S. now has a patent term of 20 years counted from the date of filing, and for the most part, patent applications are published 18 months after filing. Because these changes only took place in 1995 (patent term) and 2000 (publication), a few submarine patents have been lurking stealthily along, grandfathered in under the old rules.
The most prolific user of the old U.S. patent system has to be Jerome Lemelson. Patent applications he filed in the mid-1950s and that were granted between 1978 and 1994 are now being asserted against manufacturers of bar code readers and machine vision systems. While this strategy has netted Lemelson and the Lemelson Foundation as much as $1 billion in royalty payments, the gold mine is being shut down.
A U.S. District Court recently ruled that 14 patents of Lemelson’s are invalid because ‘Lemelson’s delay in securing the asserted patent claims is unexplained and unreasonable’. While this is good news for the manufacturers, it is not the end of the story as the Lemelson Foundation is expected to appeal the decision. In the opinion of yours truly, Lemelson Foundation is going to be sunk for good on this one. In the last few years, the Federal Circuit Appeals Court has not looked favorably on delays initiated by the patent applicant. ”

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Who lost it…. plant breeder or farmer or we August 16, 2004

Posted by mais in Litigation, Patent, USA.
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Navigating the patent maze: Court Decisions: “Schmeiser v Monsanto
By this time, most of you have heard that ‘Monsanto won’ over Percy Schmeiser in the Canadian Supreme Court. Actually, Mr Schmeiser was found to have infringed Monsanto’s patent but no damages were assessed. It was a close decision and a momentous one for two main reasons. Several commentators have written about how genetically-engineered plants are essentially, if not expressly, protectable because of the gene introduced. In another blog entry, I will discuss that issue. For this entry, however, I raise the possibility that the Court has defined ‘use’ of a patented invention in such a way that that there may now be an exemption for basic science research in Canada.
Monsanto Canada Inc v Schmeiser 2004 SCC 34.

In particular, the court defined ‘use’ as utilization with a view to production or advantage. The use then that interferes with the rights granted to the patent owner is infinging. Amazingly, the Court characterized deprivation of their rights when ‘another person, without licence or permission, uses the invention to further a business interest.’
Does this imply that a use that is not commercial or furthering a business interest is non-infringing? Would a research use in the confines of a non-profit or educational institute be non-infringing?
There are several ways that the Canadian Courts can go. For example, the Canadians, like their southern neighbor counterpart court, may say that essentially all uses have a business purpose, even universities who may ‘use’ in furtherance of their business of education and money raising. Or, they may hold that that commercial use is not the only use that can be infringing. The Canadian Supreme Court hints that the latter route is appropriate when they write ‘Even in the absence of commercial exploitation, the patent holder is entitled to protection.”

In Schmeiser’s case, Mr Schmeiser contended that he didn’t use the patented gene, which conferred resistance to roundup, because he didn’t spray the canola crop with the herbicide. But, the court still found ‘use’ of the invention because Mr Schmeiser’s business was growing canola, and he grew canola containing the patented seeds. Furthermore, he had the advantage of the stand-by use, meaning that he could have sprayed Roundup ™ or could have sold the seed to other farmers who didn’t want to pay the fee to Monsanto.

Where does this leave those who may use a patented invention in the context of research? Without clarification of this issue by the Canadian courts, I wouldn’t assume that there is now a research exemption. That said, despite what is likely a huge amount of infringment of patents in university settings, very rarely are universities and scientists there ever stopped from using a patented invention. For more on this subject, I refer you to this article: “Accessing other people’s technology for non-profit researchAJARE.pdf Australian Journal of Agricultural and Resource Economics 46:3 389-416 (September 2002).

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The Invent Blog: Software Patents August 3, 2004

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The Invent Blog: Software Patents: “EU software patents a reality
Via Bill Heinze,

The European Council approved the Software Patents Directive which will now be sent back to the European Parliament for another vote in the Fall where reversing the Council’s vote may be difficult. The Community Patent Regulation, on the other hand, died when Spain demanded all 20 translations of the claims be considered legally binding and ministers would not compromise by leaving the issue for courts to decide.

For still more, see http://zdnet.com.com/2100-1104-5215020.html and http://www.siliconvalley.com/mld/siliconvalley/news/editorial/8695760.htm

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Vote on Software patent directives in EU EurActiv.com Portal – News nr 1507687 August 3, 2004

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Tension grows as Council prepares to vote on software patents directive

Background:On 20 February 2002, the Commission presented a proposal for a Directive on the Patentability of computer-implemented inventions. These are defined as inventions “involving the use of a computer, computer network or other programmable apparatus”.

Currently, patents for computer-implemented inventions are granted by the European Patent Office (EPO), but are not enforceable in all Member States because of diverging legislation. The Commission argues that the directive would provide more certainty for businesses, encouraging them to innovate and profit from their work. At the same time, it said its objective was to avoid stifling competition in the internal market and to favour small businesses.

To achieve this, the Commission argued patents should be awarded only to inventions “which make a ‘technical contribution’- in other words which contribute to the “state of the art” in the technical field concerned”. Computer programmes as such, it said, would not fall under the proposal.

Issues:The Irish presidency has tabled a compromise deal on the software patents directive which is scheduled to be voted on by EU ministers at the 18 May Competitiveness Council. According to the Council press service, Germany (abstaining), Belgium (opposed) and Denmark (unpronounced as of yet) are the only countries who have not accepted the compromise. Because there is so ittle opposition among the Member States, the Irish presidency is considering tabling the text without debate.

But the draft is already stirring much criticism from anti-patent campaigners. They claim that the amendments introduced by Parliament in September last year have been scrapped almost entirely. And MEPs themselves have expressed dismay at the Council’s choices.

If approved by EU ministers, the Irish compromise will have to return to Parliament for a second reading as not all of the MEPs’ amendments were taken on board.

The directive was voted on by Parliament on 24 September 2003 (see EurActiv, 25 September 2003). MEPs introduced numerous amendments, reflecting concerns by critics from diverse backgrounds who claimed the Commission proposal would introduce a US-style regime under which large companies can acquire unlimited software patents to protect them from competition.

MEPs in particular insisted that the directive should not lead to “any drift towards the patentability of unpatentable methods such as trivial procedures and business methods”. To them, the technical contribution referred to in the Commission proposal has to offer an “inventive step” defined as something “new, non-obvious, and susceptible of industrial application”. They recommended applying a test in order to verify this. In addition, they claimed that a mathematical algorithm in itself should not be patentable unless it its used to solve a technical problem.

The Parliament was also wary not to damage provisions of an existing directive (91/250/EEC on the legal protection of computer programmes) under which rights holders are forced to disclose information to ensure interoperability with other applications.

Positions:MEPs from all major political parties have expressed discontent at the Irish presidency compromise for ignoring the Parliament’s position. MEP Arlene MC Carthy (PES, UK), the Parliament’s rapporteur on the dossier, told EurActiv she is not surprised at the Council’s position: “Member States have been heavily lobbied by industry. The Parliament’s vote was clear – we do not want software per se to be patented. We want strict interpretations and criteria for genuine inventions. The Council Common Position is not the final word. The new Parliament will have a second reading and I expect there to be some tough talking and negotiations”.

Speaking to EurActiv, a spokesperson at the Irish Department of Enterprise, Trade and Employment said the compromise merely reflected the position of Member States’ experts at the Council’s Working Party on Intellectual Property (Patents). The spokesperson indicated the second reading in the Parliament would provide another opportunity for MEPs to move away from the Council’s common position.

European Industry Association for Information Systems, Communication Technologies and Consumer Electronics (EICTA) says it is “quite satisfied” with the Irish compromise text. Speaking to EurActiv, it expressed satisfaction at the removal of a proposal from the Luxembourg delegation concerning Article 6a on interoperability. This, EICTA said, would have rendered it “impossible” for European companies to develop and protect innovations that depend on data communications. To EICTA, the Irish compromise would implement the status quo of the European Patents Office “with clarification and tightening”, as adovated by the industry association.

The Foundation for a Free Information Infrastructure (FFII) is leading a campaign against the directive. It says the compromise agreement clinched by the Irish Presidency discards all the Parliament amendments aimed at limiting patentability. It says that the rejection of the Luxembourg delegation’s attempt to ensure interoperability leaves the door open to unlimited patentability of computer programmes, data structures and process descriptions.

Major European companies including Nokia, Philips, Siemens, Ericsson and Daimler Chrysler have issued a joint statement on 13 April 2004. They call for all EU ministers to support the text proposed by the Irish Presidency: “We commend the Irish Presidency for presenting a balanced text which preserves the incentives for European innovation (…) while responding to the European Parliament’s call for limitations to ensure that patentability does not extend into non-technical areas or unduly hinder interoperability in our increasingly networked society,” the statement reads.

Internal Commissioner Frits Bolkestein is strongly opposed to the Parliament’s amendments which he thinks are “unacceptable”. He threatened to withdraw the proposal altogether and go another route: “If I may be blunt (…) the process of renegotiation of the European Patent Convention would not require any contribution from this Parliament,” Bolkestein told MEPs before they voted on the text in September last year.

Next steps:
The EU Council of ministers will vote on the directive on 18 May
The Parliament will examine the text for a second reading after the June elections, probably under the Dutch presidency

Official documents:

EUR-Lex: Proposal for a Directive on the patentability of computer-implemented inventions, COM(2002) 92 final, [FR] [DE] (20 Feb. 2002)
PreLex: Proposal for a Directive on the patentability of computer-implemented inventions [FR] [DE]
Parliament OEIL: Patent law: patentability of computer-implemented inventions [FR]

Parliament: Texts Adopted – European Parliament legislative resolution on the proposal for a directive on the patentability of computer-implemented inventions [FR] [DE] (24 Sept. 2003)
Parliament: Press release – Patentability of computerised inventions [FR] [DE] (24 Sept. 2003)
Parliament: Report on the proposal for a Directive on the patentability of computer-implemented inventions, Arlene MC CARTHY (PES, UK) [FR] [DE] (18 June 2003)
Commission: Proposal for a Directive on the patentability of computer-implemented inventions – frequently asked questions [FR] [DE]
Commission press release: Patents: Commission proposes rules for inventions using software [FR] [DE]
Cordis: Proposal for a Directive on the patentability of computer-implemented inventions
EU Actors’ positions:

Foundation for a Free Information Infrastructure (FFII): Software patents in Europe
FFII: EU Council plans to scrap parliamentary vote without discussion (7 May 2004)
FFII: EU Council 2004/01/29 “Presidency Compromise Proposal” on Software Patents (5 May 2004)
European Industry Association for Information Systems, Communication Technologies and Consumer Electronics (EICTA): Proposal for a Directive on the patentability of computer-implemented Inventions – EICTA Response on the Irish Presidency Consolidated Text (24 Mar. 2004)

EICTA: Industry Calls on Council to Correct Damage Done by the European Parliament — European R&D Will Be Jeopardised If CII Patents Are Eliminated (26 Nov. 2003)
EICTA: Analysis of Amendments adopted by the European Parliament at the First Reading (23 Oct. 2003)

Nokia, Ericsson, Daimler Chryseler & others: Joint statement on the proposed directive on patentability of computer-implemented inventions (13 Apr. 2004)
Campaign for creativity: The Software Patents Directive [FR]
Electronic Frontier Finland: Open Letter by Linus Torvalds and Alan Cox to the European Parliament (21 September 2003)
EuroLinux: Petition for a Software Patent Free Europe
Research in Europe: An Open Letter to the European Parliament Concerning the Proposed Directive on the Patentability of Computer-Implemented Inventions
Research in Europe: A Critique of the Rapporteur’s Explanatory Statement accompanying the JURI Report to the European Parliament on the proposed Directive on the Patentability of Computer-Implemented Inventions

Software Patents in EU August 3, 2004

Posted by mais in Patent, software.
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The Invent Blog: Software Patents: “Software patents in Europe
Arnoud Engelfriet e-mailed me to some links on his site about software patents in Europe:

Examples of granted European business method patents
The patentability of business methods at the European Patent Office
Software patents under the European Patent Convention

Patently Obvious: MBHB Patent Law Blog: Patent Explosion August 3, 2004

Posted by mais in IP/Patent Valuation, Patent Analytics, patent intelligence.
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Patently Obvious: MBHB Patent Law Blog: Patent Explosion: “Aug 02, 2004
Patent Explosion
The past twenty years has seen increadible increases in the number of patents both applied for and issued. In her most recent paper (PDF), Berkeley professor and empirical whiz, Bronwyn Hall, examines patenting data and arrives at some interesting conclusions.
1) Although patenting has increased in most technological fields, the explosive growth is largely accounted for by electrical and computing fields.
2) The explosion is drivin, for the most part, by U.S. firms, with some contribution from Asia and Europe.
3) Patenting has become a critical signal of viability for new entrants in many industries.
Professor Hall’s data shows that in most industries, increases in patenting were drivin by new entrants. However, patenting increases in electrical and computing industries were accomplished by a shift in patenting by industry stalwarts.
The figures reveal the following interesting fact: although the jump in patent applications within the U.S. occurred in all technology classes, when we look by broad industry class, we find that it occurred only in firms that are in the electrical, computing and instruments industries. That is, the increase in chemicals, mechanical and other technologies appears to have been driven by increasing patenting activity by firms that were not traditionally in these industries. This result is consistent with the view that there has been a major strategic shift in patenting in the electrical/computing industries, but not in other industries.
UPDATE: Professor Hall provided a correction to my original interpretation of her results. She interprets her results as showing ‘that patents held by new entrants in the electrical and computing industries became more valuable post-1985 than those”