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10/31/2008 IP News & Blog Round-Up

Posted on Friday, October 31, 2008

  • Your next battery may be organic and environmentally-friendly. - A Taiwanese professor has invented a chlorophyll battery powered by water that contains no toxic substances and extremely cheap to manufacture. ( from Taiwan CNA)
  • If No One Sees It, Is It an Invention? - No, not a warning on early publication... but an article on how an inventor used the power of the Internet--specifically, YouTube--to promote his ideas and a job in the process. ( from NYT)
  • Keep up with the changes in China's Patent Law. - A series of articles detailing and dissecting China's new patent regulations. This week's covers all three type of patents and also infringement issues. (from ChinaBio Today)

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A Powerful Tool for Patent Rights Holders: Border Detention at the European Community

Posted on Wednesday, October 29, 2008

Photo by Karen EliotBy Charl Goussard, NAIP Legal Researcher

Introduction

An increasing number of Asian companies are applying for patents from the EPO. But many patent rights holders (patentees as well as exclusive licensees), while accustomed to US International Trade Commission (ITC) seizure procedure, are unaware of the powerful customs regulations that exist in the European Union. One such regulation is Border Detention.


Border Detention is often a vital part of an intelligent IP business and strategy. The sensational San-Disk case, in which Sisvel (an Italian patentee) effectively blocked all San-Disk MP3 players from being sold or even entering the EU without a Sisvel license, is one example. A recent customs raid at IFA, also prompted by Sisvel, likely caused an untold number of sales contracts for companies like Hyundai and MSI to be lost to competitors, not to mention the public embarrassment.

The Border Detention regulation stems from the European Patent Convention, and is a powerful tool designed to protect the intellectual property rights (IPR's) of European Community members. As a result, the protection it offers patent rights holders should be a major consideration for registering patents with the EPO.

Overview

In order to facilitate and promote trade between member countries, the EU functions as a Customs union. Therefore when importing into the EU, as soon as the goods are cleared by any EU Customs office, they are free to move throughout the EU regardless of national borders. Goods may also be moved between various EU member states and stored without being Customs cleared, although such goods have to be cleared at some point if they are to be traded within the EU.

However, to prevent IPR infringement, EU member states are encouraged to promote cooperation between their respective customs authorities. Hence the introduction of the EPC Border Detention practice, governed by Regulation 1383/2003 EC, which provides for the detention of goods not yet cleared by Customs - the so-called transit regimes. Patent rights holders should thus apply for a Border Detention order against goods which may possibly infringe on their patents, before goods are cleared. This application may be logged at the customs office where the goods are first to enter the EU, where they are stored, or where they are eventually inspected. The patent rights holder need only prove that he/she has the right to the registered patent in the country where the allegedly infringed goods will enter the EU, be in transit, or be cleared. Compared to obtaining a seizure of imported goods from the ITC in the USA, it is much easier to get a border detention order against an alleged infringer within the EU (see fig. 1).


Fig. 1 Differences in Procedure between US ITC Seizure & EC Border Detention
US ITC SeizureEC Border Detention
Legal proceedings before the ITC resulting in a judgment before EXCLUSION ORDERAdministrative procedure to obtain Border Detention order - thereafter litigation and judgment
Administrative Judge decides on infringement and validity of patentNo administrative decision as to the infringement or validity of the patent
Applicant needs to prove that domestic industry will be harmed by infringing goodsNo requirement to prove harm to domestic industry
Appeal possible - Court of Appeals Federal CircuitNo appeal - administrative procedure
Only foreign produced products may be excludedDetention order available to prohibit both import or export of infringing goods


Ultimately, Border Detention is a particularly powerful tool in the European Union (EU). It is advisable for the patentee to seek patent protection in countries where the infringing products are likely to enter the EU or in the countries where those products will be cleared.

Procedure

    1. APPLICATION PHASE
Firstly, in order to successfully apply for a detention of infringing products, the patent rights holder will have to supply the relevant Customs authority with the following facts:
    • characteristics of the infringing products,
    • origin of infringing products,
    • expected time and port of arrival in the EU,
    • possible distribution routes within the EU, and
    • proof of ownership or an exclusive license of the infringed patent.

No technical infringement details are required in the request to the Customs authorities ( i.e. The patent rights holder does not have to prove infringement).
Regulation 1383/2003 makes provision for ex-officio inspection and detention of goods by the Customs officials, but due to the technical complexity of patent cases, it is improbable that Customs officials will search for alleged patent infringements without patent rights holder’s instructions.

    2. CUSTOMS REVIEW: BORDER DETENTION ORDERED
Next, the Customs authority will consider the documentation, and usually grant the patent rights holder’s request within a few weeks and issue a detention order for the goods.

    3. GOODS DETAINED BY CUSTOMS
The next step involves detaining the goods: Once the suspect goods have been located at the Customs office, the detention order will be attached. The Customs officials will then inform the patent rights holder of such detention. Patent rights holders are allowed to inspect the goods and to take samples for technical investigation. In addition, Customs officials will supply patent rights holders with the name and address of the consignee of the goods.

    4. APPLICANT FILES SUIT
From the start of the detention, the patent rights holder will have 10 working days to file suit against the infringer. The national law of the country where the goods are detained will also apply for the infringement litigation. If an infringement suit is not filed within the given time, the detention order will be lifted and the goods will be cleared.

The detention order will be valid until the outcome of the patent litigation. The detained goods will then be disposed of as ordered by the national court.

Goods may however be released by Customs upon payment of security by the owner of the goods. Nevertheless, parties more than often reach settlements before courts adjudicate the matters.


Border Detention Procedure
Step 1.Step 2.Step 3.Step 4.
ApplicationCustoms ReviewDetentionLitigation
• Applicant supplies Customs with info on products• Customs receive info from applicant• Goods located & order attached• Applicant files suit at National level
• Proves ownership of patent• Border Detention ordered within two weeks• Customs informs applicant / consignee• File suit in country or countries who granted BD orders


• Applicant may inspect & retain samples of detained goods


• 10 DAY period
ADMINISTRATIVE PROCEDUREJUDICIAL PROCEDURE
Preparation phase: goods not attachedGoods attached: infringement must be proved


*Goods may be released by customs upon payment of a security by the proprietor of the goods


Practical Advice: Apply for patents in the Netherlands

For patent rights holders, a valuable venue for border detention orders is the Netherlands. Both Rotterdam harbor and Schiphol airport are major ports for the EU. Furthermore, the Dutch Customs officials are well experienced and highly effective in granting border detentions.

To add to this, the Netherlands have a sophisticated patent court in The Hague. Due to the procedural rules and the court’s renowned productivity, a ruling on patent infringement in the court of first instance may be handed down within only 12 months.

Holders of Dutch patent rights are thus guaranteed of an experienced team of Customs officials, swift and efficient border detentions against infringers, and a relatively quick infringement litigation process.


Conclusion

Border Detention in EU countries is a cost effective and a powerful tool available to patent rights holders. Along with market intelligence of issues such as competitors’ distribution channels, it can be very effective in keeping them at bay by obstructing infringing products from entering or leaving the EU. Therefore IP strategists should work closely with all members of management to fully utilize Border Detention for their company's benefit.


Relevant Links:
EPC Regulation 1383/2003 (pdf)

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10/24/2008 IP News & Blog Round-Up

Posted on Friday, October 24, 2008

  • Protecting trademarks around the globe. - Directed at US businesses, this article lists out some basic steps on how to begin protecting trademarks globally. Most important to note: trademark applications in China may take up to 3+ years, so the results may not be immediate, but as a first-to-file system, it is still best to take quick action. (from China Law Blog)
  • Despite being a part of China, with regards to IPR, Hong Kong is very different. - For one, all IPR (with the exception of copyright) must be registered separately in China and HK. Additionally, in HK legal proceedings may be conducted in English, compared to Chinese-only for China. More can be found in this article by Danny Friedman of IP Dragon.
  • In the US 1 out of every 3 companies will be sued for IP infringement. - Compare this with only 21% of companies having initiated an infringement suit. Also of note, 52% of tech firms and manufacturers have been sued in the past three years. A report on litigation trends provides an insightful look into the state of IP infringement. Download the study (registration required) here.
  • Who has the spirit of innovation? - Many companies do, according to their CEOs and marketing companies. But for the real innovators, listen to Businessweek, who, each week from now until the end of 2008 will profile a new individual who truly embodies innovation. (from Businessweek)

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An Index of IPR Holders - Part II: The Index

By Dean Tan
Translated by Jeffrey Chang

The IPR Holders listed in this index are categorized by the following technologies:
    1. VIDEO COMPRESSION / CODEC / BROADCASTING STANDARDS
    2. SPEECH AND AUDIO CODECS / COMPRESSION
    3. WIRELESS COMMUNICATION STANDARDS
    4. DIGITAL TV/HOME ENTERTAINMENT
    5. OPTICAL STORAGE MEDIA - DVD/ HD DVD/ Blue-Ray Disc/ CD
    6. RFID
    7. BROAD RANGE OF IT-RELATED TECHNOLOGIES
    8. INTERNET BROADCAST MEDIA
    9. DIGITAL RIGHTS MANAGEMENT
    10. SEMICONDUCTOR MANUFACTURING
    11. INTEGRATED CIRCUIT/ ELECTRONICS MANUFACTURING
    12. TELECOMMUNICATIONS
    13. INTERNET VIDEO STREAMING
    14. PHARMACEUTICAL / LIFE SCIENCE / GENOMICS
    15. NANOTECHNOLOGY – ADVANCED MATERIALS
    16. CHEMICAL/PETROCHEMICAL
    17. BROAD RANGE OF VARIOUS TECHNOLOGIES


The 59 IPR Holders indexed here are further classified into types:
    Patent Pools: 1, 2, 3, 5, 6, 7, 11, 13, 14, 16, 17, 19, 21, 25, 34, 35, 36, 41, 43, 46, 54, 58, 59
    Patent Holding Companies: 4, 12, 31, 40, 49, 50, 51, 52, 53, 56, 57
    Large Enterprises: 8, 9, 10, 15, 18, 20, 22, 23, 24, 26, 28, 29, 30, 32, 33, 38, 39, 42, 44, 45, 47, 48, 55
    Individual Inventors: 27, 37



1. VIDEO COMPRESSION / CODEC / BROADCASTING STANDARDS Back to Top
    1. MPEG LA
Patents on: MPEG-2, ATSC, AVC/H.264, VC-1, MPEG-4 VISUAL, 1394; in-development technologies such as: Blue Ray Disc, DRM.

    2. Sisvel
Patents on telcom technologies, including: MPEG audio, TOP teletext, DVB-T, WSS; in-development technologies such as: DVB-H, CDMA 2000, DMP, Digital Media Project.

    3. Audio Video Coding Standard Workgroup of China
A Mainland Chinese organization

    4. DivX
Patents on high-definition digital media format technologies for PCs, mobile devices and televisions, including: high-definition DivX codec, DivX player, h.264.


2. SPEECH AND AUDIO CODECS / COMPRESSION Back to Top
    5. Sipro Lab Telecom
Patents on telcom technologies, including: G.729, G.723.1, G.729.1, G.711.1; in-development technologies such as: ITU-T G.729.1, ITU-T G.729.1.

    6. VoiceAge
Patents on speech and audio compression technologies, including: AMR (Adaptive Multi-Rate), G.722.2, AMR-WB+ (3GPP), G.729; G.723.1, ACELP®.net, VMR-WB, EVRC, etc....

    7. Thomson
Patents on MP3 encoding/decoding/software/broadcasting/streaming, including: MPEG-1/MPEG-2 Layer 3 (mp3), mp3PRO, mp3surround.

    8. Dolby Laboratories
Patents on lossy audio compression, including: Dolby® Digital (AC-3), Dolby® Digital Plus, Dolby® TrueHD, Dolby® Digital Live, etc....


3. WIRELESS COMMUNICATION STANDARDS Back to Top
    9. Qualcomm
Patents on an extremely broad range of wireless technologies, including: cdmaOne, CDMA2000, WCDMA, CDMA TDD, GPRS/EDGE, OFDMA, microprocessors for commercial wireless devices, encryption technology, mobile OFDMA technology, Mobile Multicast Media Technologies, Interferometric Modulation (IMOD) display technology, etc….

    10. Ericsson
Patents on a broad range of mobile and broadband Internet technologies, including: 3GPP IMS (IP Multimedia Subsystem), GSM/GPRS, TD-SCDMA, WCDMA/HSPA, cdma2000, MBMS (Multimedia Broadcast Multicast Service), DVB-H (Digital Video Broadcasting - Handheld), etc....

    11. Open Patent Alliance
Patents on wireless, in-development technologies such as: WiMAX, IEEE 802.16e.

    12. Wi-Lan
Patents on broadband wireless technologies, including: CDMA, DOCSIS, DSL, Wi-Fi, WiMAX (4G) – IEEE 802.16, V-chip.

    13. NGMN
Patents on broadband wireless technologies, including: Next Generation Mobile Networks.

    14. 3G Licensing Limited
Patents on 3G technologies, including: W-CDMA related products.

    15. Interdigital
Patents on a broad range of wireless communication technologies, including: dual mode modem technology with high-performance HSDPA and HSUPA, 2G baseband solution, 3G baseband solution, dual mode baseband ASIC, TDMA and CDMA wireless systems, etc....

    16. Variety of Wireless Companies
Patents on next generation wireless networking, in-development technologies, such as: Long-Term Evolution (LTE) technology.


4. DIGITAL TV/HOME ENTERTAINMENT Back to Top
    17. United License for Digital Age
Patents on Digital TV Tuner/electronic program guides, including: Association of Radio Industries and Business (Arib) Standards.

    18. Macrovision Solutions
Patents on Digital Home Entertainment Protection/Enhancement/Distribution/Management, including: Interactive Program Guides (IPGs), ACP technology (copy protection).


5. OPTICAL STORAGE MEDIA - DVD/ HD DVD/ Blue-Ray Disc/ CD Back to Top
    19. DVD6C Licensing Agency
Patents on DVD hardware/software technologies, including: DVD-ROM, DVD-Video, DVD-Audio, DVD-R, DVD-RAM, DVD-RW, DVD Video Recording, +R/+RW Discs.

    20. Philips
Patents on a broad range of technologies, including: Mp3, AVC/H.264, MPEG-2, MPEG-4 Audio, UMTS, VC1, Blue-Ray Disc Player, Blue-Ray Disc Recordable Disc, CD Disc, CD Player, CD-RW Disc, DVD, HD DVD, etc….


6. RFID Back to Top
    21. RFID Consortium
Patents on RFID reader and label products (working with Via Licensing), and in-development technologies such as: UHF RFID.


7. BROAD RANGE OF IT-RELATED TECHNOLOGIES Back to Top
    22. Microsoft IP Licensing
Patents on a broad range of IT-related technologies, including: algorithms & theories, hardware development, human-computer interaction, machine learning, adaptation and intelligence, multimedia and graphics, security and cryptography, social computing, system, architecture, mobility and networking, information search and retrieval.


8. INTERNET BROADCAST MEDIA Back to Top
    23. Microsoft Windows Media Licensing
Patents on Windows Media Related Products and Services, including: Windows media DRM, PlaysForSure-verified, Windows Media Technologies for Consumer Electronic Devices, windows media audio decoder and encoder, Windows Media Encoder, etc….


9. DIGITAL RIGHTS MANAGEMENT Back to Top
    24. Intertrust Technologies
Patents on DRM and Trusted Computing technologies, including : Marlin, OMA DRM.


10. SEMICONDUCTOR MANUFACTURING Back to Top
    25. SOI Industry Consortium
Patents on silicon-on insulator (SOI) innovation in Semiconductor Manufacturing.

    26. Mosaid Technologies
Patents on semiconductor and telecom technologies, including: Wireless technology, Pseudo-SRAM, DRAM, SDRAM, Multi-level DRAM, Computational memory and graphics, Embedded DRAM, Networking.

    27. Gertrude F. Neumark
Patents on fundamental low resistivity semiconductor doping methods; able to make high spectral range LEDs, such as blue and green, commercially feasible.

    28. Freescale Semiconductor
Patents on a wide variety of IC/Semiconductor technologie; Working with IBM on CMOS and SOI, low-power and high-performance technologies; over 5500 patent families.


11. INTEGRATED CIRCUIT/ ELECTRONICS MANUFACTURING Back to Top
    29. Tessera
Patents on semiconductor packaging, interconnect and consumer optics technologies, including: CSP, µPILR Interconnect Platform, MCP, Wafer-Level Camera, Wafer Level Packaging (WLP), Micro-Optic Fabrication, Camera Lens Focusing, OptiML™ UFL solution, OptiML™ Zoom solution.

    30. Rambus
Patents on a broad range of technologies in Chip Interfaces, System Design, and Packaging, including: logic and controller interfaces, memory architecture, high-speed parallel and serial links, low-power signaling technologies, XDR DRAM device for HDTV, and others.

    31. Alliacense
Patents on a broad range of fundamental patents in microprocessor, Digital Signal Processor, embedded processors, and System-on-Chip; logic circuits; and flash read/write technology, including software, firmware, hardware, and mechanical designs, including: Moore Microprocessor Patent™, CORE Flash™, Fast Logic™, multicore processors, flash media storage, microprocessor architecture, high-speed logic circuits.

    32. ARM
Provides turnkey solutions in various licensing options such as foundry license, implementation license, architecture license, etc.., including: 32-bit embedded RISC microprocessors - microprocessor architecture (turnkey), system-on-chip.


12. TELECOMMUNICATIONS Back to Top
    33. Alcatel-Lucent
Over 25,000 active patents and patents on a broad range of telecommunication technologies, including: multimedia and convergent services and applications, new service delivery architectures and platforms, wireless and wireline, broadband access, packet and optical networking and transport, network security, enterprise networking and communication services, fundamental research in nanotechnology, algorithmic, and computer sciences.

    34. Cablelabs
Non-profit R&D consortium with patents in cable telecommunications technologies, including: DOCSIS® modems technology, PacketCable-compliant products, DFAST for UDCP, VOD metadata technology.

    35. S2 Licensing
Patents on Digital satellite transmission specification, including: DVB-S2.

    36. Allied Security Trust
Patents on a broad range of IT-related and telecommunications technologies

    37. Ronald A. Katz
Patents on inventions related to toll free numbers, automated attendant, interactive call processing services, automated call distribution, voice response unit, computer telephone integration and speech recognition.

    38. Aware
Patents on DSL technologies used in CO and CPE applications, including: DSL chip set, VDSL2, ADSL+, ADSL2, ADSL.

    39. Nokia Intellisync
Patents on communication data synchronization infrastructures, including : Intellisync PIM Platform, mobility infrastructure and synchronization platform, Intellisync Mobile Suite Platform.


13. INTERNET VIDEO STREAMING Back to Top
    40. Burst
Patents on video and audio delivery software for IP networks


14. PHARMACEUTICAL / LIFE SCIENCE / GENOMICS Back to Top
    41. MSF Campaign for Access to Essential Medicines
Patents on AIDS medicine, antiretroviral drugs.

    42. GE Life Sciences
Patents on cellular biology applications for visualizing proteins within living cells without the need for chemical staining, including: Green fluorescent Proteins (GFPs), Screening & lead profiling for cellular assays, Track proteins in living cells, Functional genomics.

    43. Utek
Patents on a very broad range of life sciences technologies.


15. NANOTECHNOLOGY – ADVANCED MATERIALS Back to Top
    44. Unidym
Patents on mass production of carbon nanotubes, including: compostion of matter for high-purity CNTs, derivatized CNTs, electrical conductors containing CNTs, CNT ropes, CNT composites, CNT dispersions, CNT arrays and CNT fibers, CNT Synthesis, post-synthesis treatment of CNTs, modification and manipulation of CNTs, Articles of Manufacture for CNT-containing products, etc....

    45. Dendritic Nanotechnologies
Patents on manufacturing precise nanostructures having high surface area to volume ratio, including: Priostar dendrimers.

    46. Geron
Patents on animal cloning technologies, including: nuclear transfer cloning technology.


16. CHEMICAL/PETROCHEMICAL Back to Top
    47. Dow Chemical
Patents on petrochemical technologies, including: Polypropylene, Ethylene Oxide/Glycol, Low Pressure Oxo, purified terephthalic acid, Ceramics, lasma, and others.

    48. Exxon Mobil
Patents on petrochemical technologies, including: Selective Cracking Optimum Recovery (SCORE) ethylene process, aromatics production, zeolite catalysts, steam cracking technology, furnace technology, SCORE ethylene process, low density polyethylene technology, polypropylene technology.


17. BROAD RANGE OF VARIOUS TECHNOLOGIES Back to Top
    49. Industrial Technology Research Institute
Main goal is to help technology companies from Taiwan to compete globally. Patents on: Communication & Optoelectronics, Precision Machinery and MEMS, Materials and Chemical Engineering, Biomedical Technology, Sustainable Development, Nanotechnology.

    50. Massachusetts Institute of Technology
Patents on: RNAi (Tuschl Patents), Optical Communications, Computer Security Software Technology, Software Technology, Reagents & Materials, and others.

    51. University of Texas at Austin
Patents on: computing technologies, life sciences, nanotechnologies, physical sciences, and 211 other titles.

    52. Stanford University
Patents in the life sciences industry: agriculture, computer, diagnostic, genomics, healthcare; physical science industry: chemical, communications, computer, internet, material, MEMS, nanotechnology, photonics, semiconductor, recombinant DNA cloning, chimeric receptors, fluorescent conjugates for analysis of molecules, functional antigen-binding proteins, fiber optic amplifier, FM sound synthesis, and more. http://www.iphandbook.org/handbook/ch17/p13/

    53. University of California
Patents in: Biotechnology, Chemicals, Computer Hardware, Energy, Advanced materials, Pharmaceuticals, Photonics, Computer Software, Telecommunications & Internet, Transportation, and more.

    54. Via Licensing
Patents on multimedia distribution and broadcasting, including: IEEE 802.11, Multimedia Home Platform, MPEG-2 AAC, MPEG-4 Audio, OpenCable Applications Platform (OCAP), TV-Anytime TVA-1; in-development technologies such as: Agora C, UHF-RFID, Digital Radio Mondiale, IEEE 802.11 Networking, IEEE 802.16 Networking, MPEG-4 Audio, Near Field Communication.

    55. IBM
Patents on a broad range of IT technologies, including: Display, Network Computing, Microelectronics, Storage, Software, Server.

    56. Acacia Technologies
Over 97 patent portfolios on a broad range of technologies, including: semiconductor, MEMS, audio/video, computer, database, DRAM, image processing, flash memory, microprocessor, peer to peer communications, pointing device, projector, and more.

    57. Federal Laboratory Consortium for Technology Transfer
Patents on a broad range of technologies, including: advanced scientific computing, basic energy, biological science, environmental research, fusion energy, nuclear physics, vehicular propulsion, sensors, aeronautical systems, microfludics, nanoelectronic, hydrogen-from-coal, clean coal, oil and natural gas, gas storage technology, and more.

    58. Spark IP
Patents on a broad range of technologies with over 8900+ technologies for licensing.

    59. Exploit-IP
Patents on a very broad range of technologies ; supported by the Singapore Ministry of Trade & Industry

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An Index of IPR Holders - Part I: Introduction

Posted on Thursday, October 23, 2008

By Dean Tan
Translated by Jeffrey Chang
Original article available here (Chinese)

In today's high tech industries, so-called "patent pools" or "patent holding entities" are becoming increasingly common. As these types of intellectual property rights (IPR) holders grow in both number and size, they have also begun developing and commercializing their patent collections, thereby growing in influence as well. Consequently, these intellectual property holdings have not only encouraged the rapid development of high-tech industries and other emerging technologies, but also become a subject IP professionals cannot ignore.

To help our reader's avoid unintentional infringement of patents, or just to provide a single, convenient reference resource for important patent information, this article has collected and listed below an extensive set of links to major IPR holders in high-tech and other advanced technology industries. The links are classified as such: general and wireless communications/information technology, Internet (including multi-media broadcasting network), digital TV/home entertainment, optical storage media (including Blu-ray Disc), mass communication, semiconductor processes, biotechnology/genomics technology, integrated circuit manufacturing, nanotechnology and other emerging technologies.


IPR Holders in the Index

Here we will briefly introduce the types of IPR holders who comprise the index:

Patent pools are usually a consortium of patent holders who have brought together or cross-licensed their patents in order to create a single large "pool" that can generate considerable synergies. A potential licensee would therefore need only deal with a single transaction, yet obtain the right to use the technologies from multiple patent holders.

A licensing transaction like the one above possesses more reasonable, transparent, equitable and user-friendly conditions, and as a result has largely replaced the traditional approach of negotiating a separate patent license with each rights holder. Another advantage is that members of the patent pool have mutually agreed to allow the use of each other's patents without the need for licensing fees.

Another type of IPR holder is a "Patent Holding Company or Entity", usually a company set-up by a single large enterprise or research institution to consolidate and administer a large number of related patents. The collection will usually create significant synergies. As with patent pools, potential licensees will only need deal with a single transaction for the right to use the technologies legally.

In addition to patent pools and patent holding companies, another type of IPR holder listed is the large multinational technology company that focuses on "high quality" R&D , and who as accumulated a large patent portfolio as a result. Usually since these companies have little interest in commercializing these technologies, they are happy to bundle the patents and license them out for development by others.

Lastly, the index includes a small number of individual inventors who may not hold many patents, but the ones they do hold are important and are essential patents.


Essential Patents & Complementary Patents

Whether facing patent pools, patent holding entities, or an international corporation with a huge patent portfolio, a patent licensee must research in advance what essential or complementary patents reside in these entities' portfolios. Through this way can a licensee can then legally acquire and utilize the appropriate patent rights.

What defines an "essential patent"? According to the European Telecommunications Standards Institute (ETSI), an essential patent is:
an IPR which has been included within a standard and where it would be impossible to implement the standard without making use of this IPR. The only way to avoid the violation of this IPR in respect of the implementation of the standard is therefore to request a license from the owner.
What defines a "complementary patent"? When the claims of two patents (or more) cover the same areas, and utilizing the technologies of one cannot be done without utilizing the technologies of the other, these are called complementary patents.

Here we have elaborated on essential and complementary patents in order to remind those engaged in research that, in addition to concentrating on creating the best features for the product, to also keep a longer-term perspective. When collecting information to design-around patents, also consider the development of future products that may rely on the technology and the potential for complementary patents. Doing this will allow licensees to easily and effectively utilize the patent and its technologies.


Continue to Part II--the Index >

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10/17/2008 IP News & Blog Round-Up

Posted on Friday, October 17, 2008

  • Is Google Adsense financing trademark infringement? - A lawsuit claims Google provides means for "typo-squatters" to make money on infringed trademarks. A copy of the case can be found here. (from Wired)
  • Sony-Ericsson's China Trademark headaches. - If you think protecting a trademark is hard enough with typo-squatters, wait until Chinese character trademarks come into play.... (from IPKat)
  • How has the financial economic crisis affected patent litigation? - A report released by Fulbright & Jaworski, here (registration required) suggest companies litigate more in search of alternate revenue streams when times are bad. (from Patent Prospector)

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TIPO Announces First Certified Patent Attorneys

Posted on Wednesday, October 15, 2008

Photo provided by TIPO
The Taiwan Intellectual Property Office announced on Oct. 13th that 47 candidates have successfully passed the Taiwan Patent Attorney Exam Exemption course.

The course was open to Taiwan patent agents who met certain criteria in both experience and qualifications, and desired to obtain formal certification as a Taiwan Patent Attorney.

In the Taiwan legal system, the Patent Attorney title will supersede the Patent Agent title, but does not qualify the holder of the certificate as a lawyer as commonly understood in the US or other legal systems.

The title was created as part of the Taiwanese Patent Attorney Act, which went into effect in January 2008. The Act aims to increase the level of professionalism and quality of service and applications. The Act also requires the formation of a Taiwan Patent Attorney Association, which will become a vital participant in shaping the future of the Taiwan IP industry.

Nearly 100 patent agents registered for only 50 open spots, although another five exemption courses will be offered within the next three years. The first course ran from August 15th to September 20th, culminating in a 7-hour exam. Registration for the next course will open November 3rd.

Those who did not qualify for the exemption course may obtain Patent Attorney qualification by taking and passing the Patent Attorney Exam, the first of which was held on August 23rd.

The original press release is available here (Chinese).

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10/10/2008 IP News & Blog Round-Up

Posted on Friday, October 10, 2008

  • A checklist on protecting your IP in China. - Some fundamental, but often overlooked steps that any company looking to operate in China must consider. (from MIT Sloan Management Review)
  • Take Taiwan off the Special Watch list! - Progress in enforcing IPR has spurred the American Chamber of Commerce in Taiwan to request Taiwan be removed from the Special 301 Watch list. The benefits to Taiwan include official recognition as a better IP environment for investment. The letter can be found here. (from IP Dragon)
  • Opportunities are rife for those looking to pick up IP cheaply. - The current financial (economic) crisis is bound to make tons of patents available in the market. Could this mean a renaissance for the patent troll NPE? (from IAM)
  • State of the Patent System from a Judge's viewpoint. - Court of Appeals for the Federal Circuit Judge Alan D. Lourie's insightful speech on the patent system, including suggestions on approaching the court. The transcript is available here. (from Patently-O)

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10/03/2008 IP News & Blog Round-Up

Posted on Friday, October 3, 2008

  • Are patent trolls making their way across the sea? - An infringement suit in Germany involving cell phone giant Nokia and a "non-practicing entity" may become the first of many. (from Law.com)
  • Five new inductees to the IP Hall of Fame - "The IP Hall of Fame honours those who have made an outstanding contribution to the development of intellectual property law and practice." Keep eye on the website for biographies of this year's inductees.
  • The Ten Commandments of IP Financing - Advice every inventor (or employee) should consider when looking for financing to help make an invention a market reality. (from WIPO Magazine)

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