NAIP Patent Blog

• 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)

• ...in 2009: Chinese character top-level domains. - Prepare to add ".中国" to a domain name portfolio that already probably consists of .com, net, .org, .eu... and so on.

• 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)

The Taiwan Intellectual Property Office announced on Oct. 13^th 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 15^th to September 20^th, culminating in a 7-hour exam. Registration for the next course will open November 3^rd.

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 23^rd.

The original press release is available here (Chinese).

• 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)

• 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)

• The WIPO Internet treaties are now in effect in HK. - The Performances and Phonograms Treaty (WPPT) can be found here and the Copyright Treaty (WCT) can be found here.

• 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)

By Heidi Yeh, NAIP Engineer; Translated by Jeffrey Chang
Original Article Available Here (Chinese)
For a corporation, applying for a patent is an act of protection, an attempt to protect thousands, even millions of dollars spent in R&D. Today, corporations have increasingly been known to focus on internal knowledge management and stress the importance of keeping track of technological assets. They do this in no small part because when applying for patents, these records of research and development—in the form of the Laboratory Notebook—are powerful evidence. Therefore, to protect intellectual property, researchers, inventors and corporations should not overlook the importance of properly maintaining Laboratory Notebooks.


The Importance of the Laboratory Notebook

Two compelling reasons exist for maintaining a Laboratory Notebook:

1. When patent examiners cite prior art to reject the novelty of an invention, if a Laboratory Notebook has recorded the date of the invention's development as earlier than the published date of the cited prior art, that notebook becomes one of the strongest arguments for granting of a patent.

2. A well-maintained Laboratory Notebook is a thorough record of the research and development process. It includes what has been done, what needs to be done, what methods have not succeeded, frequency of testing, practicality of the research and more. All this aids in managing the status and progress of R&D.

Laboratory Notebooks in Different Patent Systems

In the United States, one of the few countries with a First-to-Invent system, three factors are essential in assessing first-to-invent claims. As listed in the USPTO MPEP § 2138.04-2138.06, they are:

1. Conception Date

2. Reduction to Practice

3. Reasonable Diligence

Reasonable Diligence is only used during litigation as evidence in determining First-to-Invent when the two parties are in conflict for the first two factors. In a First-to-Invent system, a decision to grant may therefore hinge solely on a Laboratory Notebook.

For a First-to-File system, Laboratory Notebooks may not seem as important, but they in fact play decisive roles—particularly in patent infringement suits. These notebooks can serve as evidence to prove that research results were achieved and perhaps published before the other party even filed a application.

Water may support a boat, but water can also capsize it. Laboratory Notebooks are no different, and they may be used both for and against you. Additionally, although Laboratory Notebooks seem irrefutable evidence, if they have not been properly maintained, they may be disregarded by the courts. In these situations, inventors and corporations may only stand by and watch helplessly has their rights slip away.

In this article, we have assembled and listed the critical factors in making a Laboratory Notebook acceptable for filing and litigation, as well as what should and should not be done when writing a laboratory notebook. Keep these matters in mind to ensure that one simple mistake won't cause your rights to vanish into thin air.



Recommendations on Maintaining a Laboratory Notebook

First, when do you begin a new Laboratory Notebook? Must one be kept from the very start of work until the very end? Actually, Laboratory Notebooks may be distinguished by work subject. As soon as you begin a different experiment or test, you can switch to a different or new notebook. For those researchers who work on multiple projects with similar technologies, this method prevents judges or juries from losing focus on the relevant invention, and might even save an invention from being seen as "Obvious".

Sometimes the results of an experiment inspire a new idea, yet there is no time to commit to testing or verifying it. At this time, record these new thoughts in a concept journal kept specifically for this purpose. When ready to begin exploration of the idea, use a new notebook and clearly note the origins of the concept and where it was recorded in the concept journal (date, page and line).

In addition to the above, when maintaining Laboratory Notebooks, be sure to take special note of the following:

1. When choosing a Laboratory Notebooks, choose a pre-bound notebook with pre-numbered pages. Even if the notebook pages are not numbered, do so yourself from the day a project begins. Avoid using loose-leaf notebooks or those with pages that easily tear-off to prevent any suspicion that any material was later inserted.

2. Make sure to sign and date the bottom of every page that contains any entries or notes. Additionally, each page should be verified and signed by another person (e.g. a researcher working on a different project) who understands and can attest to the validity of the work recorded.

3. Be sure to use a non-bleeding, ink-based pen to record the actual results of any work in the notebook. Avoid using pencil. After pages have been signed, do not alter or make corrections to the content. To make changes before pages have been signed, use a single line (or at most two) to cross out the incorrect information while ensuring it remains legible. Then sign and date next to the correction. For larger scale corrections, keep the original entry and, on the back of the page, note what is to be corrected and why. On the original entry make note of the correction and reference the page of the corrected entry.

4. Do not leave blank pages or large spaces. To distinguish between dates or work by pages, sign at the end of the last recorded entry and cross out any remaining blank spaces with a large X to prevent any new information from being recorded on the same page.

5. If the experiment results are computer-generated images, print out the results, date the print-out and affix it to the notebook page in a manner such that removing it will leave visible marks. Avoid large blank spaces around the edges of the print-out. If needed, mark the junction of the edges of the sheets of paper, then sign and date across the junction to increase the likelihood of it being acceptable as evidence.

6. All drawings, diagrams and graphs must be sequentially numbered and marked with an appropriately descriptive title. In order to assist in interpretation of the drawings, diagrams or graphs, use sequential numbers or letters of the alphabet to organize details and explanations.

7. Each day a witness must verify the recorded procedures and results, and sign to state that the entries are clearly understandable to another person who is skilled in the art. To be more cautious, have the witness also sign any corrections or amendments to ensure no other areas can be altered after the pages have been verified.

In addition to the suggestions above, any relevant or important information can be included in Laboratory Notebooks, such as machine model number, brands of materials, batch numbers and so on. The more detailed the entries, the more easily a non-researcher can effectively, efficiently understand the actual work and can repeat the results when necessary.

Don't Trip Over Your Own Feet

Laboratory Notebooks are effective tools for protecting IP rights. Therefore, there are a few things to watch out for when recording entries.

1. When commenting in entries, do not write "Not Patentable", "Obvious", "Unsuccessful" and similar comments that could be easy targets in a litigation case.

2. Avoid using words or phrases that may potentially limit interpretations, such as "the key to", "essential to", "invariably", etc….

In my time as a researcher, I learned the importance of properly maintaining a Laboratory Notebook. The nature of the work involved many complicated tables, graphs and drawings, yet after a year, during my assessment report, I was able to take out my notebook and quickly understand the details and main points. Therefore a Laboratory Notebook can not only provide an objective, organized system to record progress, it can also be a method to share experiences and discoveries.

• The US and China have agreed to agree. - At the US-China Joint Commission on Commerce and Trade (JCCT) forum, the US and China agreed to sign two "memoranda of understanding (MOUs) on strategic cooperation to improve the administration and effectiveness of copyright and trademark protection and enforcement, as soon as possible..." Download the official press release here.
  

• Microsoft saves 1.5 billion dollars. - A brief summary of the MP3 infringement suit brought by Alcatel-Lucent against Microsoft back in 2003 that has come to its likely close this week. (from Patent Hawk)

• Can wearing down an examiner get you a patent? - The debate over patent application continuation continues.... (from Just_n_examiner)
  

• A new legal standard for design patent infringement. - An en banc decision by the US Federal Circuit Court of Appeals has significantly strengthened design patents by essentially rejecting the need for the "point of novelty" test. A copy of the ruling can be downloaded here. (from Law.com)

Today marks day one of the 2008 Taipei International Invention Show and Technomart (INST) at Exhibition Hall 1 of the Taipei World Trade Center. Last year's exhibition was a rousing success with exhibitors from 16 countries and over 50,000 visitors around the globe, and this year's looks to be even bigger.

Highlights of the four-day exhibition will include 600 companies and individuals, over 900 booths, and demonstrations of over 2,000 of the latest patented technologies and innovations. Additionally, 11 forums/conferences will be held featuring industry-experts and scholars speaking about sector trends and other issues facing IP in Taiwan and Asia.

Attendance is free for all.

More information can be found on the Taipei Invent website Here.

by Charl Goussard
With the recent announcement of Lehman Brothers' bankruptcy petition, several questions arose about the fate of their patents: What happens to patents after a petition for bankruptcy has been filed? Who manages them? How are they managed?


Appointment of a Trustee

When Lehman Brothers filed their bankruptcy petition, an estate was created including all of Lehman's patents and patent applications (as well as all of their other assets and rights). The bankruptcy court then appointed a Trustee or a debtor-in-possession (DIP) to manage the estate, and this official will in return appoint counsel for the protection of Lehman’s patent portfolio.


Identifying and Protecting Assets

First, counsel has to find, catalogue and assess Lehman's patent portfolio. Lehman Brothers probably had an in-house patent counsel or patent manager who will be helpful in this regard. Vital information can also be gathered by talking to patent counsel involved in the prosecution of Lehman's various patents. Websites of the major patent offices can be screened for information on patents granted and assigned.

Once all of Lehman's patents and patent applications have been listed, counsel should be able to catalog and manage the portfolio based on each patent's status. Counsel should particularly pay attention to meeting deadlines and paying all fees in order to keep applications alive.

Then, to assess the value of Lehman's patent portfolio, counsel can meet with incubators, consultants and venture capitalists. For patents pending, the difficulty lies in determining which of Lehman's patent applications should be prosecuted and which should be abandoned. Market-related factors, such as the value of similar patents in the field, marketplace competition, potential for licensing... etc., will give an indication as to the potential value of each patent.


Dealing with Licenses

In the meantime, counsel for Lehman's estate will be required to make sound business judgments on whether to reject or accept licenses of intellectual property (IP). According to US Bankruptcy code, IP-licenses are of an executory nature and may accordingly be assumed or rejected by the Trustee or DIP. Upon assumption of such licenses, the Trustee or DIP may also assign such contracts.

Should the Trustee or DIP decide to reject a patent license agreement, the bankruptcy court will defer to their reasonable business judgment. Usually, bankruptcy courts grant motions by Trustees to reject contracts, but some courts have ruled that rejections were not founded on sound business judgments and could therefore not be granted.

Once a license agreement has been rejected, Lehman Brothers, as licensees, would not be bound to the license agreement – bad news for licensors who were expecting royalties.

In the case of exclusive licenses, Lehman's licensees may elect to retain their rights under 11 U.S.C. § 365(n) despite the rejection of the license agreement. These exclusive licensees may thus continue to enforce their exclusivity rights; however, under a rejected license agreement, Lehman Brothers will be freed from their obligations with regards to Specific Performance. For example, Lehman would not be required to pay patent office maintenance fees for their licensed patents if those patent license agreements were rejected.


Winding-up the Bankruptcy

Ultimately Lehman's Trustee's objective is to liquidate all of Lehman Brothers' assets – which include their patents. One can only speculate as to the route Lehman's patent portfolio will eventually go. Possible solutions include: selling some patents or even the whole portfolio to insiders such as previous Lehman Bros. managers; selling the patent portfolio to interested outsiders such as companies in the financial sector; or auctioning off the portfolio – either online or live.

After transfer/assignment of all of Lehman's assets has taken place, Lehman Brothers will be deregistered as a company and the last chapter of 158 years of the once mighty investment giant will have been completed.

Resources & Links

• A List of Lehman Brothers' (500+) Patents (USPTO)
• United States Bankruptcy Code, Title 11, Chapter 3 Case Administration