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E-Books Series is a concentration of the most relevant information on e-commerce and Internet laws and regulations around the world. Conveniently divided in sections consisting of articles on specific topics, supplemented with links to the sources of law and regulations, e-Books provide an excellent and quick resource of knowledge on Internet and e-commerce issues and applicable principles of law. Electronically accessed supplemental materials are provided to enhance a dynamic informative process. E-Books are conveniently accessible online or through a downloadable version. A pocket size version of eBooks is also available. IBLS e-Book Series reserves all intellectual property rights. Any re-distribution of this material without appropriate license will be prohibited. For license inquiries write to e-books@ibls.com



 

Internet Patents Worldwide

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Internet Patents Worldwide

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 Introduction
 Chapter 1: The United States
arrowBUSINESS METHOD PATENTS IN THE E-COMMERCE WORLD
arrowPROVISIONAL PATENT APPLICATIONS
arrowREMEDIES AVAILABLE UNDER THE U.S. PATENT LAW
arrowTHE LICENSING OF BUSINESS METHOD PATENTS FOR INTERNET USE
 Chapter 2: The European Union
arrowPATENT REGISTRATION UNDER THE UNITED KINGDOM LAW
arrowTHE COMPONENTS OF THE PATENT SPECIFICATION UNDER THE UK PATENT APPLICATION
arrowPATENT OWNERSHIP, LICENSING, RENEWAL, AND RESTORATION ISSUES UNDER THE UK PATENT LAW
arrowCHALLENGING PATENT REGISTRATIONS UNDER THE UNITED KINGDOM LAW
arrowPRELIMINARY AND SUBSTANTIVE EXAMINATION OF A PATENT APPLICATION UNDER UNITED KINGDOM LAW
arrowBUSINESS METHOD PATENTS UNDER THE EUROPEAN PATENT CONVENTION
arrowOBTAINING PATENT PROTECTION IN SWEDEN
arrowPATENTS AND SOFTWARE PROTECTION UNDER EU LAW
 Chapter 3: Asia
arrowINDIA PATENT (AMENDMENT) ACT 2002 AND 2005
arrowACCELERATED EXAMINATION PROCESS FOR PATENTS AND TRADEMARKS UNDER JAPANES LAW
arrowOBTAINING JAPANESE PATENT PROTECTION
arrowOBTAINING A PATENT PROTECTION IN HONG KONG
arrowBHUTAN INDUSTRIAL PROPERTY REGULATIONS ACT
arrowINTERNATIONAL PATENT APPLICATIONS IN CHINA
arrowPATENT APPLICATION IN SINGAPORE
arrowFILING FOR INDUSTRIAL PROPERTY PROTECTION IN MACAU, CHINA
arrowPROTECTION OF PATENT RIGHTS IN CHINA
 Chapter 4: Middle East
arrowKUWAIT LAW RELATING TO PATENTS, DESIGNS AND INDUSTRIAL MODELS
arrowPATENT APPLICATION IN OMAN
 Chapter 5: Latin America
arrowOBTAINING PATENT PROTECTION IN BRAZIL
arrowMEXICAN PATENT PROTECTION
arrowINDUSTRIAL PROPERTY PROTECTION IN THE ANDEAN COMMUNITY
arrowBRAZILIAN PATENT LAW
arrowCOMMERCIAL BRANDS AND PATENT APPLICATIONS ACCORDING TO CHILE'S INDUSTRIAL PROPERTY LAW 19.039 OF 1991
 Supplemental Documents
arrowFree Software Community Challenges e-Learning Patent
arrowWIPO Report Reveals Changing Geography of Innovation with Highest Patenting Growth Rates in North East Asia
arrowChaotic Environment for U.S. Patents
arrowPatent Highway between the UK and Japan opens
arrowSection 103 of the US Patent Act is Alive
arrowUpdate on the US Patent Reform
arrowE-commerce Patents
arrowE-Business Patent Infringement Cases: Complex Issues to Unravel
arrowAutomatic Injunctions in Patent Cases must Conform to a Four-Prong Equitable Test.
arrowLocal Working of Patents in India
arrowLondon Agreement Patents Law to be Enacted May 2008
arrowDoes US Patent Law have Extraterritorial Application?
  
 

Patentable Subject Matter

To be granted a patent, an item submitted to the U.S. Patent Office (USPO) must be a "patentable subject matter." Patentable subject matters include compositions of matter, processes or procedures, articles of manufacture, machines, and any improvement of these categories.  With the advent of the Internet, new items have been added to the U.S. patentable subject matter list such as online software and Internet business models.  This article introduces the U.S., EU, and international approach on patentable inventions. 

The USCS §101 defines the patentable inventions under the U.S. law.  It states that "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS §§ 1 et seq.]"  Therefore, an invention is patentable if, and only if, it is within one of the five statutory categories of subject matter.  The purpose of limiting patents to the specific categories of subject matter is to limit protection to the field of applied technology, or as Congress called it, 'useful arts."  USCS §8, Art.1.   Computer software was not patentable before, See  Gottschalk v. Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273, 175 USPQ 673 (1972).  Yet, after Benson, other Federal and U.S. Supreme Court cases suggested computer software could be patent if it include "novel and non-obvious programming method unless it is for a mathematical algorithm in the abstract." Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed. Cir. 1992).  In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124, 122 S. Ct. 593, 151 L. Ed. 2d 508 (2001), the U.S. Supreme court noted that the "language of § 101 is extremely broad,''  ''is a dynamic provision designed to encompass new and unforeseen inventions,'' and has a ''forward-looking perspective.'' Thus, after 2001,  software and other Internet business models had a better perspective in the patent field.  

How patentable subject matter is defined by the U.S law and what are the classes of patentable inventions?

Patentable subject matter is defined as a process, machine, manufacture or composition of matter, including plants asexually reproducing -reproduction from cells.   Thus, according to this definition, there are five classes of patentable inventions:  

1. Compositions of matter,

2. Processes or procedures,

3. Articles of manufacture,

4. Machines, and

5. Any improvement on these patentable categories.

How does the U.S. approach to patents differ from the European Union's?

As mentioned before, the U.S. Congress intended to protect inventions in the "useful arts," or technology field; but, the concept of patentable subject matter has expanded to include new inventions, including software and Internet business models.  Article 52 of the European Patent Convention states that patents ''shall be granted for any inventions which are susceptible of industrial application.''  Article 57 further states that ''an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.''  Thus, while the U.S. patent law aims to protect "technology," the EU patent law aims to protect "industrial" applications.  These two approaches, although different at inception, eventually meet in practice and along the lines of the TRIPs Agreements. Article 27 of TRIPS addresses ''patentable subject matter'' and mandates that ''patents shall be available ... without discrimination as to ... the field of technology.'' Countries are allowed to limit patentable subject matters, and the EU in fact has limited patent of certain inventions. 

What can be patented according to the approach of the World International Property Organization?  

Article 27 of the TRIPS Agreement notes that patents shall be available for inventions, whether products or processes, in the fields of technology.  Important elements are that the invention must be new, must have a novel step or creation, and must be capable of industrial application.  There cannot be discrimination as to the place of invention, the field of technology, or whether the invention products are imported or locally produced.  Thus, the technological and industrial elements are both present in the WIPO definition of patentable inventions.

TRIPS allow Member states to exclude certain inventions from patentability.  This is allowed when it is necessary to protect public morality; human, animal or plant life; human health; and the environment when exposed to serious threats.  Also, TRIPS permits the exclusion from patentability of the following items,  (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

What types of computer or Internet related materials are patentable under the U.S. law?

Under a new approach from the USPO, software is the primary patentable subject matter for Internet transactions as well as computer processes, data processing systems, and graphical user interfaces.   Through utility patent, inventive functions, methods, systems or algorithms, and applied mathematical formulas imbedded in software can also be protected nowadays. Other software to potentially receive patent protection as utility patents are word processing applications, compilers, web browsers, database programs, spreadsheets, utility programs, language translation programs, and even computer games.  Data transmission programs are also commonly the recipients of utility patents, including communications protocols, encryption and data compression techniques.  Regarding U.S. court's approach to the patent of software, they typically find that nearly any software-related invention producing a useful, concrete, and tangible result is patentable subject matter.

Graphical screen images or web pages, typically covered by copyright protection, could be the subject of a design patent. Also included may be control functions, editing functions and data structures. User-interfaces, including the graphics and command structures presented to users of the software, may also be patented in the U.S.   

 

  

 
CHAPTER 1: The United States

 
arrowBUSINESS METHOD PATENTS IN THE E-COMMERCE WORLD

With the advent of the Internet, business method patents became popular, though, initially controversial. United States (U.S.) courts and the U.S. Patent Office have held that business methods are patentable as any other process or method. These business method patents can be a great asset for electronic commerce and the global economy. One of such patents is the Amazon "1-click" patent explained in this article.
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arrowPROVISIONAL PATENT APPLICATIONS

The United States Patent Office (USPO) allows applications for provisional patents. Provisional patent applications provide many advantages for a product's testing of a particular market, and give the inventor an opportunity to make improvements and make a prototype of the invention. This process enables inventors to have the initial filing date, which can be quite helpful in a changing technological market.
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arrowREMEDIES AVAILABLE UNDER THE U.S. PATENT LAW

Remedies for patent infringement are available under the United States patent law and have proved to be highly effective in deterring patent infringement practices. Remedies for patent infringement may include injunctive relief, impounding, damages and profits, costs and attorneys fees, and statutory damages.
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arrowTHE LICENSING OF BUSINESS METHOD PATENTS FOR INTERNET USE

A U.S. federal court of appeals ruled in State Street Bank & Trust Co. v. Signal Financial Group, (1998) that business methods are patentable. Since that time, numerous companies have applied for business method patents to protect new technologies as a form of intellectual property.
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CHAPTER 2: The European Union

 
arrowPATENT REGISTRATION UNDER THE UNITED KINGDOM LAW

Applying for a patent registration in the United Kingdom (UK) involves the following process, filing out a patent application and paying the registration fee; presenting a formal request for a patent; requesting a search; conducting initial publication; requesting a substantive examination; and ordering final publication. This process is complex and takes between three and four years to be completed. Only when the patent is granted and registered, legal protection is available in the UK and the European Union territory under the Community Patents program.
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arrowTHE COMPONENTS OF THE PATENT SPECIFICATION UNDER THE UK PATENT APPLICATION

The first stage of a patent application in the United Kingdom requires preparation of a "Patent Specification." The Patent Specification's components include the invention's description, the invention drawing, the "claims" specifications, and an abstract. These components must be carefully considered to ensure that the patent specification is complete and the registration process starts.
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arrowPATENT OWNERSHIP, LICENSING, RENEWAL, AND RESTORATION ISSUES UNDER THE UK PATENT LAW

The principal benefit of patent registration is that it enables the patent holder the exclusive right to stop others from using the invention. Yet, a patent owner can let others use the invention under agreed terms that involve a non-exclusive license, an exclusive license, or an assignment or merely an agreement to pay royalties for the use of the invention. Furthermore, once patents are issued, these rights can be renewed, abandoned, or voluntarily surrendered at any time.
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arrowCHALLENGING PATENT REGISTRATIONS UNDER THE UNITED KINGDOM LAW

Under the United Kingdom (UK) patent law, allows third party's objections to other people's patents. These objections may be (1) just mere observations about patentability; (2) opinions about the validity of a patent; and (3) opposing requests after a patent has been granted. Indeed, the patent application can be challenged after it has been published or after the patent registration has been issued.
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arrowPRELIMINARY AND SUBSTANTIVE EXAMINATION OF A PATENT APPLICATION UNDER UNITED KINGDOM LAW

The United Kingdom Patent Office (UKPO) may conduct two main examinations when processing patent applications: the preliminary and the substantive examination. The preliminary examination of a patent determines whether there are prior publications or prior art that bar the patent application. The substantive examination process questions whether the patent is new and whether the patent application is sufficient.
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arrowBUSINESS METHOD PATENTS UNDER THE EUROPEAN PATENT CONVENTION

Business method patents proved to be quite controversial in their initial U.S. approval stages. In the European Union (EU), business method patents are still no patentable and controversial. The increasing use of the business method patents in the U.S. and their significance on electronic commerce and Internet transactions demonstrate that there must be uniform global laws applicable to these patents as technology evolves and the economy becomes a global one.
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arrowOBTAINING PATENT PROTECTION IN SWEDEN

Sweden's patent rules are found in national patent laws -incorporating European Union Directives, - patent regulations, and patent provisions. Sweden allows patent applicant under the Patent Cooperation Treaty or the European Patent Convention. This decision is strategic in terms of the processing requirements and the costs involved. Swedish patent laws are in accord with international patent standards and processes.
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arrowPATENTS AND SOFTWARE PROTECTION UNDER EU LAW

Patents are the protection of choice for software. European patents are regulated under the European Patent Convention (EPC), which differs quite significantly from U.S. patent regulations. Until – and if – a new Directive on the Patentability of Computer-Implemented Inventions is adopted, non-E.U. software vendors need to comply with the requirements established by the European Patent Office (EPO) in order to get patent protection in the European Union (E.U.)
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CHAPTER 3: Asia

 
arrowINDIA PATENT (AMENDMENT) ACT 2002 AND 2005

The Patents (Amendment) Act 2002 was passed by the Indian Parliament and came into force in May 2003. The Act amended the Patents Act 1970 and introduced significant changes to Indian Patent law system. Later in 2005, a new amendment was introduced, called the Patents (Amendment) Act 2005. This later reform introduced rules regarding the patent of software and other technological advances.
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arrowACCELERATED EXAMINATION PROCESS FOR PATENTS AND TRADEMARKS UNDER JAPANES LAW

The need to secure intellectual property rights has become crucial to protect the invention as a tangible asset and a source of financial benefits. Therefore, as a way to protect a potential financial source, an expedited application process for trademarks and patents is offered under Japan's patent law. This process is available when a third party is attempting to register a trademark or a patent before the right holder applies for registration. Thus, the expedited process will allow patent rights to arise before the third party's attempt, provided that certain conditions are met. This type of accelerated examination rights is central in an opposition process and infringement proceeding.
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arrowOBTAINING JAPANESE PATENT PROTECTION

Japan grants patent protection to inventors, devisers, creators, and successors in interest, through the Japanese Patent Office (JPO). Japan follows the "first-to-file" system. This means patents are only granted to the first-time applicant. Japan affords patents for highly advanced and sophisticated inventions while it grants utility model to simple "devices." When the JPO registers an application for patent as a right, patent rights start for the inventor or patent holder. Denials can be appealed before an appeal panel and the Intellectual Property High Court.
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arrowOBTAINING A PATENT PROTECTION IN HONG KONG

The Hong Kong Intellectual Property Department (HKSAR) handles patent applications. A patent administered in Hong Kong provides patent protection for designs and utility patents for certain predetermined terms. According to Hong Kong patent law, a patent provides "the patent owner, a legal right to prevent others from manufacturing, using, selling or importing your patented invention." Hong Kong (HK) is also allowing international patent applications.
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arrowBHUTAN INDUSTRIAL PROPERTY REGULATIONS ACT

Patents, industrial designs and trademarks registered in the Kingdom of Bhutan are regulated under the Industrial Property Regulations Act 1997, which entered into force on April 4, 1997 (“IPRA”) The IPRA states the regulations applicable to patents, designs and marks in Bhutan.
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arrowINTERNATIONAL PATENT APPLICATIONS IN CHINA

China has joined the growing list of countries allowing electronic filing of patent applications; the first day of the service was May 1, 2007. Sophisticated software enables electronic filing of international patent applications with cooperation of the World Intellectual Property Organization’s (WIPO), Patent Cooperation Treaty (PCT). The WIPO is the “cornerstone of the international patent system” and its dynamic system, offering quick, flexible and economical approach to establishing patents in nearly 140 countries. In regards to China establishing this Intellectual Property (IP) milestone, and also the great interest in Chinese business, these questions will be answered: What Software is used for the Electronic Patent Process? How Does PCT-SAFE Filing Work? What Benefits are gained by Filing with the Electronic System? How Big Have Chinese Patent Applications Become? What IP Legislation does China Have for Patent Protection?
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arrowPATENT APPLICATION IN SINGAPORE

For a small country of less than four million people, which only recently left its colonial past, Singapore has an outstanding approach to Intellectual Property that should be used as a model for a region still struggling to embrace the important concept of intellectual property rights. The following questions will be answered to better understand the Singapore Patent Application Process: What Are the Standards for Singapore's Patent Law Application? How Does One File a Patent Application in Singapore? What Are the Technical Requirements of the Application? How Are Patent Applications Submissions Delivered? How is the Search and Examination Done?
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arrowFILING FOR INDUSTRIAL PROPERTY PROTECTION IN MACAU, CHINA

Macao is a small territory set on the southern coast of China, located not far from Hong Kong. It was colonized by the Portuguese in the 1500's and became the first European settlement in the Far East. Macao's treaty stipulated the territory would return to Chinese control. Therefore, on December 20, 1999, it changed names to the Macau Special Administrative Region (SAR) of China. The agreement that returned the region to China also stipulated it would remain under a "one country, two systems" formula. Consequently, the Chinese socialist economic system will not be practiced in Macau and great autonomy will exist, save for decisions on foreign relations and defense affairs for the next 50 years. The area is set on several islands about a sixth the size of Washington, DC, USA. Yet, tiny Macau is currently undergoing one of the greatest casino-building booms the world has ever seen.
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arrowPROTECTION OF PATENT RIGHTS IN CHINA

The Government of China grants patents for certain inventions, technical solutions and designs. Some items are not patentable. An application must meet the substantive and procedural requirements of Chinese law. A creator of an invention, technical solution or design that meets the criteria for a patent in China may apply for and receive patent protection under Chinese law.
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CHAPTER 4: Middle East

 
arrowKUWAIT LAW RELATING TO PATENTS, DESIGNS AND INDUSTRIAL MODELS

Kuwait was aided and protected by Britain in concert with the Al-Sabah dynasty from 1899 until independence was declared in 1961. Located in the center of the Middle East, lying on the Persian Gulf, between Iraq and Saudi Arabia, Kuwait has more oil reserves per capita than any country in the world, with 10% of the world's petroleum. With stores of about 100 billion barrels, current supplies should last for over a century, and as petroleum climb, Government coffers should be well-filled for decades. Growth was 6% last year, and per-capita income $55,000.
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arrowPATENT APPLICATION IN OMAN

Oman, in conjunction with the Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC), operates a WIPO-compliant patent regime, which became operational in 2005. Further to this regime, patents in Oman must be registered with the GCC Patent Office, entitling the eligible patent owner to twenty years of exclusive use. Patent infringement in Oman carries criminal sanctions. International patent registration is possible through the Patent Cooperation Treaty to which Oman is a signatory.
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CHAPTER 5: Latin America

 
arrowOBTAINING PATENT PROTECTION IN BRAZIL

Brazilian patent law protects inventions, products, substances, or processes that are new, inventive, have industrial utility, and sufficient description. Patent owners have the exclusive right to prevent others from manufacturing, using, selling, or importing the invention without securing the permission of the patent holder. This permission would be secured in the form of a license or an assignment. In Brazil, there are two common types of patents: the invention patent and the working model patent. These are conferred to inventors, authors, or any other individuals or companies demonstrating the respective rights.
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arrowMEXICAN PATENT PROTECTION

The Mexican Institute of Industrial Property (IMPI) protects two types of industrial property: (1) inventions, and (2) distinctive signs. Patents are within the invention category along with industrial designs, utility models, and integrated circuits. The increasing rise of patent applications has demonstrated that patents are viewed as an economic consideration and are constantly pursued. Under the Mexican law, patents require the same general considerations of novelty and non-obviousness, as well as the elements of publication and substantive examination process.
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arrowINDUSTRIAL PROPERTY PROTECTION IN THE ANDEAN COMMUNITY

The Andean Community is an important free trade agreement in Latin America. It has helped in the development of trade strategies and tariff policies as well with the protection of intellectual property and the harmonization of customs. Andean Community members recognize that protection of industrial property helps their economies to compete in the global market and attract foreign investment.
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arrowBRAZILIAN PATENT LAW

The Brazilian Industrial Property Office (INPI) processes applications for the protection of industrial property, including patent applications. The patent legislation has been modified to ease the filing and granting of patent applications, and to clarify principles on priority issues and third party rights. This article offers information on the Brazilian Patent System and the most relevant updates in their patent law.
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arrowCOMMERCIAL BRANDS AND PATENT APPLICATIONS ACCORDING TO CHILE'S INDUSTRIAL PROPERTY LAW 19.039 OF 1991

The Chilean Industrial Property Law 19.039 of 1991 is an inclusive set of rules in harmony with most international law principles on industrial and intellectual property. This law derogated Law No. 958 of 1931; Law 18.935; articles 16 y 17 of Law Nº 18.591; and article 38 of Law Nº 18.681s. It is composed of 8 chapters and 73 articles that constitute the basic legal scaffold of intellectual property in Chile. Law 19.039/91 is complemented by Chapter V of Law 18.455, among others; and international treaties such as the Paris Convention and its reviews. Following there is a summary of the procedure to obtain intellectual property rights in Chile, and a brief of the rules concerning registration of commercial brands and patent applications
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SUPPLEMENTAL DOCUMENTS:

 
arrowFree Software Community Challenges e-Learning Patent

The Software Freedom Law Center (SFLC), provider of pro-bono legal services to protect and advance Free and Open Source Software, has filed a formal request with the United States Patent and Trademark Office (USPTO) for re-examination of Blackboard's e-Learning patent. If successful, the request will ultimately lead to the cancellation of all 44 claims of the patent.
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arrowWIPO Report Reveals Changing Geography of Innovation with Highest Patenting Growth Rates in North East Asia

The 2007 edition of the Patent Report of the World Intellectual Property Organization (WIPO) (http://www.wipo.int/ipstats/en/statistics/patents/patent_report_2007.html) shows that worldwide filings of patent applications have grown at an average annual rate of 4.7% with the highest growth rates experienced in North East Asian countries, particularly the Republic of Korea (ROK) and China. The report is based on 2005 figures, the last year for which complete worldwide statistics are available. It showed that patents granted worldwide have increased at an average annual rate of 3.6% with some 600,000 patents granted in 2005 alone. By the end of 2005, approximately 5.6 million patents were in force worldwide.
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arrowChaotic Environment for U.S. Patents

The recent US Supreme Court case, KSR International v. Teleflex, answered the following question: "If a new product combines, albeit in a novel way, two or more pre-existing products, is it worth a patent?” To answer this question, the US Supreme Court established a new test that experts deem it will make more difficult to obtain a patent on a new product that combines essentials of already exiting patents. The decision was rendered on April 30, 2007, and our Charter Partner and intellectual property expert, Gerry Elman, have provided the following comments to IBLS,
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arrowPatent Highway between the UK and Japan opens

A 12 month pilot scheme launched today will speed up processing patent applications in the UK and Japan. The Patent Prosecution Highway (PPH) will allow patent applicants who have received an examination report by either the UK Intellectual Property Office (UK-IPO) or the Japan Patent Office (JPO) to request accelerated examination of a corresponding patent application filed in the other country.
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arrowSection 103 of the US Patent Act is Alive

Patent holders: be careful; section 103 of the US Patent Act is alive. This caveat seems to be the broad- nontechnical message obtained from the recently decided US Supreme Court case, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727. This US Supreme Court decision clarified the test to be followed when granting a new patent on an item that combines elements of exiting patents. Yet, even though under 35 U.S.C. § 282 an issued patent is presumed valid, it is interesting to see how patents already acquired may be trembled (lost?) by the posteriori application of both the US Patent Act §103 (35 U.S.C. §103) and this recently refurbished test.
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arrowUpdate on the US Patent Reform

Gerry Elman, attorney for Elman Technology Law, P.C. and IBLS Contributor, provides the following update on the United States Patent Reform currently in the US Congress. Just before September 7th, the House leadership secured a rule that seriously restricted floor debate on the Patent Reform Bill, so that it could be rammed through with minimal backpressure. Yet in the limited debate time available, Rep. Marcy Kaptur (D-Ohio) and Rep. Dana Rorabacher (R-California) staunchly waged a bipartisan opposition, narrowing the margin of victory achieved by the Bill’s sponsors.
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arrowE-commerce Patents

E-commerce patents are the latest protection for innovative business methods delivered online. Many claim e-commerce models are not patentable because the subject matter they assert is not within the statutory definitions and because the United States Patent office, and most patent offices around the world, are not outfitted for this analysis. Yet, at least in the United States (U.S.) and alongside disapproval, e-commerce patents are a reality supported by strong data from the U.S. Patent Office and case law. For instance, the U.S. Patent Office July 2007 report showed that in 2006 patent requests for business methods (class 705) amounted to over 9,000 filings; just identical to those filings during the Internet bubble in 2001. According to the same report, business methods filings have steadily increased every year since 2002. Also, the U.S. Patent office is getting stricter or filings of filings for business methods are becoming meaningful; data show that the allowance rate for 2001 was 45%, 44% for 2002, and 19% for 2006. This article comments on two significant cases that laid the foundation for e-commerce patent precedents in the United States.
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arrowE-Business Patent Infringement Cases: Complex Issues to Unravel

Certainly, Google has already earned its place in history as the most-sued Internet Company. Every novel intellectual property (“IP”) cause of action has been filed against the search engine giant. First, we witnessed the copyright infringement round. Google has been sued for every type of copyright infringement on thumbnails, meta-tags, keywords, etc. Concomitant with these copyright infringement lawsuits, Google was also accused of trademark violations in keywords, sponsor links, etc. Now, it is the time for the e-business patent round. Google was sued for business patent infringement and, like in most of the other IP lawsuits, it was triumphant (well, partially) this time.
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arrowAutomatic Injunctions in Patent Cases must Conform to a Four-Prong Equitable Test.

eBay v. MercExchange seven-year-patent dispute is finally over. Ebay has bought two patents that MercExchange alleged it owned and for which MercExchange accused eBay of patent infringement. The financial terms of the settlement were not disclosed. MercExchange sued eBay for patent infringement in 2001 and after lengthy court battles, a jury ruled in favor of MercExchange in 2003 and provided a US$30 million ruling against eBay. eBay appealed this judgment and now, before any other subsequent appeal, eBay settled the case and offered to buy the two patents on dispute. Even though this case constituted another ordinary case on patent infringement, its relevance is found on the issue of 'automatic' permanent injunction for online patent cases. This question went to the Supreme Court of the United States ("US”) which rendered an important decision on this point. This article provides an overview of this renowned e-commerce patent case and US decision on permanent injunction for patent cases.
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arrowLocal Working of Patents in India

There is a requirement to file a statement of information (Form 27) regarding the working of a patent in India. The working of a patent means the commercial exploitation of the invention that is embodied in the patent. These statements can be supplied every financial calendar year, within three months of the end of each year. Although the working of an invention within India at a commercial scale amounts to local working (LW), it still is controversial as to whether the LW of a patent can only be satisfied by the local production and not importation.
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arrowLondon Agreement Patents Law to be Enacted May 2008

Getting patent coverage across Europe is set to get easier and cheaper on May 1, 2008 when a new protocol called the “London Agreement” goes into affect. The London Agreement negotiations have been ongoing for some years, and the final details hammered out October 17th, 2000. The purpose was to make getting translations of European patents easier and lessening the costs. The new rules should halve costs for UK businesses toiling to protect their intellectual property rights across all 31 European states.
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arrowDoes US Patent Law have Extraterritorial Application?

The US Patent Act (title 35 U.S.C) is the legal framework for patent protection in the US. The US Patent Act § 101 defines what is patentable in the US: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…" Section 271 of the US Patent Act sets the requirements for a valid cause of action on patent infringement. Within section 271, literal (f) is one of the ones raising controversy because §271(f) seems to invite for extraterritorial application. This article analyses § 271(f) of the US Patent Act in light of its most relevant court interpretation in AT&T v. Microsoft.
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